Amazon Technologies, Inc. v. Wasim Akram
Claim Number: FA1902001831375
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Wasim Akram (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <downloadappalexa.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 25, 2019; the Forum received payment on February 25, 2019.
On February 26, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <downloadappalexa.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 February 28, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 2019 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@downloadappalexa.com. Also on February 28, 2019, 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 March 21, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant offers products and services to more than 100 countries around the globe.
Complainant uses the ALEXA mark in connection with a cloud-based virtual assistant. Complainant has rights in the ALEXA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <downloadappalexa.com> domain name is confusingly similar to Complainant’s mark as it incorporates Complainant’s ALEXA mark in its entirety, adding only the generic terms “download” and “app” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <downloadappalexa.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to pass off as Complainant and offer competing technical support services.
Respondent registered and uses the <downloadappalexa.com> domain name in bad faith. Respondent’s use of the domain name to pass off as Complainant disrupts Complainant’s business and creates the false impression that its website originates with or is endorsed by Complainant, presumably in an attempt to commercially benefit by offering competing technical support services. Further, Respondent clearly had actual knowledge of Complainant’s ALEXA mark given Respondent’s use of Complainant’s logos and images on the resolving webpage.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ALEXA mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the ALEXA trademark.
Respondent uses the <downloadappalexa.com> domain name to pass itself off as Complainant.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its ALEXA trademark with the USPTO demonstrates its rights in a mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <downloadappalexa.com> domain name contains Complainant’s entire ALEXA trademark, preceded by the suggestive term “download app,” all followed by the top level domain name “.com.” The differences between Complainant’s trademark and the <downloadappalexa.com> domain name fail to distinguish the domain name from Complainant’s mark for the purpose of Policy ¶ 4(a)(i). In fact the inclusion of the term “download app,” which is suggestive of Complainant’s ALEXA’s supporting software application, only adds to any confusion between the Complainant’s mark and Respondent’s at-issue domain name. Therefore, the Panel concludes that Respondent’s <downloadappalexa.com> domain name is confusingly similar to Complainant’s ALEXA trademark. See MTD Products Inc. v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Wasim Akram” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <downloadappalexa.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <downloadappalexa.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the <downloadappalexa.com> domain name to pass itself off as Complainant so that it may position itself for commercially benefit. The domain name addresses a website displaying Complainant’s mark and logo, as well as other devices making the website appear as if it is authorized by Complainant when it is not. The website purports to allow users to download the “Alexa App” on a variety of platforms. However, download links merely link to Complainant’s official website. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See BALENCIAGA SA v. ling lin, FA 1768542 (Forum Feb. 16, 2018) (“The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests.”); see also Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent’s <downloadappalexa.com>domain name creates confusion among internet users not only because the domain name includes Complainant’s trademark but also because it addresses a website displaying Complainant’s ALEXA trademark and logo. Further and as mentioned above regarding rights and legitimate interests, Respondent’s <downloadappalexa.com> website offers software owned and controlled by Complainant via links to Complainant’s official website. Presumably, Respondent enjoys some commercial benefit from its antics. These circumstances show that Respondent is passing itself off as Complainant for commercial gain and demonstrate Respondent’s bad faith registration and use of the <downloadappalexa.com> domain name under both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Instron Corp. v. Kaner, FA0608000768859 (Forum Sept. 21, 2006) (finding that the use of a disputed domain name to operate a competing website constitutes bad faith according to Policy ¶ 4(b)(iii)); see also, V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (Forum Sept. 2, 2004) (“Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv)”); see also, Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Finally, Respondent had actual knowledge of Complainant’s rights in the ALEXA mark when it registered the <downloadappalexa.com> domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark in the relevant area of commerce, from Respondent’s use of Complainant’s trademark on the <downloadappalexa.com> website, and from Respondent’s unauthorized offering of Complainant’s software. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <downloadappalexa.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 24, 2019
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