Amazon Technologies, Inc. v. Vinay Pillai
Claim Number: FA1701001711993
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Vinay Pillai (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <amazonprimevideo.co>, <amazonprimevideo.org>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 11, 2017; the Forum received payment on January 11, 2017.
On January 12, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <amazonprimevideo.co>, <amazonprimevideo.org> 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 January 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 2, 2017 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@amazonprimevideo.co, postmaster@amazonprimevideo.org. Also on January 13, 2017, 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 February 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
A. Complainant
1. Complainant registered the AMAZON.COM (Reg. No. 2,078,496, registered July 15, 1997), PRIME (Reg. No. 3,234,643, registered April 24, 2007), and AMAZON PRIME (Reg. No. 3,419,886, registered April 29, 2008) marks with the United States Patent and Trademark Office (“USPTO”).
2. Respondent’s <amazonprimevideo.co> and < amazonprimevideo.org> domain names are confusingly similar as they incorporate the AMAZON, PRIME, and AMAZON PRIME marks entirely while adding the generic term “video” and the generic top-level domain “.com” (“gTLD”) or the country code top-level domain (“ccTLD”) “.co.”[1]
3. Respondent has no rights or legitimate interests in <amazonprimevideo.co> and <amazonprimevideo.org>. The WHOIS information identifies “Vinay Pillai” as registrant. Respondent has never been legitimately known as or referred to as AMAZON, PRIME, AMAZON PRIME, or any other variation.
4. Further, Respondent does not use the domain names in connection with any bona fide offering of goods or services and is not making a noncommercial fair use of the disputed domain name.
5. Respondent registered and uses <amazonprimevideo.co> and <amazonprimevideo.org> in bad faith. Respondent has used the domain names to redirect Internet users to fraudulent video-streaming websites which diverts and disrupts Complainant’s business and falls under Policy ¶ 4(b)(iii).
6. Furthermore, Respondent, a co-founder of an online video streaming business, clearly was familiar with popular online streaming websites, evidenced by Respondent’s registering of the domain names, along with other domains containing brands such as BBC, DAILY MOTION, and NETFLIX. All this use constitutes fraudulent behavior consistent with a likelihood of attempting to commercially benefit as per Policy ¶ 4(b)(iv).
7. Respondent also had knowledge of Complainant’s rights in the marks at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the AMAZON, PRIME, AMAZON PRIME marks. Respondent’s domain name is confusingly similar to Complainant’s AMAZON, PRIME, AMAZON PRIME marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <amazonprimevideo.co> and <amazonprimevideo.org> domain names and that Respondent registered and uses the domain names 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 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 (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.”).
Complainant has registered the AMAZON.COM (Reg. No. 2,078,496, registered July 15, 1997), PRIME (Reg. No. 3,234,643, registered April 24, 2007), and AMAZON PRIME (Reg. No. 3,419,886, registered April 29, 2008) marks with the USPTO. Registration of a mark with the USPTO is sufficient to establish a registrant’s rights in a mark. See Glashütter Uhrenbetrieb GmbH v. li zilin / QQ869292929, FA 1575562 (FORUM September 23, 2014) (“Trademark registrations with a governmental authority are sufficient to prove rights in a mark pursuant to Policy ¶4(a)(i)”). Therefore, the Panel holds Complainant has established rights in the AMAZON.COM, PRIME, and AMAZON PRIME marks for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <amazonprimevideo.co> and <amazonprimevideo.org> domain names are confusingly similar to Complainant’s marks as they incorporate the AMAZON, PRIME, and AMAZON PRIME marks entirely while adding the generic term “video”. The Panel agrees. See State Farm Mutual Automobile Insurance Company v. New Ventures Services, Corp, FA 1647714 (FORUM Dec. 17, 2015) (finding that adding the common name “John” to complainant’s STATE FARM mark was insufficient to overcome a determination of confusing similarity.); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (FORUM Jan. 21, 2016) (determining that confusing similarity exist where domain name contains a complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain). Moreover, adding the gTLD “.com” or the ccTLD “.co” is irrelevant to an analysis of confusing similarity. