Amazon Technologies, Inc. v. German Ramirez / Amazon Prime, LLC. / elite cleaning concepts
Claim Number: FA1911001872435
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is German Ramirez / Amazon Prime, LLC. / elite cleaning concepts (“Respondent”), Colombia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <amazonpickup.com.co>, <amazonprimecolombia.com.co>, <amazonprimecolombia.com> domain names registered with GoDaddy.com, LLC; PDR Ltd. d/b/a PublicDomainRegistry.com.
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 November 21, 2019; the Forum received payment on November 21, 2019.
On November 23, 2019 PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <amazonpickup.com.co> and <amazonprimecolombia.com.co>, domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. On November 25, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <amazonprimecolombia.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC and PDR Ltd. d/b/a PublicDomainRegistry.com have verified that Respondent is bound by the GoDaddy.com, LLC and PDR Ltd. d/b/a PublicDomainRegistry.com registration agreements 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 December 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@amazonpickup.com.co, postmaster@amazonprimecolombia.com.co, postmaster@amazonprimecolombia.com. Also on December 3, 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 December 30, 2019, 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant is one of the world’s largest online retailers. Complainant has rights in the AMAZON.COM mark (e.g. Reg. No. 2,837,138, registered Apr 27, 2004) and AMAZON PRIME (e.g. Reg. No. 3,419,886, registered Apr. 29, 2008) through its registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <amazonpickup.com.co>, <amazonprimecolombia.com.co>, and <amazonprimecolombia.com> domain names are identical or confusingly similar to Complainant’s mark. The <amazonpickup.com.co> domain name incorporates Complainant’s AMAZON.COM mark and adds the descriptive term “pickup” and the “.co” country-code top-level domain (“ccTLD”). The <amazonprimecolombia.com.co>, and <amazonprimecolombia.com> domain names incorporate the AMAZON PRIME mark and add the term “Columbia,” the “.com” generic top-level domain (“gTLD”) and the “.co” ccTLD.
ii) Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent fails to use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent displays Complainant’s products, Complainant’s mark, and a false copyright notice to create a false affiliation with Complainant. Respondent uses the disputed domain name to promote competing and/or alternative shipping services.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent uses the disputed domain names to offer competing or alternative shipping services. Respondent’s use of Complainant’s color scheme and mimicry of Complainant’s website creates a false impression of origination or endorsement by Complainant. Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the marks.
B. Respondent
Respondent did not submit a response in this proceeding.
1. Respondent registered the <amazonpickup.com.co> domain name on April 13, 2019, the <amazonprimecolombia.com.co> domain name on February 18, 2019, and the <amazonprimecolombia.com> domain name on February 11, 2019.
2. Complainant has established rights in the AMAZON.COM mark (e.g. Reg. No. 2,837,138, registered Apr 27, 2004) and AMAZON PRIME (e.g. Reg. No. 3,419,886, registered Apr. 29, 2008) through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
3. The resolving web pages of the disputed domain names mimic Complainant’s color scheme, landing page, and use Complainant’s logo.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the AMAZON.COM mark and AMAZON PRIME based on registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a 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 copies of the registrations for the AMAZON.COM mark (e.g. Reg. No. 2,837,138, registered Apr 27, 2004) and AMAZON PRIME (e.g. Reg. No. 3,419,886, registered Apr. 29, 2008). Accordingly, the Panel finds that Complainant has established rights in the marks for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <amazonpickup.com.co>, <amazonprimecolombia.com.co>, and <amazonprimecolombia.com> domain names are identical or confusingly similar to Complainant’s mark as they include Complainant’s mark and merely adds terms or TLDs. The addition of a gTLD or a ccTLD fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See 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.”). The addition of a descriptive term or geographic term also does not sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”). Complainant argues the <amazonpickup.com.co> domain name incorporates Complainant’s AMAZON.COM mark and adds the descriptive term “pickup” and the “.co” country-code top-level domain (“ccTLD”). The <amazonprimecolombia.com.co>, and <amazonprimecolombia.com> domain names incorporate the AMAZON PRIME mark and add the term “Columbia,” the “.com” generic top-level domain (“gTLD”) and the “.co” ccTLD. The Panel therefore finds that the disputed domain names are confusingly similar to the marks under 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 contends Respondent has no rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). 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). Where a respondent appears to be commonly known by a disputed domain name, the Panel may still find the respondent lacks rights or legitimate interest in the disputed domain name if the respondent lacks authorization to use the complainant’s mark and the respondent fails to provide affirmative evidence in support of this identity. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the <amazonpickup.com.co> domain name lists the registrant as “German Ramirez/Elite Cleaning Concepts”; the <amazonprimecolombia.com.co> lists the registrant as “German Ramirez”; and the <amazonprimecolombia.com> domain name lists the registrant as “German Ramirez/Amazon Prime, LLC.” Furthermore, there is no other evidence to suggest that Respondent was authorized to use the mark and no affirmative evidence Respondent is commonly known by the disputed domain names. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant argues Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent displays Complainant’s products, Complainant’s mark, and a false copyright notice to create a false affiliation with Complainant. Use of a disputed domain name to pass off as a complainant may not be a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). 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). Complainant provides screenshots of the resolving webpages of the disputed domain names which Complainant argues mimic Complainant’s color scheme, landing page, and use Complainant’s logo. The Panel therefore finds Respondent does not use the disputed domain names 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).
Complainant also argues Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to promote competing and/or alternative shipping services. Use of a disputed domain name to offer competing goods or services may not be 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). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“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 argues that Respondent uses the dispute domain names to offer competing shipping services and provides screenshots of the resolving web pages. The Panel therefore finds Respondent does not use the disputed domain names 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).
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 names.
Complainant argues Respondent registered and uses the disputed domain names in bad faith as Respondent uses the disputed domain names to pass off as Complainant and offer competing or alternative shipping services. Passing off as a complainant to offer goods or services in direct competition with a complainant can evince bad faith registration and use per Policy ¶¶ 4(b)(iii) and (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 argues Respondent’s use of Complainant’s color scheme and mimicry of Complainant’s website creates a false impression of origination or endorsement by Complainant and offers competing shipping services. The Panel recalls Complainant provides screenshots of the resolving web pages. The Panel therefore finds Respondent registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, Complainant contends Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the marks, which indicates bad faith. Passing off as a complainant via a disputed domain name can show actual knowledge of a complainant’s trademark rights prior to registration and evidence bad faith registration per Policy ¶ 4(a)(iii). See 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 finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). The Panel recalls Complainant provides screenshots of the resolving web pages of the disputed domain names which Complainant argues mimic Complainant’s color scheme, landing page, and use Complainant’s logo. The Panel infers, due to the notoriety of Complainant’s marks and the manner of use of the disputed domain names by Respondent that Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration, thus evidencing bad faith registration per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amazonpickup.com.co>, <amazonprimecolombia.com.co>, and <amazonprimecolombia.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: January 7, 2020
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