Amazon Technologies, Inc. v. Jackson Johnson
Claim Number: FA1808001799865
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by David J. Diamond of Richard Law Group, Inc., Texas, USA. Respondent is Jackson Johnson (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <primecustomerservice.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 2, 2018; the Forum received payment on August 2, 2018.
On August 6, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <primecustomerservice.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 August 7, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 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@primecustomerservice.com. Also on August 7, 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 29, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, Amazon Technologies, Inc. is the 4th most-viewed website in the United States and the 10th most-viewed website globally. Amazon has rights in the PRIME mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,234,643, registered Apr. 24, 2007). See Compl. Ex. N. Respondent’s <primecustomerservice.com> domain name is confusingly similar to the PRIME mark, as it is wholly comprised of the mark, generic terms, and a generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the <primecustomerservice.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the PRIME mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the name’s resolving webpage in furtherance of an attempt to pass off as Complainant in order to promote its own competing customer support services.
iii) Respondent registered and is using the <primecustomerservice.com> domain name in bad faith. Respondent’s use of the domain disrupts Complainant’s business. Respondent uses the domain to create the false impression that its services are offered or endorsed by Complainant when they are, in fact, competing services. Finally, Respondent created the disputed domain name with actual knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Respondent registered the disputed domain name on November 2, 2017.
2. Complainant has established its rights in the mark PRIME on the basis of its registration with the USPTO (e.g. Reg. No. 3,234,643, registered Apr. 24, 2007).
3. Respondent’s webpage features a pervasive use of Complainant’s marks and wholesale copying and deceptive alteration of Complainant’s “Conditions of Use”.
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 claims rights in the PRIME mark based upon its registration of the mark with the USPTO. Registration of a mark with the USPTO is typically sufficient to establish rights in that mark for the purposes of 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 provides a copy of its registration of the PRIME mark with the USPTO to support this claim (e.g. Reg. No. 3,234,643, registered Apr. 24, 2007). See Compl. Ex. N. The Panel therefore holds that Complainant’s registration of the PRIME mark is sufficient to establish rights in said mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <primecustomerservice.com> domain name is confusingly similar to Complainant’s PRIME mark, as the domain name is merely a combination of the mark, generic terms, and a gTLD. The addition of generic terms and a gTLD to a mark in the creation of a disputed domain name is typically not sufficient to differentiate the domain from the mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Complainant asserts that Respondent’s <primecustomerservice.com> domain name is entirely comprised of: 1) Complainant’s PRIME mark, 2) the generic terms “customer” and “service”, and 3) the “.com” gTLD. The Panel therefore determines the disputed domain name to be confusingly similar to the PRIME mark for the purposes of Policy ¶ 4(a)(i).
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 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 next argues that Respondent has no rights or legitimate interests in the <primecustomerservice.com> domain name, as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to utilize the PRIME mark in any manner. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). The WHOIS information of record identifies Respondent as “Jackson Johnson”, and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the <primecustomerservice.com> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <primecustomerservice.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Complainant contends that, instead, Respondent uses the name to pass off as Complainant in order to promote its own competing services. A respondent’s use of a disputed domain name in furtherance of an attempt to pass off as a complainant is not indicative of rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii); likewise, the use of a domain to promote services in direct competition with a complainant is also not indicative of rights or legitimate interests. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also 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).”). Complainant asserts that Respondent’s webpage features a pervasive use of Complainant’s marks and wholesale copying and deceptive alteration of Complainant’s “Conditions of Use”. Complainant provides a screenshot of Respondent’s website, Complainant’s cached “Conditions of Use” corresponding to a version copied by Respondent on the disputed domain name’s resolving webpage, as well as a redline copy reflecting Respondent’s alterations to Complainant’s “Conditions of Use” to support these assertions. See Compl. Exs. P–R. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <primecustomerservice.com> domain name per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 also contends that Respondent’s bad faith is indicated by its use of the <primecustomerservice.com> domain name to commercially benefit from trading on the goodwill of Complainant’s mark by creating a false impression that Respondent’s services are offered or endorsed by Complainant. Creation of a disputed domain name with an intent to confuse consumers as to the source, sponsorship, affiliation, or endorsement of the domain in order to promote competing services may evince a finding of bad faith registration and use under Policy ¶ 4(b)(iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Complainant points to Respondent’s use of Complainant’s marks, Complainant’s “a” logo, and Complainant’s conditions of use to support this contention. See Compl. Exs. P–R. The Panel therefore determines Respondent to have registered and used the <primecustomerservice.com> domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant finally contends that, in light of: 1) the fame of Complainant’s PRIME mark, 2) Respondent’s slavish use of Complainant’s “a” logo, 3) explicit references to providing customer support in connection with Complainant’s goods and services on the domain’s resolving webpage, and 4) wholesale copying of Complainant’s “Conditions of Use” on the domain’s resolving webpage, Respondent could not have been unaware of Complainant’s rights in the PRIME mark at the time it registered the <primecustomerservice.com> domain name. Actual knowledge of a complainant’s rights in a mark prior to registering a disputed domain name may be evidence of a respondent’s bad faith registration under Policy ¶ 4(a)(iii). See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel infers Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”); see also Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)). Complainant provides a screenshot of Respondent’s website, Complainant’s cached “Conditions of Use” corresponding to a version copied by Respondent on the disputed domain name’s resolving webpage, as well as a redline copy reflecting Respondent’s alterations to Complainant’s “Conditions of Use” to support these assertions. See Compl. Exs. P–R. The Panel therefore determines that Respondent registered the <primecustomerservice.com> domain name with actual knowledge of Complainant’s rights in the PRIME mark – thus registering the domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <primecustomerservice.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 3, 2018
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