Amazon Technologies, Inc. v. Romuald Bruguier / Adsholics
Claim Number: FA1804001784455
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Romuald Bruguier / Adsholics (“Respondent”), United Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amazing-prime.com>, registered with NameCheap, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 30, 2018; the Forum received payment on April 30, 2018.
On May 1, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <amazing-prime.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 May 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 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@amazing-prime.com. Also on May 2, 2018, 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. However Respondent did sent e-mails to the Forum, see below.
On May 24, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 is one of the world’s largest online retailers, and uses the AMAZON, PRIME, and AMAZON PRIME marks in connection with its goods and services. Its website is the 5th most-viewed website in the United States, the 11th most-viewed website globally, and the No. 1 most-viewed shopping website. As of 2014, Complainant had more than 244 million active customer accounts, which are unique email addresses that have placed an order within the prior 12 months. Revenues for fiscal 2017 were more than $170 billion. Complainant’s worldwide expenditures on advertising and other promotional costs for 2017 were $6.3 billion. More than 100 million customers subscribe to Prime, a service that Complainant launched in 2005. Complainant has rights in the AMAZON, PRIME, and AMAZON PRIME marks based upon its registration of the marks in the United States in, respectively, 2004, 2007, and 2008. The marks are also registered elsewhere around the world and they are famous.
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s AMAZON PRIME mark as the domain name merely substitutes the letter “i” for the letter “o”, adds the letter “g”, a hyphen, and the “.com” generic top-level domain (“gTLD”). The disputed domain name is also confusingly similar to Complainant’s PRIME mark as it merely adds the descriptive or generic term “amazing,” a hyphen, and the “.com” gTLD to Complainant’s mark. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the AMAZON, PRIME, or AMAZON PRIME marks in any manner. Additionally, Respondent’s use of the disputed domain does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to pass off as Complainant and offer competing, online retail services. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and is using the disputed domain name in bad faith. Respondent disrupts Complainant’s business and intentionally attempts to attract, presumably for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Respondent adds to this confusion by passing off as Complainant in furtherance of its competing, online retail service. Moreover, Respondent registered the disputed domain name with a privacy service. Further, Respondent had actual knowledge of Complainant’s rights in the AMAZON, PRIME, and AMAZON PRIME marks. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding. In its e-mail to the Forum Respondent states, in pertinent part: “From what I understood so far, domain is the issue. If I change the domain and logo it is fine?” And, subsequently: “Anyway, logo and domain have been changed and the dev team will double check tomorrow. I hope it close the case on your side. If there is anything you want me to update let me know.”
Complainant owns the mark PRIME and uses it in conjunction with its well-known online retail store. The mark is famous.
Complainant’s rights in its mark date back to at least 2007.
The disputed domain name was registered in 2017.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name originally resolved to a web site that displayed a logo that was confusingly similar to Complaint’s logo; the web site mimicked Complainant’s web site, and offered competing online retail services. The dispute domain name subsequently resolved to a web site that offered competing online retail services.
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 disputed domain name is confusingly similar to Complainant’s PRIME mark as it merely adds the descriptive or generic term “amazing,” a hyphen, and the “.com” gTLD. Additions to a complainant’s mark such as generic or descriptive terms, a hyphen, misspellings, or a gTLD does not negate any confusingly similarity between the disputed domain name and mark under Policy ¶ 4(a)(i). See American Express Co. v. MustNeed.com, FA0404000257901 (Forum June 7, 2004) (“mere addition of a generic or descriptive word to a registered mark does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i)”); see also Sanofi-aventis v. Evangelos Sopikiotis, D2008-1459 (WIPO Nov. 17, 2008) (finding <amazing-ambien.com> confusingly similar to AMBIEN); see also 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); see also Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark). The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Complainant to use its marks. Respondent is not commonly known by the disputed domain name: where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum Jul. 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record for the disputed domain name lists the registrant as “Romauld Bruguier / Adsholics,” and no information on the record indicates that Respondent owns any trademark or service mark rights in the AMAZON, PRIME, or AMAZON PRIME names. The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent’s does not use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, Respondent attempts to pass off as Complainant and promotes its own competing online retail service. Complainant provides screenshots of the disputed domain name which resolves to a website that hosts a retail store that offers various products for sale in connection with confusingly similar derivatives of Complainant’s logos. The offending logos were subsequently removed from the resolving web site, but the web site continued to offer competing online retail services. Using a domain name to pass off as a complainant in order to offer competing goods or services may not be a a bona fide offering of goods or services or for a legitimate noncommercial or fair use 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).”); see also Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). Thus, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
Respondent (who did not formally reply to Complainant’s contentions) has not presented any plausible explanation for his use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent attempts to pass off as Complainant and offer a competing online retail service. Use of a domain name to pass off as a complainant and offer competing goods or services can demonstrate a respondent’s bad faith per Policy ¶¶ 4(b)(iii) and (iv). See CNA Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services). The Panel therefore finds that Respondent has registered and used the domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Further, Respondent registered the disputed domain name in bad faith because it had actual knowledge of Complainant’s rights in the AMAZON, PRIME, and AMAZON PRIME marks prior to registering the domain name: as already noted, Respondent prominently displayed confusingly similar derivatives of Complainant’s logos on the resolving web site, so it had actual knowledge of Complainant’s marks. While constructive notice of a mark is insufficient for a finding of bad faith, actual knowledge of a complainant’s rights in a mark can demonstrate bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the disputed domain name in bad faith per 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 <amazing-prime.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: May 24, 2018
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