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (FORUM July 9, 2015) (“Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”); ER Marks, Inc. and QVC, Inc. v. Stefan Hansmann, FA 1381755 (FORUM May 6, 2011) (“Neither the addition of country code top-level domains, i.e., ‘.co.,’ ‘.de,’ ‘.cr,’ ‘.es,’ nor the insertion of a gTLD has a distinctive function”). Therefore, the Panel agrees that Respondent’s domain names are confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <amazonprimevideo.co> and <amazonprimevideo.org> domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in <amazonprimevideo.co> and <amazonprimevideo.org>. Where a response is lacking, a panel may consider the WHOIS information and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (FORUM July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS information identifies “Vinay Pillai” as registrant. Furthermore, Complainant has shown that Respondent is not affiliated with Complainant, nor does it hold any license to use any of Complainant’s marks. Accordingly, the Panel agrees that Respondent is not commonly known by <amazonprimevideo.co> and <amazonprimevideo.org> under Policy ¶ 4(c)(ii).
Further, Complainant argues that Respondent does not use <amazonprimevideo.co> and <amazonprimevideo.org> in connection with any bona fide offering of goods or services or any legitimate noncommercial or fair use because they redirect Internet users to a website called dekkho, “a premium video-streaming service where you discover, view, share and socialize content.” Because Respondent is using Complainant’s marks to divert Internet users to a business unrelated to that of the Complainant, the Panel holds Respondent lacks rights or legitimate interests in the <amazonprimevideo.co> and <amazonprimevideo.org> domain names. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (FORUM Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) Moreover, the record shows that Respondent’s use of Complainant’s marks is for the purpose of attempting to induce Internet users to provide personal and financial information to Respondent; this is a further reason that Respondent has made no bona fide offering of goods or services or legitimate noncommercial or fair use of the domain names.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses <amazonprimevideo.co> and <amazonprimevideo.org> in bad faith. To support this contention Complainant has provided evidence that Respondent has demonstrated a pattern of bad faith registrations through registering multiple domain names reflecting famous third-party marks. Registering multiple infringing domain names is sufficient to establish bad faith. See Australian Stock Exch. v. Cmty. Internet (Australia) Pty Ltd, D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where the respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses). The Panel agrees that Respondent’s conduct constitutes bad faith under Policy ¶ 4(b)(ii).
Complainant asserts that Respondent’s use of the domain names to redirect Internet users to a video streaming service competes and disrupts Complainant’s video streaming service. The Panel agrees that where a respondent uses a confusingly similar domain name to offer services in competition with a complainant’s business, that amounts to bad faith. See Spark Networks PLC v. Houlihan, FA 653476 (FORUM Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)). The Panel finds Respondent’s behavior constitutes bad faith under Policy ¶ 4(b)(iii).
Furthermore, Complainant argues that Respondent has attempted to commercially benefit by redirecting users to its streaming video business using domains containing AMAZON, PRIME, and AMAZON PRIME VIDEO. A respondent’s efforts to commercially benefit by use of a domain name in which a complainant has rights to redirect Internet users to an unrelated website demonstrates bad faith under Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (FORUM Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Complainant also contends that in light of the fame and notoriety of Complainant's AMAZON, PRIME, and AMAZON PRIME VIDEO marks, it is inconceivable that Respondent could have registered the domain names without actual knowledge of Complainant's rights in the mark. The Panel agrees with Complainant, however, that Respondent most certainly had actual knowledge of Complainant's rights in the marks prior to registering the domain names and that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amazonprimevideo.co>, <amazonprimevideo.org> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 20, 2017
[1] Respondent registered <amazonprimevideo.co> and <amazonprimevideo.org> on July 27, 2016 and February 1, 2016, respectively.
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