Amazon Technologies, Inc. v. Anik Islam / AB Software Limited
Claim Number: FA1912001875426
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, United States. Respondent is Anik Islam / AB Software Limited (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <primevdo.com>, registered with Innovadeus Pvt. Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 16, 2019; the Forum received payment on December 16, 2019.
On January 9, 2020, Innovadeus Pvt. Ltd. confirmed by e-mail to the Forum that the <primevdo.com> domain name is registered with Innovadeus Pvt. Ltd. and that Respondent is the current registrant of the name. Innovadeus Pvt. Ltd. has verified that Respondent is bound by the Innovadeus Pvt. Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@primevdo.com. Also on January 9, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 31, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the 3rd most-viewed website in the United States, 12th most-viewed website globally, and the No 1 most-viewed shopping website. Complainant has common law rights in the trademarks PRIME and PRIME VIDEO through its continuous use and promotion of the marks in commerce. Additionally, Complainant has rights in the trademark PRIME through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) dating back to 2007. Respondent’s <primevdo.com> domain name, registered on August 22, 2019, is confusingly similar to Complainant’s PRIME and PRIME VIDEO marks. Respondent incorporates the PRIME mark in its entirety and adds the abbreviation “VDO” and “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <primevdo.com> domain name as Respondent is not commonly known by the disputed domain name. Respondent also fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to pass itself off as Complainant and directly competes with Complainant as the disputed domain name resolves to a purported video streaming site similar to Complainant’s services and products. Respondent has also attempted to sell the disputed domain name via a notice on its website and in a direct email to Complainant.
Respondent registered and used the <primevdo.com> domain name in bad faith by attempting to pass itself off and promote a competing service to Complainant’s product under the PRIME and PRIME VIDEO marks. Additionally, Respondent attempted to sell the disputed domain name, both generally and specifically to Complainant. Respondent also had actual knowledge of Complainant’s rights in the PRIME and PRIME VIDEO marks prior to registration of the disputed domain name due to the fame and longstanding use of the marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims to have common law rights in the PRIME and PRIME VIDEO marks due to its continuous use and promotion of the marks in commerce. Demonstration of use in commerce and recognition of mark is sufficient to show common law rights in mark per Policy ¶ 4(a)(i). See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (“Complainant’s demonstration of continuous use in commerce and accompanying promotion and media recognition are adequate to sustain its claim of common law rights in the MELLO and MELLO SOLAR marks.”) Here, Complainant has provided the Panel with information pertaining to the use of the PRIME and PRIME VIDEO marks in commerce including screenshots of its own website and copies of news stories that have been written about Complainant. Additionally, Complainant has rights in the PRIME mark through its registration of the mark with the USPTO. Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”) In light of the evidence submitted, the Panel finds that Complainant has demonstrated that it has rights in the PRIME and PRIME VIDEO marks per Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <primevdo.com> domain name is confusingly similar to Complainant’s PRIME and PRIME VIDEO mark. Registration of a domain name that includes a mark in its entirety and adds an abbreviation and gTLD is typically not sufficiently differentiated as to avoid confusing similarity. See Black Hills Ammunition, Inc. v. ICS INC, FA 1541572 (Forum Mar. 4, 2014) (finding that the <black-hillsammo.com> domain name is confusingly similar to the BLACK HILLS AMMUNITION mark under Policy ¶ 4(a)(i)). Here, Complainant argues that Respondent incorporates the PRIME mark in its entirety and adds the abbreviation “VDO” (claimed to be an abbreviation of the word “video”) and the “.com” gTLD. Therefore, the Panel finds that Respondent’s <primevdo.com> domain name is confusingly similar to Complainant’s marks per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in that effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights or legitimate interests in the <primevdo.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the PRIME and PRIME VIDEO mark or register domain names using Complainant’s mark. In considering this issue, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Anik Islam / AB Software Limited” and Complainant asserts that its PRIME VDO video streaming service is an illegitimate pretext (this will be discussed further in the bad faith section of this decision). There is thus no evidence to suggest that Respondent was authorized to use the PRIME and PRIME VIDEO mark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s <primevdo.com> domain name resolves to a purported video streaming site similar to Complainant’s services and products. Use of a disputed domain to resolve to a webpage that offers services and products similar to a complainant is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”) Additionally, use of a disputed domain name to deceive Internets users as to the affiliation between a respondent and a complainant may not be a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”) Here, Complainant has provided the Panel with a screenshot of the disputed domain name’s resolving webpage showing Complainant’s PRIME mark, in a graphic bearing some resemblance to Complainant’s own logo, and claiming to offer vide streaming services similar to those offered by Complainant under its PRIME and PRIME VIDEO marks. