Amazon Technologies, Inc. v. Domain Privacy / Domain Privacy, LLC
Claim Number: FA1801001766543
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by Kevin Costanza of Seed Intellectual Property Law Group PLLC, Washington, USA. Respondent is Domain Privacy / Domain Privacy, LLC (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <amazon-australia.org>, <amazon-argentina.com>, <amazon-colombia.com>, <amazon-new-zealand.com>, <amazon-peru.net>, and <amazon-philippines.com> registered with Key-Systems GmbH.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 11, 2018; the Forum received payment on January 12, 2018.
On January 15, 2018, Key-Systems GmbH confirmed by e-mail to the Forum that the <amazon-australia.org>, <amazon-argentina.com>, <amazon-colombia.com>, <amazon-new-zealand.com>, <amazon-peru.net>, and <amazon-philippines.com> domain names are registered with Key-Systems GmbH and that Respondent is the current registrant of the names. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 January 15, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 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@amazon-australia.org, postmaster@amazon-argentina.com, postmaster@amazon-colombia.com, postmaster@amazon-new-zealand.com, postmaster@amazon-peru.net, postmaster@amazon-philippines.com. Also on January 15, 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 February 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant owns and uses the AMAZON mark in connection with a variety of goods and services, e-commerce, and software. Complainant has rights in the AMAZON mark through its registrations with several trademark offices, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,078,496, registered Jul. 15, 1997). Respondent’s <amazon-australia.org>, <amazon-argentina.com>, <amazon-colombia.com>, <amazon-new-zealand.com>, <amazon-peru.net>, and <amazon-philippines.com> domain names are confusing similar to Complainant’s AMAZON mark because Respondent adds the geographic terms “australia,” “argentina,” “colombia,” “new-zealand,” “peru,” and “philippines,” a hyphen in each of the disputed domain names, and a “.org,” “.net,” or “.com” generic top level domain (“gTLD”) to Complainant’s mark.
Respondent has no rights or legitimate interests in the <amazon-australia.org>, <amazon-argentina.com>, <amazon-colombia.com>, <amazon-new-zealand.com>, <amazon-peru.net>, and <amazon-philippines.com> domain names. Respondent is not licensed to use the AMAZON mark and Respondent is not commonly known by the disputed domain names. Additionally, Respondent uses the disputed domain names to redirect users via pay-per-click hyperlinks to Complainant’s competitors.
Respondent’s attempts to redirect users to Complainant’s competitors via pay-per-click hyperlinks indicates bad faith registration and use. Furthermore, Respondent had constructive knowledge of Complainant’s rights in the AMAZON mark at the time Respondent registered the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Amazon Technologies, Inc. of Seattle, Washington, USA. Complaint is the owner of domestic and international registrations for the mark AMAZON, which it has used continuously since at least as early as 1997, in connection with a wide variety of goods and services, including electronic-commerce regarding the packaging, shipping and delivery of consumer products, as well as computer software design for applications, hosting, and development.
Respondent is Domain Privacy / Domain Privacy, LLC of Lewes, Delaware, USA. Respondent’s registrar’s address is indicated as Ingbert, Germany. The Panel notes that Respondent registered the <amazon-australia.org>, <amazon-argentina.com>, <amazon-colombia.com>, <amazon-new-zealand.com>, <amazon-peru.net>, and <amazon-philippines.com> domain names on or about October 27, 2013, October 24, 2013, October 24, 2013, October 9, 2013, October 24, 2013, and October 9, 2013 respectively.
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 AMAZON mark through its registrations with the USPTO. Registering a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides copies of its USPTO registrations for the AMAZON mark (e.g., Reg. No. 2,078,496, registered Jul. 15, 1997). The Panel here finds that Complainant has sufficiently demonstrated rights in the AMAZON mark per Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <amazon-australia.org>, <amazon-argentina.com>, <amazon-colombia.com>, <amazon-new-zealand.com>, <amazon-peru.net>, and <amazon-philippines.com> domain names are confusingly similar to Complainant’s AMAZON mark because Respondent adds geographic terms, hyphens, and gTLDs to Complainant’s mark. Changes to a mark that include adding geographic terms, hyphens, and gTLDs are insufficient to differentiate the disputed domain name from a complainant’s mark per Policy ¶ 4(a)(i). See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug, 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). As Complainant’ contends, Respondent adds a geographic term, such as “australia,” “argentina,” “colombia,” “new-zealand,” “peru,” or “philippines,” hyphens, and either a “.com,” “.net,” or “.org” gTLD to Complainant’s AMAZON mark to form the disputed domain names. The Panel here finds that Respondent’s <amazon-australia.org>, <amazon-argentina.com>, <amazon-colombia.com>, <amazon-new-zealand.com>, <amazon-peru.net>, and <amazon-philippines.com> domain names are confusingly similar to Complainant’s AMAZON mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes 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), 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 (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). Complainant has met this burden.
Complainant argues Respondent has no rights or legitimate interests in the <amazon-australia.org>, <amazon-argentina.com>, <amazon-colombia.com>, <amazon-new-zealand.com>, <amazon-peru.net>, and <amazon-philippines.com> domain names because Respondent is not licensed to register the AMAZON mark and Respondent is not commonly known by any of the disputed domain names. In the event a respondent fails to submit a response, WHOIS information may be used to determine whether respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum Jul. 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). Complainant provides uncontested evidence that the WHOIS information for the disputed domain names identify Respondent as “Domain Privacy”. The Panel here finds that Respondent is not commonly known by any of the <amazon-australia.org>, <amazon-argentina.com>, <amazon-colombia.com>, <amazon-new-zealand.com>, <amazon-peru.net>, and <amazon-philippines.com> domain names per Policy ¶¶ 4(c)(ii).
Additionally, Complainant asserts Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use at the <amazon-australia.org>, <amazon-argentina.com>, <amazon-colombia.com>, <amazon-new-zealand.com>, <amazon-peru.net>, and <amazon-philippines.com> domain names because Respondent redirects users to Complainant’s competitors at the disputed domain name for financial gain. Redirecting users as part of a “pay-per-click” scheme to a complainant’s competitor does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). Complainant provides support that Respondent’s disputed domain names resolve to links to third-parties that offer goods and services in competition with those provided by Complainant. The Panel here finds that Respondent does not use the <amazon-australia.org>, <amazon-argentina.com>, <amazon-colombia.com>, <amazon-new-zealand.com>, <amazon-peru.net>, and <amazon-philippines.com> domain names as part of a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant asserts Respondent disrupted Complainant’s business at its <amazon-australia.org>, <amazon-argentina.com>, <amazon-colombia.com>, <amazon-new-zealand.com>, <amazon-peru.net>, and <amazon-philippines.com> domain names by redirecting users to Complainant’s competitors and this indicates bad faith registration and use. Using a disputed domain name to host hyperlinks that redirect users to Complainant’s competitors may indicate bad faith registration and use per Policy ¶ 4(b)(iii). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”). Complainant indicates that Respondent’s disputed domain names host hyperlinks and advertisements to third-party competitors such as watches and pet products. The Panel here finds that Respondent’s disruption of Complainant’s business indicates bad faith registration and use per Policy ¶ 4(b)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <amazon-australia.org>, <amazon-argentina.com>, <amazon-colombia.com>, <amazon-new-zealand.com>, <amazon-peru.net>, and <amazon-philippines.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 22, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page