Amazon Technologies, Inc. v. jay kumar
Claim Number: FA1712001761254
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is jay kumar (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amazoṇ.com> [xn--amazo-7l1b.com], 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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on December 4, 2017; the Forum received payment on December 4, 2017.
On Dec 05, 2017, Godaddy.Com, LLC confirmed by e-mail to the Forum that the <amazoṇ.com> [xn--amazo-7l1b.com] domain name is registered with Godaddy.Com, LLC and that Respondent is the current registrant of the name. 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 December 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@xn--amazo-7l1b.com. Also on December 6, 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 December 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.
A. Complainant
Complainant, Amazon Technologies, Inc., is one of the world’s largest online retailers, offering products and services to more than 100 countries around the globe. In connection with this business, Complainant uses its AMAZON and AMAZON.COM marks to provide and market its goods and services. Complainant has rights in the AMAZON and AMAZON.COM marks based upon its registration of them with the United States Patent and Trademark Office (“USPTO”), as follows: AMAZON (Reg. No. 2,832,943) was registered April 13, 2004; AMAZON.COM (Reg. No. 2,837,138) was registered April 27, 2004). Respondent’s <amazoṇ.com> domain name (the “Domain Name”) is an internationalized domain name (IDN) with the Punycode transcription <xn--amazo-7l1b.com>. In its Unicode iteration it is identical or confusingly similar to Complainant’s AMAZON and AMAZON.COM marks, as it incorporates the AMAZON.COM mark in its entirety, merely exchanging the letter “n” with the substantially identical non-traditional character “ṇ” (with the small dot under the “n”). This change does not distinguish the Domain name from Complainant’s marks under the Policy.
Respondent has no rights or legitimate interests in the Domain Name. He is not commonly known by it, nor has Complainant authorized or licensed Respondent to use the AMAZON or AMAZON.COM marks in any manner. Respondent’s use of the Domain Name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Domain Name previously resolved to a fake AMAZON logo-branded retail listing for a mobile phone and also presented advertisement for third-party web sites. Complainant’s name, logos and graphics were featured on this web site, causing visitors to believe that it originated with Complainant, when it did not. The Domain Name more recently redirected to an online education website.
Respondent registered and is using the Domain Name in bad faith. His web site passes itself off as Complainant’s, and disrupts Complainant’s business by diverting consumers seeking Complainant to a scam retail listing or online education services which complete with online education services offered by Complainant. This demonstrates bad faith under Policy ¶¶ 4(b)(iii) and (iv). Finally, it is clear Respondent had actual knowledge of Complainant and its rights at the time he registered the Domain Name, on September 14, 2017.
Respondent
Respondent did not submit a Response in this proceeding.
Preliminary Issue: Internationalized Domain Name/Characters
As stated by Complainant, the Domain Name is an IDN. Since the “ṇ” in the “amazoṇ” label within the Domain Name is a non-ANSII character, the ToASCII program applies the Nameprep algorithm, transcribing the result to ASCII using Punycode and prepending the four-character string “xn—.“ Thus, as seen in the WHOIS information of record, the Domain Name appears as <xn--amazo-7l1b.com>. Panels have routinely treated Punycode transcriptions of domain names as interchangeable with their IDN counterparts. Microsoft Corp. v. Harrington, FA1305319 (Forum Mar. 16, 2010) (finding <bıng.com> [xn--bng-jua.com] confusingly similar to BING and noting, “The Panel finds that exchanging one letter for another in the disputed domain name fails to prevent confusing similarity according to Policy ¶ 4(a)(i), especially when the disputed domain name remains visually similar to Complainant’s mark”), and NIKE, Inc. and Nike Innovate, C.V. v. michal restl c/o Dynadot, FA1703001723952 (Forum May 11, 2017) (finding <nıke.com> [xn--nke-jua.com] confusingly similar to NIKE and noting, “Panels have determined that exchanging a letter in a mark for a Unicode character fails to distinguish a domain name for the purposes of a Policy ¶ 4(a)(i) analysis of confusing similarity”). In accordance with this practice, the Panel determines that analyzing the IDN <amazoṇ.com> rather than its Punycode equivalent <xn--amazo-7l1b.com> is proper.
