Amazon Technologies, Inc. v. Haider Usman
Claim Number: FA2307002053308
Complainant is Amazon Technologies, Inc. (“Complainant”), Washington, USA, represented by David J. Diamond of Richard Law Group, Inc., Texas, USA. Respondent is Haider Usman (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trademarkamazon.com>, registered with Spaceship, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge have no known conflict in serving as Panelist in this proceeding.
Ho-Hyun Nahm, Esq, as Panelist.
Complainant submitted a Complaint to Forum electronically on July 14, 2023; Forum received payment on July 14, 2023.
On July 17, 2023, Spaceship, Inc. confirmed by e-mail to Forum that the <trademarkamazon.com> domain name is registered with Spaceship, Inc. and that Respondent is the current registrant of the name. Spaceship, Inc. has verified that Respondent is bound by the Spaceship, 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 20, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 9, 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@trademarkamazon.com. Also on July 20, 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 August 10, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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 domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Amazon Technologies, Inc., is a leading retailer and offers a wide variety of products and services, including brand protection and intellectual property registration services. Complainant has rights in the AMAZON mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,657,226, registered on December 3, 2002). The disputed domain name is confusingly similar to Complainant’s AMAZON mark as it incorporates the mark in its entirety while adding a descriptive term 'trademark' and the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its AMAZON mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead passes off as Complainant. The disputed domain name resolves to one of two websites: either it redirects to a website located at a domain name that offers a purported survey under a header featuring the Amazon logo (the “Survey Site”), or it resolves to a website offering intellectual property registration services under a header featuring the name “Trademark Amazon” (the “Trademark Site”).
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent’s incorporation of Complainant’s famous AMAZON trademark in the disputed domain name, the use of Complainant’s AMAZON trademark as Respondent’s identity, brand, and logo at the Trademark Site, and the use of Complainant’s Amazon logo at the Survey Site create the false impression that the websites originate with or are associated with Complainant. Respondent’s registration of the disputed domain name with actual knowledge of Complainant’s rights is evidence of bad faith registration and use. Respondent’s use of a WHOIS privacy shield for a commercial website also evidences bad faith.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on May 16, 2023.
2. Complainant has established rights in the AMAZON mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,657,226, registered on December 3, 2002).
3. The disputed domain name resolves to one of two websites: a website located at a domain name that offers a purported survey under a header featuring the Amazon logo; and a website offering intellectual property registration services under a header featuring the name.
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 mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,657,226, registered on December 3, 2002). Registration of a mark with the USPTO is generally sufficient in establishing rights in the mark. Since Complainant has provided evidence of trademark registration with the USPTO, the Panel finds Complainant has established rights in the mark under Policy ¶ 4(a)(i).
Complainant argues the disputed domain name is confusingly similar to Complainant’s AMAZON mark. Under Policy ¶ 4(a)(i), adding a descriptive term along with the “.com” gTLD is insufficient in differentiating from the mark. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The disputed domain name incorporates Complainant's mark in its entirety and adds the descriptive term “trademark” and the “.com” gTLD. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s AMAZON mark 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 lacks rights or legitimate interests in the disputed domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the AMAZON mark. WHOIS information may be used to determine whether a respondent is commonly known by the 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). 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 unmasked WHOIS information for the disputed domain name lists the registrant as “Haider Usman.” The Panel thus finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. The disputed domain name resolves to one of two websites: either it redirects to a website located at a domain name that offers a purported survey under a header featuring the Amazon logo (the “Survey Site”), or it resolves to a website offering intellectual property registration services under a header featuring the name “Trademark Amazon” (the “Trademark Site”). The Panel finds that this constitutes passing off and is not a fair, nominative, or otherwise legitimate use. See Microsoft Corp. v. lijiuliang, FA0912001300266 (Forum Feb. 11, 2010) (“Respondent’s attempt to pass itself off as Complainant by imitating Complainant’s official website…is not 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)”); and Amazon Technologies, Inc. v. Morocco, FA2305002044858 (Forum June 20, 2023) (“Respondent uses the disputed domain name [<amazonbrandregistration.com>] to pass off as Complainant: Respondent’s purported services encompass registration with Amazon Brand Registry, Respondent identifies itself prominently in the header of the landing page as ‘Amazon Brand Registration,’ and there are no disclaimers or other efforts to distinguish Respondent from Complainant.”)
The Panel further finds that regarding the Survey Site, redirecting to survey reward schemes employing famous brands without authorization also does not reflect legitimate or bona fide use of a domain. See e.g., Retailmenot, Inc. v. Above.com Domain Privacy, FA1701001714474 (Forum Mar. 21, 2017) (“Use of a disputed domain to redirect to either a commercial search engine or a survey site is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). The Panel therefore finds Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (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 asserts that Respondent registered and uses the disputed domain name in bad faith. Respondent’s incorporation of Complainant’s famous AMAZON trademark in the disputed domain name, the use of Complainant’s AMAZON trademark as Respondent’s identity, brand, and logo at the Trademark Site, and the use of Complainant’s Amazon logo at the Survey Site create the false impression that the websites originate with or are associated with Complainant. The Panel finds that this is the sort of conduct that falls under Policy ¶ 4(b)(iv) and thus evidences Respondent’s bad faith registration and use of the disputed domain name. See MetroPCS, Inc. v. Robertson, FA0609000809749 (Forum Nov. 13, 2006) (finding bad faith where the respondent’s website gave the false impression of being affiliated with the complainant). See also Amazon Technologies, Inc. v. Morocco, FA2305002044858 (Forum June 20, 2023) (“Respondent uses the disputed domain name [<amazonbrandregistration.com>] to attempt to pass off as Complainant.…Therefore the Panel finds bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant provides screenshots of the disputed domain name’s resolving websites. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii) and ¶ 4(b)(iv).
Complainant further claims that Respondent had knowledge of Complainant’s rights in the AMZON mark at the time of registering the disputed domain name. To support this assertion, Complainant points to that Complainant’s AMAZON mark was well-known and famous. Furthermore, since the both the disputed domain name's resolving Survey Site and Trademark Site use Complainant’s AMAZON mark, and the Survey Site uses Complainant’s Amazon logo. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the AMAZON mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under 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 <trademarkamazon.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: August 14, 2023
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