Amazon Technologies, Inc. v. Will / Workable.Space
Claim Number: FA1712001761940
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by Tiffany Ferris of Haynes and Boone, LLP, Texas, USA. Respondent is Will / Workable.Space (“Respondent”), Ireland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alexadev.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 December 8, 2017; the Forum received payment on December 8, 2017.
On Dec 12, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <alexadev.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2018 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@alexadev.com. Also on December 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 January 3, 2018, 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 name be transferred from Respondent to Complainant.
A. Complainant
1. 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. Complainant uses its ALEXA mark in connection with a cloud-based voice service that enables customers to receive information, news, and entertainment, control devices within their homes or businesses, play games and more.
2. Complainant, through its predecessor-in-interest, has used the ALEXA mark in commerce since 1996, and has rights in the ALEXA mark based upon registration of the mark with various trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,181,470, registered Aug. 11, 1998). Respondent’s <alexadev.com>[1] domain name is confusingly similar to Complainant’s ALEXA mark, as the domain name incorporates the mark in its entirety, adding only the indistinctive term “dev,” which increases confusing similarity, as it clearly refers to “developer” and, in particular, ALEXA developers.
3. Respondent has no rights or legitimate interests in the <alexadev.com> domain name. Respondent is not commonly known by the ALEXA mark, nor does Respondent’s use of the domain name amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, at the time Complainant first became aware of the domain name, it resolved to a website displaying content which was directly copied from Complainant. Currently, the domain name resolves to a parked webpage displaying an offer to sell the name. The <alexadev.com> domain name is also listed for sale on the <sedo.com> domain auction website.
4. Respondent registered and is using the <alexadev.com> domain name in bad faith. Respondent’s attempts to sell the domain name for a price in excess of out of pocket costs demonstrates its bad faith. Rather, Respondent’s former use of the domain name to confuse consumers and direct them to Respondent’s competing website for commercial gain also indicates bad faith registration and use. Additionally, it is clear Respondent had constructive and actual knowledge of Complainant and its rights at the time it registered and subsequently used the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ALEXA mark. Respondent’s domain name is confusingly similar to Complainant’s ALEXA mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <alexadev.com> domain name and that Respondent registered and uses the domain name 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 rights in the ALEXA mark based upon registration of the mark with various trademark agencies, including the USPTO (e.g. Reg. No. 2,181,470, registered Aug. 11, 1998). 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).
Complainant next argues Respondent’s <alexadev.com> domain name is confusingly similar to the ALEXA mark, as the domain name incorporates the mark in its entirety, adding only the indistinctive term “dev.” The addition of generic or descriptive terms is not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark). Complainant contends the added term “dev” refers to “developer,” which serves to increase the confusing similarity of the domain name. The domain name also appends the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD is irrelevant in a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore determines the <alexadev.com> domain name is confusingly similar to the ALEXA mark per 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 <alexadev.com> domain name. 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 (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 argues that Respondent has no rights or legitimate interests in the <alexadev.com> domain name, as Respondent is not commonly known by the ALEXA mark. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a 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 “Workable.Space.” The Panel therefores find under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <alexadev.com> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <alexadev.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant has provided evidence that the domain name formerly resolved to a competing website. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See 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).”). Specifically, Complainant contends that the domain name resolved to a website which displayed content related to an ALEXA Skills Challenge that was identical to one of Complainant’s own ALEXA Skills Challenges. Complainant argues that the purpose for Respondent’s registration and use of the domain name and website was to create confusion among Internet users for its own commercial gain. Complainant further argues that Respondent’s behavior is competitive.
Complainant also has shown that Respondent is presently using the <alexadev.com> domain name to offer to sell the name. An offer to sell a domain name does not indicate rights or legitimate interests 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). Complainant has provided evidence that the domain name currently resolves to a parked webpage which displays an offer to sell the name, and that the name is currently for sale at the <sedo.com> domain name auction website. T
For all of above reasons, the Panel holds that Respondent’s use of the <alexadev.com> domain name does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims Respondent’s offers to sell the <alexadev.com> domain name indicates the name was registered and used in bad faith. A general offer to sell a domain name for an amount in excess of out-of-pocket costs can indicate 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.”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). The website to which the domain name resolves displays an offer to sell the domain, and that the name is for sale at <sedo.com> for $8,000. See Compl. Ex. 15. The Panel agrees that these offers for sale indicate Respondent registered and has continued to use the domain name in bad faith per Policy ¶ 4(b)(i).
Complainant also argues Respondent’s previous use of the <alexadev.com> domain name to confuse consumers and direct them to Respondent’s own competing website for commercial gain indicates Respondent registered and used the name in bad faith. Use of a domain name to create confusion and disrupt complainant’s business can indicate Policy ¶¶ 4(b)(iii) and (iv) bad faith. 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 ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion.”). The record shows that the domain name previously hosted material copied directly from Complainant. Complainant contends such use amounts to an attempt to confuse Internet users and divert them to Respondent’s website for commercial gain. The Panel agrees and finds Respondent registered and used the domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant also contends that in light of the fame and notoriety of Complainant's ALEXA mark, it is inconceivable that Respondent could have registered the <alexadev.com> domain name without actual knowledge of Complainant's rights in the mark. The Panel agrees with Complainant that Respondent certainly had actual knowledge of Complainant's rights in the mark prior to registering the <alexadev.com> 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).
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 <alexadev.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 8, 2018
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