Amazon Technologies, Inc. v. sysco / onuptecho
Claim Number: FA2201001982382
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is sysco / onuptecho (“Respondent”), Delhi.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <amazon-amazonmytv.com> and <amazonmytv-blog.com>, registered with Eranet International Limited.
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 January 28, 2022; the Forum received payment on January 28, 2022.
On February 14, 2022, Eranet International Limited confirmed by e-mail to the Forum that the <amazon-amazonmytv.com> and <amazonmytv-blog.com> domain names are registered with Eranet International Limited and that Respondent is the current registrant of the names. Eranet International Limited has verified that Respondent is bound by the Eranet International Limited 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 February 17, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of March 9, 2022 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@amazon-amazonmytv.com, postmaster@amazonmytv-blog.com. Also on February 17, 2022, the Chinese and English language 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 March 16, 2022, 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the Respondent is conversant and proficient in the English language. Therefore, after considering the circumstance of the present case and the fact that Respondent has failed to object to proceeding going forward in English, the Panel finds that the proceeding should go forward in English.
A. Complainant
Complainant contends as follows:
Complainant provides an online platform for users to purchase a variety of products and services.
Complainant asserts rights in the AMAZON mark through its registration of the mark with multiple trademark agencies around the world, including the United States Patent and Trademark Office (USPTO).
Respondent’s <amazon-amazonmytv.com> and <amazonmytv-blog.com> at-issue domain names are identical or confusingly similar to Complainant’s AMAZON mark, as it incorporates the mark in its entirety, only adding generic terms, a hyphen, and the “.com” generic top-level domain (gTLD).
Respondent has no rights or legitimate interests in the at-issue domain names. Complainant has not authorized or licensed Respondent to use the AMAZON mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as Respondent attempts to pass off as Complainant at the resolving websites.
Respondent registered and uses the <amazon-amazonmytv.com> and <amazonmytv-blog.com> domain names in bad faith. Respondent attempts to attract users for commercial gain by passing off as Complainant. Further, Respondent disrupts Complainant’s business by offering competing goods and services. Finally, Respondent also had actual notice of Complainant’s rights in the AMAZON mark, evidenced by the fame and notoriety of the mark as well as Respondent’s offer of competing services.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the AMAZON mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the AMAZON trademark.
Respondent uses the domain names to address webpages displaying Complainant’s mark and logo, and offering services that compete with Complainant’s streaming services. Webpages referenced by the at-issue domain names also feature buttons and links designed to mislead and misdirect internet users accessing such pages.
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 names are each confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration along with multiple other national trademark registrations for its AMAZON trademark. Any of such registrations is sufficient to demonstrate Complainant’s rights in the AMAZON mark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”); see also Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”).
Respondent’s <amazon-amazonmytv.com> and <amazonmytv-blog.com> domain names each contain Complainant’s AMAZON trademark included with the generic terms “my” and “tv” and/or “blog” as well as a hyphen. Both domain names end with the top-level domain name “.com.” The differences between Respondent’s domain names and Complainant’s AMAZON trademark are insufficient to distinguish either domain name from AMAZON for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <amazon-amazonmytv.com> and <amazonmytv-blog.com> domain names are each confusingly similar to Complainant’s trademark. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”); see also, ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”).
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).
Here, Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark 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.
WHOIS information for the at-issue domain names identifies the domain names’ registrant as “sysco.” The record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by either the <amazon-amazonmytv.com> or <amazonmytv-blog.com> domain name. The Panel therefore concludes that Respondent is not commonly known by <amazon-amazonmytv.com> and <amazonmytv-blog.com> 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’s <amazon-amazonmytv.com> and <amazonmytv-blog.com> domain names pose as being affiliated with or sponsored by Complainant. Browsing to such addresses returns webpages featuring multiple incidents of Complainant’s mark and logo although they are unaffiliated with Complainant. The webpages ultimately offer services that unfairly compete with services offered by Complainant. Respondent’s use of the domain names for such purposes shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”); see also 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).”).
Given the forgoing and absent any contrary evidence from Respondent, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain names under Policy ¶ 4(a)(ii).
As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent registered and used the at-issue domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent uses the confusingly similar at-issue domain names to pass itself off as Complainant by dressing referenced webpages as if affiliated with or sponsored by Complainant. Respondent’s phony webpages are adorned with multiple references to AMAZON in a manner intended to misidentify AMAZON as the source of such webpages. Thereby, Respondent’s confusingly similar domain names facilitate Respondent’s offering services competing with Complainant’s services by misappropriating the goodwill resident in Complainant’s AMAZON trademark. In furtherance of fraud, webpages addressed by the at-issue domain names are confusingly cross linked to each other while appearing to reference actual AMAZON sponsored webpages. Using the at-issue domain names in this manner shows Respondent’s bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 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.”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the AMAZON mark when it registered <amazon-amazonmytv.com> and <amazonmytv-blog.com> as domain names. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s registration of multiple domain names containing Complainant’s trademark to pass itself off as Complainant and offer competing services. Respondent’s registration of the at-issue domain names with knowledge of Complainant’s trademark rights in AMAZON shows Respondent’s bad faith registration and use of the at-issue domain names pursuant to 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 <amazon-amazonmytv.com> and <amazonmytv-blog.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 18, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page