Amazon Technologies, Inc. v. Administrador DNS / HyperBit Inc.
Claim Number: FA1807001798411
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Administrador DNS / HyperBit Inc. (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amäzon.com>, registered with Name.com, Inc..
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 24, 2018; the Forum received payment on July 24, 2018.
On July 25, 2018, Name.com, Inc. confirmed by e-mail to the Forum that the <amäzon.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 July 31, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 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@amäzon.com. Also on July 31, 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 August 23, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
TRADEMARK/SERVICE MARK INFORMATION
As used herein, “Complainant” or “Amazon” means Amazon Technologies, Inc. and its licensees and predecessors in interest, including but not limited to Amazon.com, Inc.
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. In its first four weeks of operation, the company shipped product to customers in all 50 states and in more than 45 other countries. On May 16, 1996, less than a year after its website launched, Amazon was featured on the front page of The Wall Street Journal. In recognition of Amazon’s success, in 1999—only five years after Amazon’s launch—Time Magazine named Mr. Bezos “Person of the Year.” The article described Amazon as the “company everyone wants to be like.”
Since 1995, Amazon has continuously used the AMAZON and AMAZON.COM trademarks (together, the “AMAZON Mark”) in connection with its products and services. Today, Amazon is one of the world’s largest online retailers, offering products and services to more than 100 countries around the globe. Amazon has expanded its retail offerings beyond books to a broad range of other products and services, including: Prime Video; Amazon Music; AppStore for Android; Prime Photos and Prints; Fire Tablets; Fire TV; Echo & Alexa; AmazonFresh; Audible Audio Books; Movies, Music, Games; Electronics, Computers & Office; Home, Garden & Tools; Pet Supplies; Restaurants, Food & Grocery; Beauty & Health; Amazon Exclusives; Toys, Kids & Baby; Clothing, Shoes & Jewelry; Handmade; Sports & Outdoors; Automotive & Industrial; Home Services; and Credit & Payment Products. See Exhibit E. Amazon offers products and services through amazon.com, as well as country specific sites for Australia, Brazil, Canada, China, France, Germany, India, Italy, Japan, Mexico, the Netherlands, Spain, and the United Kingdom.
Amazon.com is the 4th most-viewed website in the United States, the 8th 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.
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. As of 2017, there were more than 100 million paid Amazon Prime members globally. 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.
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.
The AMAZON Mark has appeared in print ads in more than 100 publications, including half- and full-page ads in USA Today, The Wall Street Journal, The New York Times, The Boston Globe, The Chicago Tribune, The Washington Post, The Dallas Morning News, The Los Angeles Times, The San Francisco Chronicle, and more. Moreover, Amazon products have been advertised using the AMAZON Mark in prominent national magazines, such as The Economist, Forbes, Fortune, Bloomberg Business Week, Money, The New Yorker, Newsweek, People, Time, Vanity Fair, Rolling Stone, Entertainment Weekly, Playboy, Esquire, Good Housekeeping, and Sports Illustrated, with combined monthly circulations in the tens of millions. Furthermore, for more than a decade, the AMAZON Mark has been promoted on the radio and on national network, cable, and local television, including during popular primetime network and cable television programs such as The Today Show, Good Morning America, The Office, Law & Order, Mad Men, Glee, Larry King Live, CSI, NCIS, The Simpsons, Family Guy, Saturday Night Live, The Daily Show, and Sports Center, and on major cable stations, such as CNN, Fox News, ESPN, Bravo, Comedy Central, AMC, VH1, and E!. Television and radio ads for the AMAZON Mark air frequently on stations with high audience ratings, and have run in the nation’s top markets, including New York, Los Angeles, Chicago, Boston, and San Francisco. Many of Amazon’s ads air for a period of several weeks or more, exposing millions of consumers to the AMAZON Mark.
Due to extensive advertising, use and commercial success, the AMAZON Mark has become famous and is consistently ranked as one of the most well-known and recognizable brands globally. See Exhibit J and the chart below.
