Amazon Technologies, Inc. v. ORION TECH CORPORATION
Claim Number: FA2306002048390
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by Thomas E. Zutic of DLA Piper LLP District of Columbia, USA. Respondent is ORION TECH CORPORATION (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <compraloamazon.com> and <amazonbusiness.com.co>, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to Forum electronically on June 9, 2023; Forum received payment on June 9, 2023.
On June 12, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <compraloamazon.com> and <amazonbusiness.com.co> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 June 13, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 2023 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@compraloamazon.com, postmaster@amazonbusiness.com.co.
Also on June 13, 2023, 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, Forum transmitted to the Parties a Notification of Respondent Default.
On July 11, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 disputed domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the AMAZON and AMAZON.COM marks (hereinafter the AMAZON Marks”) established by its ownership of the portfolio of registrations described below and extensive use of the marks in its online retail business since as early as April 15, 1995.
Complainant has provided a screen capture of its own retail sales website at <www.amazon.com> in support of its claim to have established worldwide rights and goodwill in the AMAZON Marks.
It is first alleged that the disputed domain names <compraloamazon.com> and <amazonbusiness.com.co> are essentially identical to the Complainant’s AMAZON Marks.
Complainant argues that the disputed domain names each contain the AMAZON Marks in their entirety, merely adding the generic terms “compralo” (translated to the English language as “buy it” or “purchase it”) and “business” in combination with the country code Top Level Domain (“ccTLD") <.com.co> and the generic Top Level Domain (“gTLD") <.com> extensions, respectively.
Complainant submits that the addition of the terms “compralo” and “business” do not distinguish the disputed domain names from the AMAZON Marks. See Nu Mark LLC v. Gustina Gonzales FA 1637470 (Forum Oct. 22, 2015) (finding that when the disputed domain name <greensmokedeliveries.com> contained the trademark in its entirety and merely added the generic term “deliveries,” these alterations of the mark did not save it from the realm of confusing similarity).
Similarly, Complainant submits that the ccTLD and gTLD suffixes of the disputed domain names in no way distinguish them from Complainant’s AMAZON Marks, arguing that it is well-established that the presence or absence of punctuation or spacing and the addition of a top-level domain suffix are of no consequence when establishing the identity of marks. See Barney’s Inc. v. BNY Bulletin Board WIPO Case No. D2000-0059 (stating that the inclusion of “.com” in the respondent’s domain names does not “serve to distinguish that name from Complainant’s mark in any way”).
In this case, it is contended that not only do the ccTLD and gTLD extensions not distinguish the disputed domain names in any way, but they actually increase the similarity to the AMAZON Marks because Complainant owns trademark registrations for AMAZON.COM and AMAZON.COM Stylized, so any argument that the disputed domain names can be differentiated from the AMAZON Marks is without merit.
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant asserts that it has no business relationship, affiliation, connection, endorsement, or association with Respondent, adding that it has not licensed or otherwise permitted Respondent to use the AMAZON Marks or to register any domain name incorporating the AMAZON Marks. As such, Respondent lacks any rights or legitimate interest in the disputed domain names. See Bethesda Softworks LLC v. OOO McHost.Ru c/o McHost Ltd, FA 1250885 (Forum Apr. 23, 2009) (finding that because respondent is not a licensee of complainant, and that respondent is not authorized to register or use the disputed domain name or the FALLOUT Mark, respondent lacks rights and legitimate interests under Policy ¶ 4(c)(ii)).
Complainant argues that any trademark use of the Amazon Marks by Respondent in connection with online retail services would constitute an infringement of Complainant’s rights in and to the Amazon Marks.
Moreover, because Complainant owns the exclusive rights to the AMAZON Marks and has United States federal registrations for the same, it argues that Respondent cannot establish legitimate rights in the disputed domain names. See The Chase Manhattan Corporation et al v. John Whitely WIPO Case No. D2000-0346 (“an infringing use of Complainant’s trademark cannot give rise to a legitimate right or interest on the part of Respondent”).
Complainant adds that the disputed domain names are not used in connection with a bona fide offering of goods or services, nor in connection with a legitimate noncommercial fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (finding that failure to make an active use of a domain name that is identical to Complainant’s mark is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial fair use of the domain name pursuant to Policy ¶ 4(c)(iii)).
As of June 9, 2023, both of the disputed domain names re-directed to the same website which purports to offer goods, competing with those offered by Complainant. Complainant has provided a link to this website in the Complaint.
Therefore, it is contended that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, or in connection with a legitimate noncommercial fair use. As such, Respondent does not have legitimate rights or interests in the disputed domain names.
