Amazon Technologies, Inc. and A9.com, Inc. v. Vijay Doshi
Claim Number: FA2109001962451
Complainant is Amazon Technologies, Inc. and A9.com, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Vijay Doshi (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amazonopensearch.com>, registered with Domain.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 3, 2021; the Forum received payment on September 3, 2021.
On September 7, 2021, Domain.com, LLC confirmed by e-mail to the Forum that the <amazonopensearch.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 September 13, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 2021 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@amazonopensearch.com. Also on September 13, 2021, 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 October 7, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
In the instant proceedings, there are two nominal Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The two named Complainants in this matter are Amazon Technologies Inc. and A9.com Inc. Complainant notes that the Amazon Technologies Inc. and A9.com Inc. are both wholly owned subsidiaries of Amazon.com Inc., and the disputed domain name includes trademarks in which both nominal complainants have interests. Further, Respondent has not objected to treating the complainants as a single entity. The Panel therefore finds that the two Complainants (herein referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of herein such that they may be treated as if a single entity. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (treating the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names); see also, Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004) (finding a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark).
A. Complainant
Complainant, Amazon Technologies Inc. and A9.com Inc., is a leading retailer offering products and services in more than 100 countries around the globe.
Complainant has rights in the AMAZON and OPENSEARCH marks based upon registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <amazonopensearch.com> domain name is confusingly similar to Complainant’s AMAZON and OPENSEARCH marks since it is merely a combination of the two marks with the addition of the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <amazonopensearch.com> domain name because Respondent is not commonly known by the at-issue domain name and is not authorized to use Complainant’s AMAZON or OPENSEARCH marks. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent used the domain name to host pay-per-click links or to display fake malware warnings.
Respondent registered and uses the <amazonopensearch.com> domain name in bad faith. Respondent attracted users for commercial gain by displaying pay-per-click links at the disputed domain. Respondent also used the domain to promote fake malware warnings. Further, the timing of Respondent’s domain name registration suggests opportunistic bad faith. Finally, Respondent had actual knowledge of Complainant’s rights in the AMAZON and OPENSEARCH marks when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the AMAZON and OPENSEARCH marks.
Complainant’s rights in the AMAZON and OPENSEARCH marks existed prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademarks.
Respondent uses the <amazonopensearch.com> domain name to promote pay-per-click links, and bogus malware warnings.
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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registrations for the AMAZON and the OPENSEARCH marks demonstrates Complainant’s rights in each mark for the purposes of 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).”).
The at-issue domain name consists of the juxtaposition of Complainant’s AMAZON and OPENSEARCH trademarks followed by the top level domain name “.com.” The slight differences between the at-issue <amazonopensearch.com> domain name and Complainant’s trademarks are insufficient to distinguish the domain name from Complainant’s trademarks for the purposes of the Policy. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <amazonopensearch.com> domain name is confusingly similar or identical to both Complainant’s AMAZON and OPENSEARCH trademarks. See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (“The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i).”); see also 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).)
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the <amazonopensearch.com> domain name. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and “[p]anels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.”).
The WHOIS information for the at-issue domain name ultimately identifies the domain name’s registrant as “Vijay Doshi” and the record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <amazonopensearch.com> domain name or by either of Complainant’s relevant trademarks. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent used its at-issue domain name to address a webpage hosting pay-per-click links and later used the domain name to display what appear to be bogus virus/security warnings. Respondent’s use of the confusingly similar <amazonopensearch.com> domain name in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also, Amazon Technologies, Inc. v. houchang li, FA2102001932207 (Forum Mar. 15, 2021) (finding that the domain names resolving to a “bogus McAfee virus warning” was not a bona fide offering of goods or services).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <amazonopensearch.com> domain name was registered and used in bad faith. As discussed below without limitation, circumstances are present which permit the Panel to conclude that Respondent acted in bad faith regarding the at-issue domain name pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent use of <amazonopensearch.com> to display pay-per-click links indicates bad faith attraction for commercial gain and thus Respondent’s bad faith registration and use of the domain name per Policy ¶ 4(b)(iv). See Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)).
Next, Respondent uses the at-issue domain name to direct internet users to fake malware/virus warnings. Doing so indicates, Respondent’s bad faith per Policy ¶ 4(a)(iii). See Microsoft Corp. v. ABK et al., FA1473573 (Forum Jan 21, 2013) (“Respondent is also disrupting Complainant’s business by causing the public to associate Complainant’s [sic] with Respondent’s malware warnings, potentially malicious download links, and survey/offer schemes that contain no privacy policies and lack reliable contact information”).
Additionally, the timing of Respondent’s <amazonopensearch.com> domain name registration shows opportunistic bad faith. Opportunistic bad faith may be found under Policy ¶ 4(a)(iii) where a respondent registers a confusingly similar domain name in close temporal proximity to a relevant announcement or major development relating to the trademark(s) at-issue. Here, Respondent registered the at-issue domain name the day after Complainant announced its OpenSearch project indicating opportunistic bad faith per Policy ¶ 4(a)(iii). See Pettigo Comercio Internacional Lda v. Siju Puthanveettil, FA1501001600741 (Forum Feb. 18, 2015) (concluding that because the respondent registered the <lycaradio.com> domain name within hours of a UK media report announcing the acquisition of Sunrise Radio by Lyca, the complainant, the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii)).
Finally, Respondent had actual knowledge of Complainant’s rights in the AMAZON and OPENSEARCH marks when it registered <amazonopensearch.com> as a domain name. Respondent’s actual knowledge is evident from the worldwide notoriety of Complainant’s famous AMAZON trademark, Respondent’s use of the AMAZON mark in combination with another trademark of Complainant, as well as from the timing of the domain name registration to capitalize on publicity related to Complainant’s OPENSEARCH trademark. Respondent’s registration and use of its confusingly similar domain name with prior knowledge of Complainant’s rights therein further shows Respondent’s bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amazonopensearch.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 8, 2021
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