[Table Omitted]
Prior ICANN panelists have found that the AMAZON Mark is well-known and famous. See e.g., Amazon Technologies, Inc. v. Zhang Biao Cao, FA1711001758917 (Nat. Arb. Forum December 20, 2017) (“the AMAZON Mark is one of the most famous marks and business names in the world”); Amazon Technologies, Inc. v. S3 Domains, FA1703001724707 (Nat. Arb. Forum May 14, 2017) (finding that the AMAZON trademark is well-known); Amazon Technologies, Inc. v. SUPPORT SACHIKO, FA1609001692084 (Nat. Arb. Forum Oct. 15, 2016) (“Complainant has rights in its famous AMAZON.COM mark through registration with the USPTO”); Amazon Technologies, Inc. v. Mulama / Jay Media, FA1605001675807 (Nat. Arb. Forum June 16, 2016) (“The [AMAZON] mark is famous”); Amazon Technologies, Inc. v. Abayomi, FA1507001630068 (Aug. 25, 2015) (“…Respondent must have known of the fame of Complainant and its [AMAZON] mark…”); Amazon Technologies, Inc. v. Null, FA 1488185 (Nat. Arb. Forum Apr. 17, 2013) (finding that AMAZON is “one of the most famous marks and business names in the world”); Amazon.com, Inc. v. Digital Systems c/o Daniels, FA 871120 (Nat. Arb. Forum Jan, 29, 2007) (“There is no doubt that AMAZON.COM is a very famous mark”); Amazon.com, Inc. v. .. c/o Banks, FA 785586 (Nat. Arb. Forum Oct. 11, 2006) (“Amazon is thus a very famous brand name”); Amazon.com, Inc. v. Shafir, FA 196119 (Nat Arb. Forum Nov. 10, 2003) (referencing “the fame and goodwill surrounding Complainant’s famous mark”); Amazon.com, Inc. v. Whois Privacy Inc., FA 536281 (Nat. Arb. Forum Sept. 26, 2005) (finding that Amazon “is well-known as an Internet retailer throughout the world”); Amazon.com, Inc. v. J J Domains, FA 514939 (Nat. Arb. Forum Sep. 2, 2005) (“Amazon.com is one of the world's best-known Internet retailers”); and Amazon.com, Inc. v. Dinoia c/o SZK.com, FA 536549 (Nat. Arb. Forum Sept. 26. 2005) (recognizing Complainant’s “long-standing and substantial use of the mark in its worldwide marketing efforts”).
The AMAZON Mark is registered around the world, including in the United States. Amazon's registrations are prima facie evidence of validity and establish Complainant's rights for purposes of the Policy. See, e.g., Janus Int'l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) and Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration … with the USPTO establishes Complainant's rights in the mark.”). “If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights”; “[t]he location of the trademark … and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Ed. See also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (“it is sufficient that the complainant can demonstrate a mark in some jurisdiction”).
Amazon Movie Streaming Services
Amazon has offered movie streaming services under the AMAZON Mark since at least as early as 2008. Amazon customers can rent or purchase hundreds of thousands of titles, including new-release movies and TV shows. Amazon Prime members can access thousands of movies and TV shows as part of their membership, including popular licensed and self-published content plus critically-acclaimed and award-winning Prime Originals like The Grand Tour, The Marvelous Mrs. Maisel and The Tick, and Amazon Original Movies such as Academy Award-winning Manchester by the Sea. Amazon also streams live sports events and provides access to over 140 channel subscriptions including HBO, SHOWTIME, STARZ, Cinemax, PBS KIDS, Acorn TV, and more.
ICANN Rule 3(b)(viii).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
A. CONFUSINGLY SIMILAR DOMAIN NAME (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶4(a)(i)):
The disputed domain name <amäzon.com>, an internationalized domain name (“IDN”) comprising the PUNYCODE translation of [xn--amzon-hra.com], [footnote omitted] is confusingly similar to the registered and well-known AMAZON and AMAZON.COM trademarks.
The domain name <amäzon.com> is identical to the trademarks AMAZON and AMAZON.COM, except that the second letter A has been replaced with the substantially identical non-traditional character Ä, and in the case of AMAZON the gTLD .com has been added.
Replacing AMAZON with the nearly identical AMÄZON does not distinguish the disputed domain name from AMAZON or AMAZON.COM under the policy. See NIKE, Inc. and Nike Innovate, C.V. v. michal restl c/o Dynadot, FA1703001723952 (Nat. Arb. Forum May 11, 2017) (finding <nıke.com> [xn--nke-jua.com] confusingly similar to NIKE and noting, “Panels have determined that exchanging a letter in a mark for a Unicode character fails to distinguish a domain name for the purposes of a Policy ¶4(a)(i) analysis of confusing similarity”); Amazon Technologies, Inc. v. Kumar, FA1712001761254 (Nat. Arb. Forum Jan. 2, 2018) (finding <amazoṇ.com> [xn--amazo-7l1b.com] confusingly similar to AMAZON.COM because “merely substituting the internationalized letter ‘ṇ’ for the letter ‘n’ … is not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶4(a)(i)”); Microsoft Corp. v. Harrington, FA1001001305319 (Nat. Arb. Forum March 16, 2010) (finding <bıng.com> [xn--bng-jua.com] confusingly similar to BING and noting, “The Panel finds that exchanging one letter for another in the disputed domain name fails to prevent confusing similarity according to Policy ¶4(a)(i), especially when the disputed domain name remains visually similar to Complainant’s mark”); and Abbott Labs v. Whois Svc. c/o Belize Domain WHOIS Svc., FA0903001254682 (Nat. Arb. Forum May 14, 2009) (“the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”).