Complainant next alleges that Respondent registered and is using the disputed domain names in bad faith, arguing that as an initial matter, Respondent’s bad faith is evidenced by the apparent scam Respondent is perpetuating using the disputed domain names. Specifically, Respondent appears to be engaging in fraudulent behavior actively presenting itself as Amazon with the purpose of obtaining confidential information from customers or otherwise inducing unsuspecting customers into a potentially fraudulent financial transaction with Respondent. By creating confusion through its use of the disputed domain names which wholly incorporate the AMAZON Marks, Respondent “is attempting to disrupt the business of a competitor... [which] is evidence of bad faith use pursuant to Policy ¶ 4(b)(iii).” TM Acquisition Corp. v. Gary Lam, FA 280499 (Forum July 9, 2004).
Furthermore, it is alleged Respondent has registered the disputed domain names with actual or imputed knowledge of Complainant’s AMAZON Marks.
Complainant submits that Respondent’s unauthorized use of Complainant’s logos and designs on the website to which the disputed domain names resolves, cannot conceivably be coincidental but unequivocally demonstrates actual knowledge and willful infringement of the AMAZON Marks.
Moreover, Complainant has trademark registrations in the United States and abroad, which predate the registration of the disputed domain names.
Complainant adds that it has used the AMAZON Marks since as early as 1995 and offers services under the Amazon Marks all over the world and is a world-renowned and famous business offering online retail services, in addition to a wide variety of other products and services with operations in numerous countries, and its AMAZON Marks are extremely well-known.
Complainant adds that Complainant’s AMAZON Marks have been promoted among the purchasing public throughout the United States and abroad on an extensive and frequent basis through online media around the world, and submits that the well-known AMAZON Marks are easily recognizable to the public as originating from Complainant. As such, it is alleged that Respondent had actual knowledge of Complainant’s AMAZON Marks.
Complainant submits that panels established under the Policy have routinely concluded that Respondent registered the disputed domain names in bad faith, according to Policy ¶ 4(a)(iii), when proceeding to register well known or famous marks registered in the United States and abroad. See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) (“That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).”), see also Morgan Stanley v. Peng Bi / Bi Peng, FA 1709188 (Forum Feb. 16, 2017).
Furthermore, Complainant repeats that in addition to use of the AMAZON Marks within the disputed domain names themselves, Respondent is also using a number of the AMAZON Marks, and other indicia or origin, on the websites currently hosted at the disputed domain names, arguing that clearly, this was not done by accident or mere coincidence.
Complainant also alleges that Respondent’s website, to which the disputed domain names resolve, also includes numerous distinct elements taken directly from Complainant’s own website, including images and artwork protected under relevant trademark and copyright laws, in order to further falsely suggest an affiliation with Complainant. All of these elements make Respondent’s bad faith in registering the disputed domain names unmistakable. See Amazon Technologies, Inc. v. Ahmet yaylaciklioglu, FA2303002036562 (Forum Apr. 14, 2023) (holding that Respondent’s <amazonturkiye.net> domain name, resolving “to a website identifying itself as Amazon Türkiye and displaying Complainant’s AMAZON mark and associated logos, with the look and feel of Complainant’s website” evidences that “Respondent was fully aware of Complainant’s famous AMAZON mark when Respondent registered the <amazonturkiye.net> domain name and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s website and of the services promoted on that website.”).
In conclusion, Complainant argues that it is clearly inconceivable that the disputed domain names were selected by Respondent without the Complainant’s AMAZON Marks in mind and that Respondent registered the disputed domain names in bad faith as a part of an apparent scam or identity theft effort and registered the disputed domain names with actual knowledge of Complainant’s AMAZON Marks with the sole purpose of defrauding innocent or unsuspecting parties by impersonating Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides online retail store services using inter alia the AMAZON and AMAZON.COM service marks for which it holds a large international portfolio of registrations that include:
· United States registered service mark AMAZON.COM, registration number 2,078,496, registered on the Principal Register on July 15, 1997 for services in international class 42;
· United States registered service mark AMAZON.COM, registration number 2,167,345 registered on the Principal Register on June 23 1998 for services in international class 35;
· United States registered service mark AMAZON.COM (arrow device), registration number 2,789,101 registered on the Principal Register on December 2, 2003 for services in international classes 35; and
· United States registered service mark AMAZON (stylized), registration number 2,559,936 registered on the Principal Register on April 9, 2002 for services in international classes 35, 36. And 42.
Complainant has an established Internet presence including on its long-established website to which its eponymous domain name <amazon.com> resolves.
The disputed domain names <compraloamazon.com> and <amazonbusiness.com.co> were initially registered just two days apart, on April 21, 2021 and April 23, 2021, with the same domain name registrar. and as of June 9, 2023, both of the disputed domain names re-directed to the same website which is apparently hosted by a third party.