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant additionally argues that Respondent attempts to sell the <primevdo.com> domain name which shows a lack of rights or legitimate interests in the domain name. Evidence of a respondent attempting to sell a domain name that is confusingly similar to a complainant’s mark may support a conclusion that the respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Here, Complainant has provided a screenshot of Respondent’s website in which, at the top, displays the message “This Domain is for SALE. This name is best for any Video Streaming Site Submit your off at [Respondent’s email address]”. Further, in a direct and unsolicited email to Complainant, Respondent mentions the disputed domain name and says “I want to handover it to AMAZON authority.” In a later email, it asks Complainant to pay a “minimum of USD$ 10 Million.” Therefore, the Panel finds that Respondent’s unambiguous efforts to sell the disputed domain name further supports the conclusion that it lacks rights or legitimate interests in the name per Policy ¶ 4(a)(ii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the PRIME and PRIME VIDEO marks prior to registration of the <primevdo.com> domain name due to the fame and longstanding use of the marks, Respondent’s offer to sell the domain to Complainant, and Respondent’s use of the disputed domain name for an apparent service that it in the same field as that engaged in by Complainant. Actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name is adequate to argue bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”) Further, registration of a domain name that includes a well-known mark may, itself, be evidence of actual knowledge of complainant’s rights in the mark per Policy ¶ 4(a)(iii). See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). Here, Complainant has provided the Panel with a list of rankings and other news articles that show the fame and notoriety of the PRIME and PRIME VIDEO marks in international commerce. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the marks prior to registration of the domain name and that this creates a foundation upon which a finding of bad faith may be built per Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and used the <primevdo.com> domain name in bad faith, as Respondent attempted to sell the dispute domain name – both generally and specifically to Complainant. Registrations of a confusingly similar domain name for the mere purpose of selling it to the proper trademark holder may be evidence of bad faith under Policy ¶ 4(b)(i). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”) Here, Complainant has provided a screenshot of Respondent’s website which shows a prominent “FOR SALE” notice at the top, as well as copies of emails from Respondent where Respondent asks Complainant to pay a minimum of “USD$ 10 Million” for a transfer of the disputed domain name. Therefore, the Panel finds that Respondent registered and used the <primevdo.com> domain name in bad faith per Policy ¶ 4(b)(i).
It is next argued that Respondent sought to disrupt the business of a competitor under Policy ¶ 4(b)(ii). Complainant submits screenshots of Respondent’s claimed vide streaming service using the disputed domain and it also submits copies of Respondent’s emails, one of which contains the statement “I'm on the way to launching www.primevdo.com in India & Bangladesh as a video streaming platform.” In light of this evidence, the Panel finds sufficient evidence to conclude that Respondent registered and used the <primevdo.com> domain name in bad faith per Policy ¶ 4(b)(ii).
Finally, Complainant argues that Respondent registered and used the <primevdo.com> domain name in bad faith as Respondent attempted to pass itself off as, and directly compete with the Complainant by promoting a claimed video streaming service to Complainant’s product under the PRIME and PRIME VIDEO marks. Registration and use of a disputed domain name to offer competing services and products may be evidence of bad faith per Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”) Additionally, attempting to deceive Internet users as to the affiliations that exists between a complainant and the respondent in an effort to attract Internet users for commercial gain may be evidence of bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Here, Complainant has provided the Panel with a screenshot of Respondent’s domain name’s resolving webpage that shows Complainant’s PRIME mark and offering of similar video streaming services. Therefore, the Panel finds that Respondent registered and used the <primevdo.com> domain name in bad faith per Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <primevdo.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: February 3, 2020
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