In fact, Respondent chose the domain name <amäzon.com> precisely because it is confusingly similar to and easily mistaken for Complainant’s <amazon.com> URL.
Accordingly, Paragraph 4(a)(i) of the UDRP, requiring that the domain name at issue be "identical or confusingly similar to a trademark or service mark in which the Complainant has rights" is satisfied.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; Respondent is not making a noncommercial fair use of the disputed domain name; and Respondent has never been legitimately known as or referred to as AMAZON, AMAZON.COM, or any variation thereof. As a result, Respondent does not have a legitimate interest in the disputed domain name, as legitimate interests are defined in Paragraphs 4(c)(i)-(iii) of the UDRP.
WHOIS identifies Respondent as Administrador DNS / HyperBit Inc. Respondent is not commonly known by AMAZON, AMAZON.COM, or any variations thereof. Respondent is not licensed by Complainant to use Complainant’s AMAZON or AMAZON.COM marks. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. See Broadcom Corp. v. Ibecom PLC, FA FA0411000361190 (Nat. Arb. Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name); and Tercent Inc. v. Yi, FA0301000139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply).
The disputed domain name resolves to a purported movie streaming site entitled “IWANNAWATCH.” Users attempting to watch a movie are redirected to a third party website which displays a teaser clip and then a warning message reporting that a codec is missing and that an executable file download is required to continue.
Respondent’s use of a domain name confusingly similar to the AMAZON Mark to promote a competing online movie streaming service is not a bona fide or otherwise legitimate use. See Marvin Lumber and Cedar Company v. Chan, FA1205001442493 (Nat. Arb. Forum June 7, 2012) (finding that “sell[ing] products and services in direct competition with those that Complainant offers” is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); Acument Intellectual Props., LLC v. Aaron's General Store.com, FA1009001348931 (Nat. Arb. Forum Nov. 8 2010) (“Such usage improperly leverages the goodwill of the brand name toward the end of selling product in competition with it”); Amazon Technologies, Inc. v. Lin, FA1301001480702 (Nat. Arb. Forum Feb 26, 2013) (“Respondent’s use of the disputed domain name to offer competing goods or services is not 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)”); Amazon Technologies, Inc. v. Gawad. FA1611001701073 (Nat. Arb. Forum Dec. 2, 2016) (finding that Respondent’s use of <amazonmasr.com> to offer offering competing retail services made out a prima facie case that Respondent had no rights or legitimate interests); and Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum, January 7, 2002) (finding no bona fide offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website).
Furthermore, using a domain name that is confusingly similar to Complainant’s famous AMAZON and AMAZON.COM trademarks to promote potentially malicious executable software downloads is not a legitimate use. See Google Inc. v. Petrovich, FA1008001339345 (Nat. Arb. Forum Sept. 23, 2010) (“Respondent’s failure to make an active use of the disputed domain names except for the purpose of downloading malicious computer software is not a use in connection with a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)”); Dell v. tawnya grilth c/o dellpc.us, FA 1400620 (Nat. Arb. Forum Sept. 1, 2011) (finding that use of the disputed domain name to offer downloads of software that contain malware is not a bona fide offering of goods or services under Policy ¶4(c)(ii) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(iv)); and Grappone TS, Inc. v. Zhu, FA 1424557 (Nat. Arb. Forum, Feb. 29, 2012) (finding that use of a disputed domain name to host a website that contains viruses is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(iii)).
For the above reasons, the Respondent has no rights or legitimate interests in the disputed domain name.
C. REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
Respondent registered the disputed domain name in bad faith.
At the time Respondent registered the disputed domain name, Complainant’s AMAZON Mark was famous and well-known to countless consumers. Since Respondent is using a domain name almost identical to Complainant’s famous mark to promote directly competing movie streaming services, it is clear that Respondent registered the domain name with knowledge of Complainant’s rights and intended to create an association with Complainant and its products and services.
