Amazon Technologies, Inc. v. null
Claim Number: FA1303001488185
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is null (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amazonbookclubs.com>, registered with Tucows Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2013; the National Arbitration Forum received payment on March 1, 2013.
On March 1, 2013, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <amazonbookclubs.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. 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 March 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 2013 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@amazonbookclubs.com. Also on March 4, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 made the following contentions.
1. Complainant commenced business in July 1995, offering online retail store services featuring books via the web site www.amazon.com. It has since expanded its retail offerings beyond books to a broad range of other products and services and today it is one of the world’s largest online retailers.
2. Complainant owns many trademarks in the USA and internationally for AMAZON, for example the registered service mark No. 2, 832, 943 for AMAZON, registered with the United States Patent and Trademark Office (“USPTO”) on April 13, 2004.
3. The disputed domain name is confusingly similar to the Amazon Mark as it incorporates the AMAZON mark in its entirety, adding only “book” and “clubs,” generic terms which relate to Complainant’s business and the generic TLD “.com”.
4. The disputed domain name is confusingly similar to the Amazon Mark.
5. The disputed domain name incorporates the AMAZON trademark in its entirety, adding only “book” and “clubs,” generic terms which relate to Complainant’s business and the generic TLD .com. These elements are insufficient to negate the confusing similarity between Respondent’s domain name and Complainant’s famous marks, particularly where the added elements relate directly to Complainant’s book, e-book, and book club services.
6. Respondent has no rights or legitimate interests in the disputed domain name.
7. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; Respondent is not making a noncommercial fair use of the disputed domain name; Respondent has never been legitimately known as or referred to by the domain name.
8. Prior to Respondent’s receipt of Complainant’s initial complaint letter, the disputed domain <amazonbookclubs.com> pointed to a web site saturated with Complainant’s trademarks, logos, icons and artwork. Respondent has aggressively promoted its website and book promotion services in various channels using Complainant’s logos and identity. Respondent is plainly passing itself off as Complainant and this is not a legitimate use.
9. Furthermore, Respondent’s use of a domain name confusingly similar to AMAZON and AMAZON.COM to offer book promotion and book club related services, in competition with Complainant, is likely to mislead the public and is not a legitimate use.
10. Promoting Barnes & Noble, Complainant’s competitor, is also not 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).
11. After receiving Complainant’s initial letter, Respondent modified its web site by adding a disclaimer. However, this disclaimer cannot overcome the appearance of association created by the balance of Respondent’s web site or the domain name itself.
11. Disclaimers aside, Respondent’s site continues to promote book club and book promotion services that compete with Amazon, using a domain name confusingly similar to AMAZON and this is not a legitimate or bona fide use.
12. Respondent registered and used the disputed domain name in bad faith.
13. Respondent registered the disputed domain name with knowledge of Complainant’s rights, and intended to create an association with Complainant and its products and services.
14. Furthermore, by using a domain name confusingly similar to Complainant’s famous trademark, and making gratuitous use of Complainant’s logos and graphics, Respondent creates the false impression of a site and business that originates with or is sponsored by Complainant and this is the sort of conduct that falls under Policy ¶ 4(b)(iv).
15. Furthermore, by offering directly competing services under a confusingly similar name, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s AMAZON and AMAZON.COM trademarks, and Amazon’s well-known book-related businesses, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
16. Moreover, Respondent’s promotion of competing services (its own services as well as Barnes & Noble’s services) under a confusingly similar name diverts and disrupts Complainant’s business and falls under Policy ¶ 4(b)(iii).
1. Complainant is a famous and successful United States company engaged in online retail store services featuring books and a broad range of other products. It is one of the world’s largest online retailers.
2. Complainant owns many trademarks in the USA and internationally for AMAZON and related marks, for example the registered service mark
No. 2, 832, 943 for AMAZON, registered with the United States Patent and Trademark Office (“USPTO”) on April 13, 2004.