There is no information available about Respondent, who availed of a privacy service to conceal its identity on the published WhoIs, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by Forum for details of the registration of the disputed domain names for the purpose of this proceeding.
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’s Rights
Complainant has provided convincing, uncontested evidence that it has rights in the AMAZON and AMAZON.COM marks, established by the ownership of the portfolio of trademark registrations described above. Furthermore the Complainant’s uncontested evidence is that it is the owner of the retail platform <www.amazon.com> on which it extensively uses the AMAZON marks.
Confusing Similarity
The disputed domain names each contain Complainant’s AMAZON and AMAZON.COM marks in their entirety.
In addition to Complainant’s mark, the disputed domain name <compraloamazon.com> is composed of the generic term “compralo” (translated from Spanish to English as “buy it” or “purchase it”) in combination with ccTLD extension <.com.co>.
In addition to Complainant’s mark, the disputed domain name <amazonbusiness.com.co> is composed of the generic term “business” in combination with the gTLD extension <.com>.
Complainant’s AMAZON mark is the dominant and only distinctive element in each of the disputed domain names. Neither of the generic terms within the disputed domain names add any distinguishing characteristic and do not prevent a finding of confusing similarity with the AMAZON mark in either case.
Similarly, the Top Level Domain extensions <.com> and <.com.co> do not prevent a finding of confusing similarity because in the circumstances of this proceeding, in combination with the AMAZON mark they each contain an element of the Complainant’s AMAZON.COM mark.
In addition to containing the <.com> element in the AMAZON.COM mark it is likely that the Top Level Domain extensions would be considered by Internet users to be a necessary technical requirement for a domain name registration.
This Panel finds therefore that the disputed domain name is confusingly similar to the AMAZON and AMAZON.COM mark, and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name because
· Complainant asserts that it has no business relationship, affiliation, connection, endorsement, or association with Respondent;
· Complainant has not licensed or otherwise permitted Respondent to use the AMAZON Marks or to register any domain name incorporating the AMAZON Marks;
· Complainant owns the exclusive rights in the AMAZON Marks and has United States federal registrations for the same, Respondent cannot establish legitimate rights in the disputed domain names which contain the marks in their entirety;
· As of June 9, 2023, both of the disputed domain names re-directed to the same website which purport to offer goods which are competitive with Complainant’s offerings on its <www.amazon.com> website, therefore the disputed domain names are not used in connection with a bona fide offering of goods or services, nor in connection with a legitimate noncommercial fair use.
· Complainant has provided a link to the website to which the disputed domain name resolves, the Complaint.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has adduced clear and convincing, uncontested evidence that it has rights in the AMAZON and AMAZON.COM marks which predate the registration and first use of the disputed domain names on April 21, 2021 and April 23, 2021,
Complainant has not found it necessary to provide details of its business aside from a screen capture of its website however Complainant’s services provided in its online retail business are famous and it is most improbable that the registrant of the disputed domain name was unaware of the AMAZON and AMAZON.COM marks and Complainant’s website when the disputed domain name was chosen and registered.
The Panel notes that Complainant has not provided a copy of the website to which the disputed domain names allegedly resolve, but instead has provided a link. This is not standard practice and if this were to happen in many cases the links to third party websites would present a risk to the Panelist, because in many cases under the Policy, Respondents’ websites are used for malware and phishing.
Furthermore Complainant has made a number of allegations against Respondent including that Respondent is engaged in phishing and has used copyright images owned by Complainant. Complainant has failed to support these allegations and has failed to identify the specific images which it alleges have been the subject of copyright infringement.
Complainant should be aware that it would be better if the standard practice of providing screen captures were adhered to in any future complaints, and if allegations of fraud and/or copyright infringement are made they should be supported with clear evidence and not mere assertions, which are unhelpful and in fact weaken the case being put.
Nonetheless, because of the strongly distinctive character and fame of the AMAZON and AMAZON.COM marks, this Panel finds that on the balance of probabilities the disputed domain names were chosen and registered in bad faith with Complainant’s marks in mind with the intention of taking predatory advantage of Complainant and the goodwill in the AMAZON and AMAZON.COM marks.
The uncontested evidence is that Respondent is using the disputed domain names, each of which contain the AMAZON Marks in their entirety, within the disputed domain name to resolve to a website that purports to offer retail services that compete with Complainant.
Such use of the AMAZON and AMAZON.COM marks within the disputed domain names to attract, confuse and divert Internet users and their traffic to a website that purports to offer goods competing with Complainant’s offerings constitutes use in bad faith for the purpose of the Policy.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy paragraph 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 <compraloamazon.com> and <amazonbusiness.com.co> domain names be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC, Panelist
Dated: July 12, 2023
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