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 will 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 rights in the AMAZON and AMAZON.COM marks based upon registration of them with the (“USPTO”), as follows: AMAZON (Reg. No. 2,832,943) was registered April 13, 2004; AMAZON.COM (Reg. No. 2,837,138) was registered April 27, 2004). See, Compl. Ex. K. Registration of a mark with the USPTO is sufficient to establish rights in that mark. 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 holds that Complainant’s registration of the AMAZON and AMAZON.COM marks with the USPTO is sufficient to establish rights in those marks under Policy ¶ 4(a)(i).
Respondent’s Domain Name is confusingly similar to the AMAZON.COM mark, as it consists completely of the mark, merely substituting the internationalized letter “ṇ” for the letter “n.” Such a change is not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Microsoft Corp. v. Jason Harrington, FA1305319 (Forum Mar. 16, 2010) (finding that the replacement of the standard ASCII character “i” with an “ı,” a non-ASCII, Latin Extended A character 0131, in the domain name, <bıng.com>, failed to prevent confusing similarity with complainant’s mark, BING).
Based upon the foregoing, the Panel finds that the Domain Name is confusingly similar to the AMAZON.COM mark, in which Complainant has demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interest. If, though, the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0 at ¶ 2.1.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) he is not commonly known by the Domain Name, (ii) Complainant has not authorized him to use the AMAZON.COM mark, and (iii) he is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because the web site resolving from the Domain Name passes itself off as Complainant’s and this cannot constitute a bona fide offering of goods and services, or a legitimate noncommercial or fair use of the domain name. These allegations are supported by competent evidence. The WHOIS record associated with this case identifies registrant as “jay kumar.” See, Complaint Exhibit A. This is competent evidence that Respondent is not commonly known by the Domain Name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Further, Complainant states that it has never authorized Respondent to use its AMAZON.COM mark in any domain name registration. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel.
Exhibit L attached to the Complaint is a screenshot of the web page until recently resolving from the Domain Name, which contains the AMAZON name and logo, with features such as an orange rectangular box with the words “BUY NOW” mimicking features found on Complainant’s web site. See, Complaint Exhibit L, and Complaint, p. 6. The overall impression conveyed by the Exhibit L screen shot is that the web page shown there is a page from Complainant’s web site. Complainant alleges that after two successful takedown requests involving the content shown on Exhibit L, Respondent redirected the Domain Name to an online education site, a screenshot of which is attached to the Complaint as Exhibit M. Complainant also offers online education services, as illustrated by a screenshot of a page from its web site attached to the Complaint as Exhibit N. The Exhibit M screenshot (Respondent’s new resolving web site) does not contain the name AMAZON or any of Complainant’s logos but it does continue the same color scheme and an orange box where the visitor can click to “Apply Now,” and it still gives the impression of an Amazon web site. These uses constitute an obvious passing off of Respondent’s website as a Complainant web site, and none qualifies as a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the Domain Name within the meaning of Policy ¶¶ 4(c)(i) or (iii). Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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)”).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Respondent’s passing-off behavior described above is also evidence of bad faith registration and use of the Domain Name. Target Brands, Inc. v. JK Internet Servs., FA 349108 (Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
Further, Respondent registered the Domain Name on September August 14, 2017. See, WHOIS report, Exhibit A to Complaint. Because of Respondent’s use of Complainant’s name, logo, color scheme and other characteristics of an Amazon.com web site on his Exhibit L web site, and because of the world-wide fame of Complainant’s AMAZON.COM mark, it is certain that Respondent had actual knowledge of that mark when he registered the Domain Name. This has consistently been held to be evidence bad faith registration. 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), Chevron Intellectual Property LLC v. Richard Bailey/Jacobs, FA 1588430 (Forum Dec. 9, 2014) (finding that respondent’s behavior of sending emails impersonating complainant demonstrated that the domain name was registered with complainant in mind), and Michelin North America, Inc. v. Innis, FA 1511296 (Forum Dec. 27, 2013) (holding that respondent’s registration of domain names that were confusingly similar to complainant’s famous marks evidenced that respondent had actual knowledge of complainant’s marks and rights and registered the domain names in bad faith under Policy ¶ 4(a)(iii)).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xn--amazo-7l1b.com> domain name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
January 2, 2018
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