Amazon Technologies, Inc. v. JAMALABUKOU / Jamal Abukou
Claim Number: FA1709001748931
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by Craig A. Beaker of Perkins Coie, District of Columbia, USA. Respondent is JAMALABUKOU / Jamal Abukou (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <amazonwage.com> and <amazon-vip-club.com>, registered with FastDomain Inc. and GoDaddy.com, LLC, respectively.
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 Forum electronically on September 14, 2017; the Forum received payment on September 13, 2017.
On Sep 15, 2017, FastDomain Inc.; GoDaddy.com, LLC confirmed by e-mail to the Forum that the <amazonwage.com> and <amazon-vip-club.com> domain names are registered with FastDomain Inc.; GoDaddy.com, LLC and that Respondent is the current registrant of the names. FastDomain Inc.; GoDaddy.com, LLC has verified that Respondent is bound by the FastDomain Inc.; 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 September 19, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 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@amazonwage.com, postmaster@amazon-vip-club.com. Also on September 19, 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 October 12, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant, Amazon Technologies, Inc., is an online retail and computing technologies company. Complainant uses the famous AMAZON mark to offer and market its services and has rights in the mark based upon multiple registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,167,345, registered Jun. 23, 1998). See Compl. Ex. D. Respondent’s <amazonwage.com> and <amazon-vip-club.com> are confusingly similar to the AMAZON mark, as each includes the mark in its entirety, merely adding the generic or descriptive terms “wage” or “vip-club,” as well as the generic top-level domain (“gTLD”) “.com.” Respondent’s <amazon-vip-club.com> also adds hyphens, which is an irrelevant change to a mark.
Respondent has no rights or legitimate interests in the <amazonwage.com> and <amazon-vip-club.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use the AMAZON mark for any reason. Respondent’s use of the disputed domain names does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the <amazonwage.com> domain name diverts Internet users to Respondent’s website which provides an online marketplace which competes with Complainant’s business. See Compl. Ex. E. The <amazon-vip-club.com> domain name resolves to a page consisting of hyperlinks to third-party websites and a general offer for sale of the name. See Compl. Ex. F.
Respondent has registered and used the domain names in bad faith. Respondent’s attempt to sell the <amazon-vip-club.com> domain name indicates bad faith. Also, the <amazonwage.com> domain name is used to attract and confuse Internet users and present them with a competing website. Further, the third-party links at the <amazon-vip-club.com> domain name serve to divert and confuse Internet users, presumably for profit. Finally, the fame and notoriety of the AMAZON mark and the fact that Respondent wholly incorporated the mark in the domain names indicate Respondent had actual knowledge of Complainant’s rights in the mark
B. Respondent
Respondent failed to file a Response in this proceeding.
1. Complainant is a United States company that is a prominent online retail and computing technologies company.
2. Complainant has established its registered trademark rights in the AMAZON mark by virtue of its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,167,345, registered Jun. 23, 1998).
3. Respondent registered the <amazon-vip-club.com> domain name on August 26, 2015 and the <amazonwage.com> domain name on November 12, 2016.
4. Respondent has caused the <amazonwage.com> domain name to divert Internet users to Respondent’s website which provides an online marketplace which competes with Complainant’s business and has caused the <amazon-vip-club.com> domain name to resolve to a page consisting of hyperlinks to third-party websites and a general offer for sale of the domain name.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it has trademark rights in the AMAZON mark based upon registration of the mark with the USPTO (e.g. Reg. NO. 2,167,345, registered Jun. 23, 1998). See Compl. Ex. D. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore finds that Complainant’s registration of the AMAZON mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s AMAZON mark. Complainant submits that the <amazonwage.com> and <amazon-vip-club.com> domain names are confusingly similar to the AMAZON mark, as both domain names contain the mark in its entirety and add respectively the generic or descriptive term “wage” or “vip-club” and the gTLD “.com.” Addition of a generic or descriptive term and a gTLD to a mark in order to create a domain name does not distinguish the resultant domain name for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Respondent’s <amazon-vip-club.com> domain name also includes hyphens, which are irrelevant in a Policy ¶ 4(a)(i) analysis. See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). The Panel therefore finds the <amazonwage.com> and <amazon-vip-club.com> domain names to be confusingly similar to the AMAZON mark per Policy ¶ 4(a)(i).
