Amazon Technologies, Inc v. Alberto Arnaboldi
Claim Number: FA1603001665620
Complainant is Amazon Technologies, Inc (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Alberto Arnaboldi (“Respondent”), Argentina.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <primeday2016.org>, registered with LiquidNet Ltd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 14, 2016; the Forum received payment on March 14, 2016.
On March 21, 2016, LiquidNet Ltd. confirmed by e-mail to the Forum that the <primeday2016.org> domain name is registered with LiquidNet Ltd. and that Respondent is the current registrant of the name. LiquidNet Ltd. has verified that Respondent is bound by the LiquidNet Ltd. 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 March 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2016 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@primeday2016.org. Also on March 21, 2016, 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 13, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Policy ¶ 4(a)(i)
Complainant has rights in the PRIME DAY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,915,349, registered on March 8, 2016, filed on July 6, 2015). Respondent’s <primeday2016.org> domain name is confusingly similar to the PRIME DAY mark because it contains the mark along with the number “2016” and the generic top-level domain (“gTLD”) “.org.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <primeday2016.org> domain name because the WHOIS information lists “Alberto Arnaboldi” as Registrant and because Respondent is not associated with Complainant. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used in an attempt to pass off as Complainant and to promote a competitor of Complainant.
Policy ¶ 4(a)(iii)
Respondent uses the <primeday2016.org> domain name in bad faith because the resolving website promotes a competitor of Complainant. Respondent registered the <primeday2016.org> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the PRIME DAY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company that is one of the world’s largest online retailers, offering products and services to more than 100 countries around the globe.
2. Complainant has rights in the PRIME DAY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,915,349, registered on March 8, 2016, filed on July 6, 2015.
3. Respondent registered the disputed <primeday2016.org> domain name on September 8, 2015.
4. The website to which the domain name resolves shows an intention on the part of Respondent to pass itself off as Complainant and promotes a competitor of 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 (Nat. Arb. 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 issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits it has rights in the PRIME DAY mark through its registration with the USPTO (Reg. No. 4,915,349, registered on March 8, 2016, filed on July 6, 2015). Complainant has provided this registration in its Exhibit E. As such, the Panel finds that Complainant has rights in the PRIME DAY mark according to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The second issue that arises is whether the disputed <primeday2016.org> domain name is identical or confusingly similar to Complainant’s PRIME DAY mark. Complainant submits that Respondent’s <primeday2016.org> domain name is confusingly similar to the PRIME DAY mark because it contains the mark along with the numbers “2016” and the gTLD “.org.” The Panel notes that the domain name also lacks the space between the words of the mark. Complainant urges that the number “2016” corresponds to the year 2016, rendering the addition irrelevant. As the Panel agrees, it finds that the <primeday2016.org> domain name is confusingly similar to the PRIME DAY mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s PRIME DAY mark and to use it in its domain name and has merely added the numbers 2016 which does not detract from the confusing similarity that is clearly present ;
(b) Respondent registered the disputed domain name on September 8, 2015;
(c) The domain name resolves to a website that shows the intention of Respondent to pass itself off as Complainant and promotes a competitor of Complainant;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant contends that Respondent is not commonly known by the <primeday2016.org> domain name because the WHOIS information lists “Alberto Arnaboldi” as Registrant and because Respondent is not associated with Complainant. As the Panel finds the record void of evidence suggesting Respondent is commonly known by the <primeday2016.org> domain name, it finds that Respondent is not so known under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name);
(f) Complainant argues that Respondent fails to use the <primeday2016.org> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used in an attempt to pass off as Complainant and to promote a competitor of Complainant. Complainant has provided evidence of its own use of the PRIME DAY mark and related logos in its Exhibit D. Complainant has also provided, in its Exhibit F, evidence of Respondent’s use of the domain name, including a screenshot displaying the PRIME DAY mark as well as links such as “Walmart Sale.” As the Panel finds this evidence sufficient, it finds that Respondent fails to use the <primeday2016.org> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent uses the <primeday2016.org> domain name to disrupt Complainant’s business in bad faith because the resolving website promotes a competitor of Complainant. In its Exhibit F, Complainant has provided evidence of Respondent’s use of the domain name, including a screenshot displaying the links such as “Walmart Sale,” “Walmart Deals 2016,” and “Walmart Deals.” As the Panel finds this evidence sufficient, it finds that Respondent uses the <primeday2016.org> domain name in bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Secondly, Complainant contends that Respondent uses the <primeday2016.org> domain name in bad faith because the resolving website promotes a competitor of Complainant and that Respondent does so, presumably, for referral fees. Complainant has provided evidence, in its Exhibit F, of Respondent’s use of the domain name, including a screenshot displaying the links such as “Walmart Sale,” “Walmart Deals 2016,” and “Walmart Deals.” As the Panel finds this evidence sufficient to suggest Respondent hosts competitive links for referral fees, it finds that Respondent uses the <primeday2016.org> domain name in bad faith according to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Thirdly, Complainant maintains that Respondent registered the <primeday2016.org> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the PRIME DAY mark. Complainant urges that at the time the domain was registered, the mark was already well known and famous. Complainant argues that the combination of this fame and Respondent’s use of the domain name shows that Respondent had actual knowledge of Complainant’s rights at the time of registration. As the Panel finds this argument sufficient to show actual knowledge, it finds that Respondent registered the <primeday2016.org> domain name in bad faith. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); but see Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration).
That conclusion is fortified by the fact that before the domain name was registered, Complainant had announced on July 5, 2015, the eve of Complainant’s 20th birthday, a special promotion of its Prime Day, a global shopping event, with more deals than Black Friday and exclusively for members of its Prime membership program. The evidence is that the first Prime Day was held on July 15, 2015 when Complainant sold more units than on than Black Friday 2014, the biggest Black Friday ever. Thus it is clear that Respondent registered the domain name because of the prominence of the Prime Day of July 15, 2015 and that, in accordance with well established principle, it is nothing to the point that the formal registration of the trademark came after the domain name was registered.
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the <primeday2016.org> disputed domain name using the PRIME DAY mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <primeday2016.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 15, 2016
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