Amazon Technologies, Inc. v. Global Service Box Prime S.L.
Claim Number: FA1806001791557
Complainant is Amazon Technologies, Inc. (“Complainant” or “Claimant”), represented by James F. Struthers of Richard Law Group, Inc. Texas, USA. Respondent is Global Service Box Prime S.L. (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <boxamazonprime.com>, registered with DNC Holdings, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Luz Helena Villamil J. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 13, 2018; the Forum received payment on June 13, 2018.
On Jun 14, 2018, DNC Holdings, Inc. confirmed by e-mail to the Forum that the <boxamazonprime.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, 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 June 18, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 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@boxamazonprime.com. Also on June 18, 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.
On June 20, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luz Helena Villamil J. 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
This Complaint is based upon the ownership and extensive use of the trademarks AMAZON, PRIME and AMAZON PRIME registered by the Complainant in the United States of America. Complainant also relies on the fact that the trademark AMAZON is famous, well known and widely promoted.
Based on the foregoing, Complainant’s main contentions are summarized as follows:
1. In 1994, Amazon’s Founder Jeff Bezos developed an innovative plan to sell a wide selection of books over the Internet. Amazon opened its virtual doors in July 1995, offering online retail store services featuring books via the web site <www.amazon.com>.
Amazon.com is the 5th most-viewed website in the United States, the 10th most-viewed website globally, and the No. 1 most-viewed shopping website, according to public statistics offered by Internet site ranking company Alexa Internet, Inc., an Amazon company.
More than 28 million users have “liked” and more than 27 million users follow Amazon’s Facebook page. Amazon has more than 2.8 million followers on Twitter. As of 2014, Amazon 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 Amazon’s fiscal 2017 were more than $170 billion. Amazon’s worldwide expenditures on advertising and other promotional costs for 2017 were $6.3 billion. For the years 2016, 2015, 2014 and 2013 advertising costs were $5.0 billion, $3.8 billion, $3.3 billion, and $2.4 billion respectively.
2. Amazon Prime is a service launched by Amazon in 2005 which allows customers pay an annual fee to receive free two-day shipping on over 100 million products sold by Amazon or by third-party sellers through Amazon.com, along with other benefits. In 2017 alone, Amazon shipped more than five billion items with Prime worldwide. Prime Now provides one-hour or scheduled delivery of tens of thousands of products in over 30 cities around the world, seven days a week, as well as one-hour delivery from local restaurants in over 25 cities through Amazon Restaurants and free delivery from local stores in a growing number of cities.
3. AMAZON, PRIME and AMAZON PRIME are registered around the world, including in the United States.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant submitted evidence to demonstrate full ownership of the trademarks AMAZON, AMAZON PRIME and PRIME, as well as of the extensive usage thereof. The Panel therefore finds that with such registrations Complainant has established rights in the marks under Policy ¶ 4(a)(i) regardless of the location of Respondent. See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”)
Complainant also demonstrated the degree of knowledge of the name AMAZON by consumers, it having become one of the most recognized marks around the world. Knowledge of the names AMAZON and AMAZON PRIME appears to be undeniable considering the sales figures submitted, as well as the advertising expenditures made by Complainant.
The Panel finds that the word BOX was included in the domain name <boxamazonprime.com> with the mere intention of introducing a slight difference vis-à-vis the famous names AMAZON and AMAZON PRIME identically reproduced in the domain registered by the Respondent, yet taking advantage of a word that has a significance with respect to the delivery of goods associated with the services rendered both by AMAZON.COM and by the respondent.
Moreover, the Panel finds that the domain <boxamazonprime.com> resolves to a website wherein services that clearly compete with those of Complainant are offered. Evidence of this fact was submitted with the Complaint, and leads to conclude that the Respondent had knowledge of Complainant’s business and trademarks by the date registration of the domain <boxamazonprime.com> was obtained.
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 requirement of the Policy in Paragraph 4(a)(i) for Complainant to meet is to demonstrate its rights over a trademark identical or confusingly similar to a domain name registered by Respondent.
In the present case, Complainant demonstrated with the trademark registration copies submitted with the Complaint that it is the exclusive owner of the trademarks AMAZON, AMAZON PRIME and PRIME. Moreover, it was demonstrated that the aforementioned trademarks are widely used and promoted to an extent that it is not possible for anyone to argue that it did not know the existence of said marks.
The similarities between the trademark AMAZON, AMAZON PRIME and PRIME and the domain <boxamazonprime.com> are undeniable. The word BOX included in the domain does not contribute to establish a difference between the terms, since in fact the word “BOX” gives the appearance of having been be placed in the domain just in an attempt to pre-manufacture an argument as to the difference of the terms. However, in practice it is evident for the Panel that indeed the domain is likely to be viewed as incorporating the AMAZON and AMAZON PRIME trademarks by visitors to Respondent’s website, a circumstance that no doubt may lead consumers to erroneously believe either that the website <boxamazonprime.com> belongs to Claimant, or that there is a business association between Claimant and the Respondent.
In light of the foregoing, there is no doubt for the Panel that the Policy requirement in Paragraph 4(a)(i) is met as to the fact that the disputed domain name <boxamazonprime.com> is confusingly similar to the trademarks AMAZON, PRIME and AMAZON PRIME owned by Complainant.
As mentioned before, the fact that Respondent is using the disputed domain name to resolve to an online retail store for electronics that competes with Complainant’s services clearly indicates that Respondent’s use of the disputed domain name does not constitute 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).
It is clear for the Panel, after a thorough review of the documentation and evidence submitted to the case, that Complainant is one of those entities who due to the well-known condition of its trademarks, the efforts it makes to position and promote them and the recognition it gains in the market, frequently suffers the type of unfair competition that is made by third parties through the registration of domain names that are “designed” by third parties just to try to share the sales revenues obtained by the legitimate owners of the trademarks.
In light of the foregoing, the Panel establishes that the Policy requirement in Paragraph 4(a)(ii) is met inasmuch as Respondent has no rights or legitimate interests in respect of the domain name <boxamazonprime.com>.
According to Paragraph 4 (b) of the Policy, when certain circumstances are present in a given case they shall be evidence of the registration and use of a domain name in bad faith. Among such circumstances the Policy mentions in Paragraph 4(b)(iv): using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant 's mark as to the source, sponsorship, affiliation, or endorsement of you’re the Respondent’s site or location or of a product or service on the Respondent’s web site or location.
In the present case, the fact that the disputed domain <boxamazonprime.com>
incorporates the famous trademarks AMAZON and AMAZON PRIME clearly indicates that there is a prima facie intention of Respondent to attract Internet users for commercial gain. The Panel concurs with Complainant’s assertion that by offering and promoting competing online retail services using Complainant’s marks, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s marks, and this conduct of diversion shows bad faith registration and use pursuant to Policy. A Complaint based on an identical or a confusingly similar trademark or trademarks is not brought to obtain a new domain name to add it to the collection, but to obtain the protection of such trademark or trademarks and to strongly take measures against their dilution, which would be the fatal consequence should trademark owners allow third parties incorporate their trademarks or similar ones to their domain names. It is then imperative to conclude that the disputed domain name <boxamazonprime.com> has been registered and is being used in bad faith under 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 <boxamazonprime.com> domain name be TRANSFERRED from Respondent to Complainant.
Luz Helena Villamil J., Panelist
Dated: July 4, 2018
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