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 (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. Gerberg, FA 780200 (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 mark and to
use it in its domain names, adding only respectively the words “wage” and “vip-club” which encourages internet users to assume that the domain names relate to Complainant and its business activities;
(b) Respondent registered the <amazon-vip-club.com> domain name on August 26, 2015 and the <amazonwage.com> domain name on November 12, 2016;
(c) Respondent has caused the <amazonwage.com> domain name to divert Internet users to Respondent’s website which provides an online marketplace which competes with Complainant’s business and has caused the <amazon-vip-club.com> domain name to resolve to a page consisting of hyperlinks to third-party websites and a general offer for sale of the domain name;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <amazonwage.com> and <amazon-vip-club.com> domain names, as Respondent is not commonly known by the domain names, nor has Complainant authorized Respondent to use the AMAZON mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Jamal Abukou.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in said domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the domain names;
(f) Complainant also argues Respondent’s lack of rights or legitimate interests in the disputed domain names is evinced by its failure to use the names for a bona fide offering of goods or services or legitimate noncommercial or fair use. The <amazonwage.com> domain name diverts Internet users to Respondent’s website which provides an online marketplace which competes with Complainant’s business. See Compl. Ex. E. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) and (iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “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).”). The Panel therefore finds that Respondent lacks rights and legitimate interests in the <amazonwage.com> domain name;
(g) Complainant further argues Respondent lacks rights and legitimate interests in the <amazon-vip-club.com> domain name because the domain name resolves to a page consisting of third-party links. See Compl. Ex. F. Use of a disputed domain name to host third-party links is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”). The Panel therefore finds Respondent lacks rights and legitimate interests in the <amazon-vip-club.com> domain name per Policy ¶ 4(c)(i) and (iii);
(h) Complainant also argues that Respondent offers the <amazon-vip-club.com> domain name for sale, which constitutes as part of the evidence in this proceeding further evidence of Respondent’s lack of rights and legitimate interests in the domain name. Offers to sell a disputed domain name can independently indicate a lack of rights and legitimate interests in the name per Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). The website resolving from the domain name displays the text “This Domain May Be For Sale. Click Here To Buy Now,” which Complainant submits means the domain name is for sale. See Compl. Ex. F. The Panel agrees and finds Respondent to lack rights and legitimate interests in the <amazon-vip-club.com> 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 names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent’s offering of the <amazon-vip-club.com> domain name for sale indicates its bad faith. A general offer for sale of a domain name can, together with other evidence, be evidence of bad faith per Policy ¶ 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). The Panel recalls that the <amazon-vip-club.com> domain name displays text which indicates the domain name is for sale. See Compl. Ex. F. The Panel therefore finds Respondent has registered and used the <amazon-vip-club.com> domain name in bad faith per Policy ¶ 4(b)(i).
Secondly, Complainant claims the <amazon-vip-club.com> domain name resolving to a page of third-party links further indicates Respondent’s bad faith. Use of a disputed domain name to resolve to a page of third-party links can be evidence of bad faith per Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). The Panel recalls that the domain name resolves to a page of third-party links, from which Respondent presumably benefits. See Compl. Ex. E. The Panel finds Respondent to have registered and used the <amazon-vip-club.com> domain name in bad faith per Policy ¶ 4(b)(iv).
Thirdly, Complainant contends that Respondent has registered and used the <amazonwage.com> domain name in bad faith, as demonstrated by the domain name resolving to a competing e-commerce website. Use of a disputed domain name to resolve to a website which competes with the complainant’s business can demonstrate bad faith per Policy ¶ 4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). Complainant contends that the <amazonwage.com> domain name resolves to a website which hosts an online marketplace which competes with Complainant’s business. See Compl. Ex. E. The Panel finds Respondent to have registered and used the <amazonwage.com> domain name in bad faith per Policy ¶ 4(b)(iii) and/or (iv).
Fourthly, Complainant contends that in light of the fame and notoriety of Complainant's AMAZON mark, it is inconceivable that Respondent could have registered the <amazonwage.com> and <amazon-vip-club.com> domain names without actual knowledge of Complainant's rights in the mark. The Panel here finds that arguments of bad faith based on constructive notice are usually not successful. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds 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).
Finally, 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 names using the AMAZON mark and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used them 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 <amazonwage.com> and <amazon-vip-club.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 13, 2017
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