Amazon Technologies, Inc. v. Carmen Reeves
Claim Number: FA2004001892531
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, United States. Respondent is Carmen Reeves (“Respondent”), California, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <officialamazonoutlet.com>, <officialamazonoutleta.com>, <officialamazonoutletc.com>, <officialamazonoutleto.com>, <officialamazonoutletz.com>, registered with GoDaddy.com, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 17, 2020; the Forum received payment on April 17, 2020.
On April 20, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <officialamazonoutlet.com>, <officialamazonoutleta.com>, <officialamazonoutletc.com>, <officialamazonoutleto.com>, <officialamazonoutletz.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 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@officialamazonoutlet.com, postmaster@officialamazonoutleta.com, postmaster@officialamazonoutletc.com, postmaster@officialamazonoutleto.com, postmaster@officialamazonoutletz.com. Also on April 22, 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 May 14, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, 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 disputed domain names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant is one of the world’s leading online retailers, offering products and services to more than 100 countries around the globe. Complainant has rights in the AMAZON mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,832,943, registered April 13, 2004). The disputed domain names are confusingly similar to Complainant’s AMAZON mark. Respondent incorporates the mark in its entirety adding the generic terms “official” and “outlet” and in some cases an additional letter, “a,” “c,” “o,” or “z” along with the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names nor did Complainant authorize Respondent to use the AMAZON mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, The disputed domain names <officialamazonoutlet.com>, <officialamazonoutleta.com>, <officialamazonoutletc.com>, and <officialamazonoutletz.com> resolve to an online retailer unrelated to Complainant and also competes with Complainant. The disputed domain name <officialamazonoutleto.com> resolves to an inactive webpage.
iii) Respondent registered and used the disputed domain names in bad faith as they resolve to an online retailer that is unrelated to Complainant and competes with Complainant. Respondent has failed to make an active use of its <officialamazonoutleto.com> domain name. Respondent had actual knowledge of Complainant’s rights in the AMAZON mark due to the fame of the AMAZON mark.
B. Respondent
Respondent did not submit a response to this proceeding.
1. The disputed domain names were registered on October 4, 2019.
2. Complainant has established rights in the AMAZON mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,832,943, registered April 13, 2004).
3. The disputed domain names <officialamazonoutlet.com>, <officialamazonoutleta.com>, <officialamazonoutletc.com>, and <officialamazonoutletz.com> resolve to an online retailer unrelated to Complainant and also compete with Complainant.
4. The disputed domain name <officialamazonoutleto.com> remains inactive.
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 rights in the AMAZON mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant has provided the Panel with a copy of its USPTO registration for the AMAZON mark (Reg. No. 2,832,943, registered April 13, 2004). Therefore, the Panel finds that Complainant has adequately shown rights in the mark per Policy ¶ 4(a)(i).
Complainant argues that the disputed domain names <officialamazonoutlet.com>, <officialamazonoutleta.com>, <officialamazonoutletc.com>, <officialamazonoutleto.com>, <officialamazonoutletz.com> are confusingly similar to Complainant’s AMAZON mark. Registration of a domain name that contains a mark in its entirety and adds generic words, or even additional letters along with a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)), see also Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (“Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”). Complainant argues that Respondent incorporates the AMAZON mark in its entirety adding the generic terms “official” and “outlet” and in some cases an additional letter, “a,” “c,” “o,” or “z” along with the “.com” gTLD. Therefore, the Panel finds that Respondent’s domain names are confusingly similar to Complainant’s mark 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), then the burden shifts to Respondent to show 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 Respondent lacks rights or legitimate interest in the disputed domain names as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the AMAZON mark or register domain names using Complainant’s mark. Where a response is lacking, 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 names lists the registrant as “Carmen Reeves” and there is no other evidence to suggest that Respondent was authorized to use the AMAZON mark or was commonly known by the disputed domain names. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s <officialamazonoutlet.com>, <officialamazonoutleta.com>, <officialamazonoutletc.com>, and <officialamazonoutletz.com> domain names resolve to an online retailer unrelated to Complainant and also competes with Complainant. Use of a disputed domain name to resolve to a webpage that competes with a complainant products or services is not a bona fide offering of goods or services or legitimate noncommercial of 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).”). Complainant has provided the Panel with Respondent’s pertinent domain names' resolving web pages that show an online retailer that competes with Complainant’s services. 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 argues that Respondent’s <officialamazonoutleto.com> domain name resolves to an inactive webpage. Failure to resolve to an active webpage is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of Respondent’s pertinent domain name’s resolving webpage that shows that the webpage is unavailable. 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).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant argues that Respondent registered and used the disputed domain names <officialamazonoutlet.com>, <officialamazonoutleta.com>, <officialamazonoutletc.com>, and <officialamazonoutletz.com> in bad faith as they resolve to an online retailer that is unrelated to Complainant and competes with Complainant. Use of a disputed domain name to resolve to a webpage that competes with a complainant may be evidence of bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”), see also 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).”). Complainant has provided the Panel with Respondent’s <officialamazonoutlet.com>, <officialamazonoutleta.com>, <officialamazonoutletc.com>, and <officialamazonoutletz.com> domain names' resolving web pages that show an online retailer that competes with Complainant’s services. Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that Respondent has failed to make an active use of its <officialamazonoutleto.com> domain name. Failure to make an active use of domain name may be evidence of bad faith per Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant provides a screenshot of Respondent’s <officialamazonoutleto.com> domain name’s resolving webpage that shows that the webpage is unavailable.
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Due to extensive advertising, use and commercial success, Complainant's AMAZON mark has become famous and is consistently ranked as one of the most well-known and recognizable brands globally; and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name <officialamazonoutleto.com>.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name <officialamazonoutleto.com> constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent registered and is using the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <officialamazonoutlet.com>, <officialamazonoutleta.com>, <officialamazonoutletc.com>, <officialamazonoutleto.com>, <officialamazonoutletz.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: May 23, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page