3. Respondent registered the disputed domain name on September 2, 2012. It resolves to a website which offers book promotion and book club related services which are in competition with Complainant and likely to mislead the public.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it does and it relies on the many trademarks in the USA and internationally for AMAZON and related terms that it owns, for example the registered service mark No. 2, 832, 943 for AMAZON, registered with the United States Patent and Trademark Office (“USPTO”) on April 13, 2004. Based upon the evidence of the registrations provided, the Panel finds that Complainant has established its rights in the AMAZON mark under Policy ¶ 4(a) (i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
The second question that arises is whether the disputed domain name is identical or confusingly similar to the AMAZON mark. Complainant maintains that it is and the Panel agrees with that submission. That is so because the domain name consists of the AMAZON mark in its entirety together with the expression “bookclubs”, which describes one of the activities of Complainant, namely book clubs, which is referred to on its website at www.amazon.com. It has long been held that the addition of generic words of this sort cannot negate confusing similarity that otherwise exists as it does in the present case: see Hewlett-Packard Dev. Co. L.P. v. Surya Tech., FA0708001059665 (Nat. Arb. Forum Oct. 2, 2007)(finding <hpsoftware.com> confusingly similar to HP and noting that “addition of a term that relates to the business in which Complainant engages and the addition of the gTLD are not sufficient to differentiate a domain name from a known mark”.). The also Panel notes that the disputed domain name include the generic top-level domain (“gTLD”) “.com”, but it is now well established that the top level domain cannot negate a finding of confusing similarity that otherwise exists. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, the Panel finds that the domain name is confusingly similar to the AMAZON mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arab. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerber, FA 780200 (Nat. Arab. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s AMAZON service mark and to use it in its domain name, adding additional words that relate to part of Complainant’s business, thus giving the false impression by the construction of the domain name that it is an official domain name of Complainant dealing with book club services provided by Complainant which will lead to an official website of Complainant dealing with book clubs;
(b) Respondent has then used the domain name to pass itself off as Complainant by saturating its website with Complainant’s trademarks, logos, icons and artwork and aggressively promoting its website and book promotion services in various channels using Complainant’s logos and identity which is likely to mislead the public and is not a legitimate use;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant and Respondent is not sponsored by or legitimately affiliated with Complainant in any way;
(d) Complainant also submits that Respondent has never been legitimately known as or referred to by the domain name. Having regard to the whole of the evidence and the likelihood of the situation as contended for by Complainant, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii) because there is no evidence suggesting otherwise. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. 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);
(e) Complainant also submits that Respondent is passing itself off as Complainant and that its website has explicitly and falsely stated “WE ARE SPONSOR BY Amazon.com Best Books of the Month” and has also promoted Complainant’s competitors, including Barnes & Noble. That is the basis on which Complainant submits that Respondent’s use of the domain name on its website is not 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). The Panel accepts the evidence tendered by Complainant and finds that Respondent’s use of the domain name is not 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). Respondent is plainly passing itself off as Complainant and this is not a legitimate use. Nor is any of its conduct demonstrated by the detailed evidence adduced by Complainant such that it could give rise to a right or legitimate interest in the domain name. See Microsoft Corp. v. lijiuliang, FA0912001300266 (Nat. Arb. Forum Feb. 11, 2010)(“Respondent’s attempt to pass itself off as Complainant by imitating Complainant’s official website … is not 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)”). See also Fred W. Gretsch Enterprises, Ltd v. NOLDC, Inc., FA0906001270597 (Nat. Arb. Forum Aug. 5, 2009) (finding that when a respondent used the domain name <gretschdrum.com> to link to products that competed with those of the Complainant, "[t]he competitive nature of Respondent's use of [the domain name] renders this use neither bona fide offering of goods or services under Policy 4(c)(i) nor a legitimate noncommercial or fair use of the [domain name] under Policy4(c)(iii)")).
(f) Furthermore, as Complainant submits, “Respondent’s use of a domain name confusingly similar to AMAZON to offer book promotion and book club related services, in competition with Complainant, is likely to mislead the public and is not a legitimate use.” The Panel agrees and so finds. Marvin Lumber and Cedar Company v. Chan, FA1205001442493 (Nat. Arb. Forum June 7, 2012)(finding that “sell[ing] products and services in direct competition with those that Complainant offers” is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use);
(g) There is no other ground on which it could be said that Respondent has a right or legitimate interest in the domain name.
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 name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered the disputed domain name with knowledge of Complainant’s rights, and intended to create an association with Complainant and its products and services. In view of the fame of Complainant’s mark, being one of the most famous marks and business names in the world and in view of the use of it made by Respondent, namely by copying it and pretending that it is Complainant, the Panel concludes that Respondent must have had actual knowledge of the mark at the time of the registration of the domain name and that it was thus registered in bad faith; see Assoc.Materials, Inc. v. Perura Wells, Inc. FA154121 (Nat. Arb. Forum, May 23, 2003 (respondent’s actual knowledge of a complainant’s rights in the ULTRAGUARD mark evidenced that the disputed domain name was registered in bad faith).
Secondly, Complainant submits that, by using a domain name confusingly similar to Complainant’s famous trademark, and making gratuitous use of Complainant’s logos and graphics, Respondent creates the false impression of a site and business that originates with or is sponsored by Complainant and this is the sort of conduct that falls under Policy ¶ 4(b)(iv). Respondent has actually stated on its website that “WE ARE SPONSOR BY Amazon.com Best Books of the Month” and has also promoted Complainant’s competitors, including Barnes & Noble. The Panel agrees with Complainant’s submission and finds that the evidence brings the case clearly within Policy ¶ 4(b)(iv): see Etsy, Inc. v. Elizabeth McKinstry, FA1109001407949 (Nat. Arb. Forum Nov. 1, 2011)(finding that registration and use of domain name to offer unrelated hyperlinks is evidence of bad faith); Fred W: Gretsch Enterprises; Ltd v. NOLDC, Inc., FA0906001270597 (Nat. Arb. Forum Aug. 5, 2009) (respondent acted in bad faith by using Complainant's mark to divert confused customers to websites selling competitors' products).
Thirdly, the same conduct brings the case within Policy ¶ 4(b)(iii). When the Respondent pretends that it is Complainant, copies its website and engages in a sustained attempt to mislead consumers, this clearly disrupts Complainant and its business.
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the AMAZON mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amazonbookclubs.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 17, 2013
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