Split WIPO panel orders transfer of 'Amazon' domain names
In Amazon.com Inc v PDC, a split World Intellectual Property Organization panel has upheld the complainant's challenge to registrations of 'amazondrugs.com', 'amazonpharmacy.com' and 'amazondoctor.com'. The dissenting panellist found that the respondent had shown a bona fide offering of goods and services, and that the complainant does not have a monopoly on the word 'Amazon', which is a river and geographical area.
PDC of Ventura, California, which sells herbs, vitamins and health encyclopedias over the Internet, registered the three disputed domain names on June 15 2001 and July 16 2002. Amazon.com, the well-known online bookseller based in Seattle, Washington, brought proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP) for transfer of the names.
The three-member panel found that the disputed domain names were confusingly similar to the AMAZON.COM mark because they were descriptive apart from the word 'Amazon'. The majority of the panel also found that PDC's use of the domain names to offer goods and services over the Internet was not bona fide and, therefore, did not give it rights or legitimate interests in the domain names. PDC was in fact attempting to use Amazon.com's famous mark to jump-start its own business; thus, concluded the majority, PDC had registered and used the domain names in bad faith.
The dissenting panellist disagreed, concluding that PDC had shown a bona fide offering of goods and services by claiming (but not showing) that its products come from the Amazon River area. He also found that Amazon.com's mark is not strong because it is based on a geographical area, which could be used by anyone to characterize activities in connection with that part of the world.
Having proved the UDRP's three requirements for transfer of a domain name - at least in the eyes of the panel majority - the three disputed domain names were ordered to be transferred to Amazon.com.
John S Macera, Macera & Jarzyna - Moffat & Co, Ottawa
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