Respondent’s registration of the disputed domain name with actual knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that “[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse”); Amazon Technologies, Inc. v. Souders, FA1503001610740 (Nat. Arb. Forum April 21, 2015) (finding it inconceivable that Respondent was not familiar with Complainant’s AMAZON mark and that “actual knowledge is adequate evidence of bad faith under Policy ¶4(a)(iii)); Amazon.com, Inc. v. Korotkov, D2002-0516 (WIPO Aug. 13, 2002) (determining that the complainant’s AMAZON mark was so well-known that it was “inconceivable respondent was unaware of the trademark, its connotations and its commercial attractiveness”); Perot Sys. Corp. v. Perot.net, FA0007000095312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question was “obviously connected” with the complainant’s well-known marks); Skype v. Caruso, FA 1431445 (Nat. Arb. Forum May 4, 2012) (“Respondent’s actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name further evidences Respondent’s bad faith under Policy ¶4(a)(iii)”); Twitter, Inc. v. accueil des solutions inc, D2013-0062 (WIPO April 1, 2013) (“where a domain name is so obviously connected with a well-known product or service, its very use by someone with no connection with the product may suggest opportunistic bad faith”); and Twitter, Inc. v. Accueil des Solutions, Inc, Case No. D2014-0645 (WIPO June 15, 2014) (“The Panel finds that, taking into account the significant reputation associated with the Trade Mark, there is no conceivable legitimate use of the Disputed Domain Name by the Respondent”).
Furthermore, by promoting competing online movie streaming services or malware downloads using Complainant’s AMAZON Mark, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s trademarks, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶4(b)(iv). See V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (Nat. Arb. 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 Microsoft Corp. v. Lafont, FA1009001349611 (Nov. 9, 2009) (“intentional appropriation of Complainant’s mark to mislead Internet users and subsequently profit from them reveals bad faith registration and use under Policy ¶4(b)(iv)”); and Crocs, Inc. v. Chustz, FA0706001002536 (Nat. Arb. Forum July 24, 2007) (finding bad faith where Respondent’s use of Complainant’s mark in its domain was “capitalizing on the illusion of direct affiliation with Complainant’s business and goodwill”).
Moreover, promoting competing movie streaming services using the AMAZON Mark diverts and disrupts Complainant’s corresponding businesses and falls under Policy ¶4(b)(iii). See Instron Corp. v. Kaner, FA0608000768859 (Nat. Arb. Forum Sep. 21, 2006) (use of disputed domain name to operate a competing website constitutes bad faith according to Policy ¶4(b)(iii)); Microsoft Corp. v. Lorge, FA1103001380106 (Nat. Arb. Forum April 25, 2011) (featuring of Complainant’s competitors may cause some Internet users to purchase products from a competitor instead of from the Complainant which disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii)); Microsoft Corp. and Skype v. ATF The Veil Super Fund, FA1211001470016 (Nat. Arb. Forum December 20, 2012) (“Respondent attempts to facilitate competition with Complainant and disrupt Complainant’s business, which indicates bad faith use and registration under Policy ¶4(b)(iii)”) and Amazon Technologies, Inc. v. Arbiyani, FA1603001665621 (Nat. Arb. Forum Apr. 13, 2016) (finding bad faith where Respondent was “using a domain name that incorporates Complainant's well-known trademark to promote a competing business, under circumstances strongly supporting an inference that Respondent's conduct is targeted directly at Complainant or its mark”).
Furthermore, using a domain name confusingly similar to the AMAZON Mark to distribute potentially malicious executable software of unknown origin and purpose evidences bad faith. See Microsoft Corp. v. ABK et al., FA1211001473573 (Nat. Arb. Forum Jan 21, 2013) (“Respondent is also disrupting Complainant’s business by causing the public to associate Complainant’s [sic] with Respondent’s malware warnings, potentially malicious download links, and survey/offer schemes that contain no privacy policies and lack reliable contact information”); Google Inc. v. Petrovich, FA1008001339345 (Nat. Arb. Forum Sept. 23, 2010) (finding bad faith registration and use of a contested domain name under Policy ¶4(b)(iv) where the domain name resolved to a website that distributed malware); and Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (use of the disputed domain name for fraudulent purposes constituted bad faith).
Based on the foregoing, Respondent has registered the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Internationalized Domain Name
The domain name in dispute, <amäzon.com>, is an internationalized domain name (“IDN”) with the PUNYCODE translation of [xn--amzon-hra.com]. An IDN is a domain name that contains non-traditional characters, such as letters with diacritics or other non-ASCII characters (ASCII does not incorporate the full Latin-1 character set). In order to display characters or symbols in a domain name, the terms of the domain name are encoded into a scheme such as PUNYCODE to display the full range of Latin-1 characters. To display the [xn--amzon-hra.com] properly in the <amäzon.com> domain name, it had to be encoded into the [xn--amzon-hra.com] domain name.
