DECISION

 

Amazon Technologies, Inc. v. Jack / plumbing

Claim Number: FA2501002135841

 

PARTIES

Complainant is Amazon Technologies, Inc. ("Complainant"), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Jack / plumbing ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <amazonprofs.com> ("Domain Name"), registered with Dominet (HK) Limited.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 17, 2025; Forum received payment on January 17, 2025.

 

On January 20, 2025, Dominet (HK) Limited confirmed by e-mail to Forum that the <amazonprofs.com> domain name is registered with Dominet (HK) Limited and that Respondent is the current registrant of the name. Dominet (HK) Limited has verified that Respondent is bound by the Dominet (HK) Limited 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 January 21, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 2025 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@amazonprofs.com. Also on January 21, 2025, 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 February 11, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a leading retailer offering a wide variety of products and services around the globe under its AMAZON mark and a variety of related marks, including its well-known Smile Logo.  Complainant has rights in the AMAZON mark based on registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,078,496 registered July 15, 1997).  Respondent's <amazonprofs.com> domain name is identical or confusingly similar to Complainant's AMAZON mark as it wholly incorporates the AMAZON mark and adds the generic or descriptive abbreviation "profs" and the ".com" generic top-level domain ("gTLD").

 

Respondent lacks rights and legitimate interests in the <amazonprofs.com> domain name as Respondent is not commonly known by the Domain Name and is neither an authorized user or licensee of Complainant's AMAZON mark. Additionally, Respondent does not use the Domain Name for either a bona fide offering of goods or services, nor for any legitimate noncommercial or fair use, but instead uses the Domain Name to resolve to a website ("Respondent's Website") that purports to offer competing branding, marketing and publishing services under the AMAZON mark while reproducing the Smile Logo and in one case actively asserting that the Respondent is "Amazon.com", indicating that Respondent is passing off as Complainant or associated with Complainant.

 

Respondent registered and uses the <amazonprofs.com> domain name in bad faith. Respondent uses the Domain Name to disrupt Complainant's business and to attract visitors for commercial gain by creating a likelihood of confusion with Complainant. Given the use of the Respondent's Website to offer competing services under the Complainant's Smile Logo, the reputation of the AMAZON mark and the fact that the Respondent's Website directly refers to the Complainant and its services, Respondent registered the Domain Name with actual knowledge of Complainant's rights in the AMAZON mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the AMAZON mark. The Domain Name is confusingly similar to Complainant's AMAZON mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant has rights in the AMAZON mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. Reg. No. 2,078,496 registered July 15, 1997). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).").

 

The Panel finds that the Domain Name is confusingly similar to the AMAZON mark as it incorporates the AMAZON mark and adds the generic abbreviation "profs" (short for "professionals" or "professors") and the ".com" gTLD. Addition of generic or descriptive terms and a gTLD to a trademark is generally insufficient to negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) ("Respondent merely adds the term 'supports' and a '.org' gTLD to the DELL mark. Thus, the Panel finds Respondent's disputed domain name is confusingly similar to Complainant's DELL mark per Policy ¶ 4(a)(i).").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) ("Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names."). The Panel holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the AMAZON mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name). The WHOIS information of record lists "Jack / plumbing" as the registrants of record. Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).

 

The Domain Name resolves to the Respondent's Website which purports to offer services to assist business in publishing, selling and marketing with the Complainant, which compete with the services offered by the Complainant (which also provides assistance to people seeking to publish sell and market their products with it). It does so while reproducing Complainant's AMAZON mark, Smile Logo, images of Complainant's packaging and in one case actively and falsely asserting that it is the Complainant.  Given the manner of use the Panel finds that Respondent's use of the Domain Name is neither fair use nor a bona fide offering of goods and services under the Domain Name. The use of a confusingly similar domain name to divert internet users to a website offering services in competition with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per 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).").  Furthermore, the use of a confusingly similar domain name to pass off as Complainant or as associated with a Complainant does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name under Policy ¶¶ 4(c)(i) or (iii).  See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) ("Respondent uses the [disputed] domain name to divert Internet users to Respondent's website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)."). 

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name (November 11, 2021), Respondent had actual knowledge of Complainant's AMAZON mark since the Complainant has a significant reputation in the AMAZON mark and Respondent purports to offer competing services and the Respondent's Website makes reference to the Complainant and its publishing and ecommerce services. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

Complainant argues that Respondent registered and uses the Domain Name in bad faith to create a likelihood of confusion with Complainant's AMAZON mark in order to attract Internet users for commercial gain. In the absence of a Response and on the balance of probability, the Panel considers that the most likely explanation for Respondent's actions is that the Domain Name was registered as part of a scheme to trade off the goodwill of Complainant's AMAZON mark for Respondent's commercial gain. More specifically Respondent seeks to divert users aware of Complainant's AMAZON e-commerce and publishing services to the Respondent's Website enabling it to promote its related and competing services and potentially mislead visitors into thinking it was associated with the Complainant, which is not the case. This conclusion is supported by Respondent's reproduction of the AMAZON mark, Smile Logo and images of Complainant's packaging on the Respondent's Website and its false assertion that it is the Complainant. Use of a confusingly similar domain name for commercial purposes not directly competitive with a complainant's business can indicate bad faith registration and use per Policy ¶¶ 4(b)(iii) and/or (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant's business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) ("The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant's METLIFE mark in order to profit from the goodwill associated with the mark."); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) ("Respondent is using the domain name at issue to resolve to a website at which Complainant's trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant's business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.")

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <amazonprofs.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated:  February 11, 2025