Amazon Technologies, Inc. v. Adam Grunwerg / Finixio Limited
Claim Number: FA2012001924577
Complainant is Amazon Technologies, Inc. (ďComplainantĒ), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA.† Respondent is Adam Grunwerg / Finixio Limited (ďRespondentĒ), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bitcoinprime.net>, registered with NameCheap, Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Eleni Lappa as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 11, 2020; the Forum received payment on December 11, 2020. Complainant submitted an amended Complaint to the Forum on December 15, 2020.
On December 11, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <bitcoinprime.net> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the ďPolicyĒ).
On December 15, 2020, the Forum served the amended Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondentís registration as technical, administrative, and billing contacts, and to email@example.com.† Also on December 15, 2020, 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 Respondentís registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 25, 2021.
An Additional Submission to the Complaint and an Additional Submission to the Annex of the Complaint were submitted by Complainant on January 28, 2021.
On January 27, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eleni Lappa 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 submits, inter alia, that it is a large online marketplace, with prior registered trademark rights in the PRIME mark through various relevant registrations which due to extensive use has by now become well-known and well-associated with Complainant. Complainant further asserts that Respondentís <bitcoinprime.net> domain name is confusingly similar to Complainantís PRIME trademark as it incorporates the said mark in its entirety, while adding the generic and descriptive terms ďbitcoinĒ and ď.netĒ, which do not sufficiently distinguish the domain name in dispute from Complainantís prior registered, well-known rights in the PRIME mark.
Complainant moreover argues that Respondent lacks rights and legitimate interests in the <bitcoinprime.net> domain name, as Respondent is not commonly known by the disputed domain name, and neither has any prior registered or unregistered rights related to the domain name in dispute nor has Complainant authorized or licensed Respondent to use the PRIME mark in its domain name.
Furthermore, Complainant submits that Respondent registered and is using in bad faith the domain name <bitcoinprime.net>, as Respondent was aware of Complainantís prior rights on the PRIME trademark given that it is a well-known mark, and that Respondent is using the domain name <bitcoinprime.net> in order to pass off as Complainant and divert consumers to Respondentís commercial ventures for Respondentís commercial gain.
Respondent denies the Complaint and asserts that Complainant has failed to establish all three elements discussed above, as required by the Policy. Respondent asserts that certain Exhibits of the Complaint should be excluded as they are unfairly prejudicial, lack materiality, or at least, the Panel should place limited weight on the Exhibits.
In addition, Respondent submits that Complainantís Exhibit G is an old screenshot of Respondentís website, and that since being contacted by Complainant with regard to the BITCOINPRIME logo, Respondent has changed the logo design.
Moreover, Respondent argues that Complainant has failed to establish a confusing similarity between Complainantís PRIME trademark and Respondentís <bitcoinprime.net> domain name as they are allegedly different in their respective dominant part, asserting further that Respondentís cryptocurrency advisory services differ from Complainantís services.
In addition, Respondent contends that the <bitcoinprime.net> domain name reflects Respondentís legitimate cryptocurrency platform. Furthermore, Respondent submits that the term PRIME is generic as it is used by many other websites and alleges that Complainant has failed to demonstrate that Respondent lacks rights and legitimate interests in the disputed domain name.
Respondent also alleges that Complainant failed to demonstrate that Respondent registered and used the disputed domain name in bad faith, as Respondentís use of the disputed domain name is unrelated to Complainantís use of the PRIME mark. †
C. Additional Submissions
Complainantís Additional Submissions address the arguments put forward by Respondentís Response in an attempt to rebut them, in detail.
Complainant has prior registered and unregistered (use-based) rights on the mark PRIME through several trademark registrations. The distinguishing ability (and lack of generic/descriptive character) of the PRIME mark is per se confirmed by the fact that relevant trademark registrations exist and are currently valid, in the name of Complainant.† Respondent has offered no evidence of relevant registered or unregistered rights in the PRIME mark. The dominant portion of the domain name under dispute <bitcoinprime.net> is the mark PRIME as the remaining elements comprising said domain name are BITCOIN which is purely descriptive of the services for which the domain nameís relevant website is to be used and/or is being used and .NET which well-established internationally as a purely generic TLD (top level 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 Panel finds that the domain name in dispute <bitcoinprime.net> comprises of three relevant terms BITCOIN, PRIME and .NET. Out of those three terms, only the term PRIME is sufficiently distinctive as it does not describe or connote any services or goods offered by the webiste linked to the domain name in dispute and as such the term PRIME is the dominant element of the domain name in dispute <bitcoinprime.net>. Moreover, the term PRIME is protected by relevant trademark registrations, the details of which have been submitted by Complainant, a fact which per se confirms the distinguishing ability of the term PRIME. Respondent has fuly and entirely copied the trademark PRIME owned by Complainant and used it as the dominant element of its domain name in dispute <bitcoinprime.net>. The confusing similarity is such that the average consumer if encountering the domain name in dispute <bitcoinprime.net> is likely to falsely conclude that the said domain name and relevant website originate from or relate to the Complainant and, even though Complainantís primary area of activity is not bitcoins, the resemblance created by impression and the ensuing risk of confusion are sufficient.
In accordance to the above, the Panel finds that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights and that the relevant requirement of the Policy Paragraph 4(a)(i) is therefore satisfied.
Complainant has prior registered and unregistered (use-based) rights on the mark PRIME via several trademark registrations and extensive use worldwide. Respondent has offered no evidence of relevant registered or unregistered rights on the mark PRIME which, as discussed above is the dominant portion of the domain name in dispute <bitcoinprime.net>. The requirement of Policy Paragraph 4(a)(ii) is therefore satisfied.
Complainantís trademark PRIME is quite well-known, due to the many years it has been registered and extensively used online on a global scale, therefore the Respondent knew or should have known of its existence at the time it registered the domain name in dispute <bitcoinprime.net> which was therefore registered in bad faith by Respondent, in an effort to attract customers that would reasonably believe the said domain name belongs or is related to Complainant. Respondentís subsequent use of the domain name in dispute <bitcoinprime.net> as a website clearly demonstrate his attempts to pass off as Complainant and mislead consumers/online visitors and divert them to its own commercial ventures for its own commercial gain. Any changes on the manner used in terms of logo appearance or even website content that may occur following the filing of the Complaint under review are not sufficient to rebut the element of bad faith use, for various reasons, one of them being the very same ability of changing back, at will, to any past or other potentially even more resembling variations on any given time.
In light of the above, the requirement of Policy Paragraph 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bitcoinprime.net> domain name be TRANSFERRED from Respondent to Complainant.
Eleni Lappa, Panelist
Dated:† February 9, 2021
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