Amazon Technologies, Inc. v. Korede Abayomi
Claim Number: FA1507001630068
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Korede Abayomi (“Respondent”), Montana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amazonbookclubs.org>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sir Ian Barker as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 22, 2015; the Forum received payment on July 22, 2015.
On July 23, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <amazonbookclubs.org> 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 July 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 2015 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 email@example.com. Also on July 23, 2015, 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.
A timely Response was received and determined to be complete on August 12, 2015.
On August 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sir Ian Barker 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant owns a United States registered trademark No. 2,832,943 registered on April 13, 2004 for the word AMAZON.
The trademark is used by Complainant in its extensive electronic retailing.
The disputed domain name is confusingly similar to Complainant’s trademark. The disputed domain name contains the whole of the trademark plus generic terms. Complainant’s business operates worldwide. It concentrates on selling books but also sells other goods and services since it started business in 1995.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant gave it none. None of the situations envisaged Paragraph 4(c) of the Policy applies to Respondent.
The disputed domain name is being used by Respondent to run a business competing with Complainant’s by offering book club and book promotion services such as E-book downloads, bulk email services, pay-for-reviews, inter alia. Respondent has offered to sell the disputed domain name.
Respondent is acting in bad faith in registering and using the disputed domain name. He must have known of the fame of Complainant’s name when registering the disputed domain name. Respondent has previously been found in other decisions under the Policy to have acted in bad faith by operating a competing business on the resolving web-page. Respondent is attempting to profit from the confusion of internet users accessing his website and provides misleading information with regard to the disputed domain name.
Respondent uses various aliases in domain name registrations to obscure his true identity. He acted with no legitimate interests and in bad faith in registering <amazonbookclubs.org> under the name of “Judd Miller”. He has a pattern of cybersquatting behaviour as shown by previous decisions under the Policy.
Respondent filed a very short statement by way of Response claiming (without any supporting evidence) that the disputed domain name represents a compilation of self-published authors who have published their e-books with Complainant. They were said to belong to a network accessed by the disputed domain name because of free promotion services that the website offers to them. The website can only produce more sales for Complainant since Respondent receives no commission from directly-referred downloads and sales from Complainant.
“More evidence” in support was promised in the Response document but has not been produced.
Complainant sells a wide selection of books on the Internet. It has done so since 1995 in very many countries. It also sells on the Internet a wide selection of book-related goods and services. It uses the AMAZON name extensively in its marketing globally and the brand has become well-recognized throughout the world.
Complainant’s Amazon.com site is the fourth most -visited website in the United States, the sixth most visited globally and the first most-viewed shopping website according to an internet site ranking company, Alexa Internet Inc (an Amazon company). Revenue forComplainant in 2014 exceeded USD88 million. As of 2014, Complainant had more than 244 million active customer accounts.
Complainant owns trademark registrations for AMAZON in the United States and in many other countries. Numerous panelists in cases under the Policy have found that AMAZON is a well-known and famous trademark.
Respondent gave Complainant no authority to reflect its mark in a domain 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.
The disputed domain name is confusingly similar to Complainant’s AMAZON trademark. The addition of the generic words “book” and “club” is insufficient to negate the confusing similarity. Rather, given the nature of Complainant’s business as a book seller, the additionaol words compound the confusion. See, for example, Amazon Technologies, Inc v Null (NAF FA1303001488185 amazonbookclubs.com) .
Accordingly, Paragraph 4(a)(i) of the Policy is satisfied.
Complainant has shown that Respondent has no rights or legitimate interests in the disputed domain name by reason of that fact that Complainant has given no such rights to Respondent.
The burden then shifts to Respondent to demonstrate that he comes within one of the situations contemplated by Paragraph 4(c) of the Policy.
From Respondent’s Response document which is uncluttered by detail or evidence, the only possible defenses available would be for Respondent to show that the use of the disputed domain name is part of a bona fide offering of goods or services or a legitimate non-commercial or fair use.
The resolving web-page from the disputed domain name advertises online book club services which is competing with Complainant’s business. Capitalizing on a well-known mark by attracting Internet users to a site accessed by the disputed domain name where Respondent sells competing products to Complainant’s is neither a bona fide offering of goods or services pursuant to Paragraph 4(c)(i) or a non-commercial or fair use pursuant to Paragraph 4(c)(iii) of the Policy (see Alcon Inc v A Ranked, FA1306493).
Moreover, Respondent has endeavoured to sell the disputed domain name to Complainant suggesting “a reasonable settlement” after receiving a “cease and desist” letter sent on behalf of Complainant. This action suggests a lack of legitimate interest and bad faith.
Accordingly, Paragraph 4(a)(ii) of the Policy is satisfied. Respondent has failed to establish any defense under Paragraph 4(c).
The facts outlined in the preceding paragraph are relevant also to the Panel’s consideration of the bad faith criterion.
It is obvious that Respondent must have known of the fame of Complainant and its mark at the date of registration of the disputed domain name. The disputed domain name indicates Respondent’s willingness to “cash in” on Complainant’s worldwide reputation as an online vendor of books. When a domain name is so obviously connected with a well-known product or service, its very use by someone with no connection with the product may suggest opportunistic bad faith. See Twitter Inc v Accueil des Solutions (WIPO Case D2014-0645).
His website clearly demonstrates bad faith in that it competes with Complainant’s business. Respondent must be assumed to profit from such confusion commercially.
Matters personal to Respondent such as his track record of bad faith registrations (which he did not deny) and the uncertain information supplied as to his registrant identity go into the mix to confirm that this is a very clear and blatant case of cyber-squatting.
Accordingly, Paragraph 4(a)(iii) of the Policy is established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amazonbookclubs.org> domain name be TRANSFERRED from Respondent to Complainant.
Sir Ian Barker, Panelist
Dated: August 26, 2015
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