In the past, panels have found IDNs and their PUNYCODE translations to be equivalent. See Damien Persohn v. Lim, FA 874447 (Forum Feb. 19, 2007) (finding an internationalized domain name, <têtu.com>, and its PUNYCODE translation, <xn--ttu-fma.com>, to be one and the same under the Policy); see also Württembergische Versicherung AG v. Emir Ulu, D2006-0278 (WIPO May 4, 2006) (finding that the <xn--wrttembergische-versicherung-16c.com> should be considered as equivalent to the <württembergische-versicherung.com> domain name, based on previous panel decisions recognizing the relevance of I-nav software for translating German letters such as “ä” or “ü” into codes such as <xn--[name]-16c> and similar); see also Fujitsu Ltd. v. tete and Lianqiu Li, D2006-0885 (WIPO Oct. 12, 2006) (finding the <xn--zqsv0e014e.com> domain name to be an exact reproduction of the complainant’s Chinese trademark in a domain name). This Panel finds the <amäzon.com> domain name is the same as its PUNYCODE translation, [xn--amzon-hra.com], for purposes of this Proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 claims rights in the AMAZON mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,832,943, registered Apr. 13, 2004). Registration of a mark with a governmental authority, such as the USPTO, is sufficient to demonstrate rights in a mark under Policy ¶4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant has sufficiently demonstrated its rights in the AMAZON mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <amäzon.com> domain name is identical or confusingly similar to Complainant’s mark because it wholly incorporates the AMAZON mark, and is only differentiated by the use of a Unicode character and the “.com” gTLD. Exchanging a letter in a mark for a similar Unicode character fails to distinguish a domain name for the purposes of a Policy ¶4(a)(i) analysis. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Microsoft Corp. v. Harrington, FA1305319 (Forum Mar. 16, 2010) (finding the <bıng.com> [xn--bng-jua.com] domain name confusingly similar to the BING mark and noting, “The Panel finds that exchanging one letter for another in the disputed domain name fails to prevent confusing similarity according to Policy ¶4(a)(i), especially when the disputed domain name remains visually similar to Complainant’s mark”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶4(a)(i) analysis because domain name syntax prohibits them.”). Respondent’s <amäzon.com> domain name is confusingly similar to Complainant’s AMAZON mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant claims Respondent lacks rights and legitimate interests in the <amäzon.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the AMAZON mark. Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 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). The domain name was originally registered using a WHOIS privacy service. The current WHOIS information of record identifies Respondent as “Administrador DNS / HyperBit Inc.” There is no obvious relationship between Respondent’s subsequently disclosed name and the domain name. The Panel must conclude Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent fails to use <amäzon.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Respondent uses the disputed domain name to commercially benefit from redirecting internet users to a competing online movie streaming website containing malware downloads. Using a confusingly similar domain name to offer competing services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under 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 Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶4(c)(i) & (iii).”). The domain name forwards to a movie streaming website titled “IWANNAWATCH,” which displays a teaser clip followed by a warning message when users attempt to watch a video. The resolving website attempts to download potentially malicious software on the computers of Internet users. Under these facts, the Panel must conclude Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii).
Respondent registered the domain name using a WHOIS privacy service. This means Respondent has done nothing to publicly associate itself with the domain name. Respondent could not acquire any rights to the domain name under such circumstances.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the <amäzon.com> domain in bad faith because Respondent commercially benefits from redirecting internet users to a competing online movie streaming website containing malware downloads. Using a disputed domain name to offer competing services incorporating malware downloads constitutes constitute bad faith under Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶4(b)(iii)); see also Walgreen Co. v. MUHAMMAD SALEEM / WALGREENSGENERAL TRADING LLC, FA 1790453 (Forum Jul. 1, 2018) (“Respondent’s registration and use of the confusingly similar <walgreensshop.com> domain name in furtherance of trading competitively on Complainant’s WALGREENS trademark demonstrates Respondent’s bad faith pursuant to Policy ¶¶4(b)(iii) and (iv).”); see also Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”). The forwarding website purports to be a movie streaming website titled “IWANNAWATCH,” which displays a teaser clip followed by a warning message, and attempts to download malware. Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant claims Respondent had actual knowledge of Complainant’s rights in the AMAZON mark prior to registering the <amäzon.com> domain name. Respondent uses the disputed domain name’s resolving page to offer a competing movie streaming website. It seems obvious Respondent had actual knowledge of the AMAZON mark and Complainant’s streaming movie business. Respondent had actual knowledge of Complainant’s rights in the mark prior to registration, which constitutes bad faith under Policy ¶4(a)(iii).
Respondent registered the disputed domain name using a WHOIS privacy service. In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <amäzon.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, August 23, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page