Amazon Technologies, Inc. v. Ivan Villanueva Rech
Claim Number: FA1905001842407
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by David J. Diamond of Richard Law Group, Inc., Texas, USA. Respondent is Ivan Villanueva Rech (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <market-prime.com>, <marketprimemusic.com>, <marketprimevideo.com>, <marketprimebooks.com>, <marketprimeebooks.com>, and <marketprimevirtual.com>, registered with CSL Computer Service Langenbach GmbH d/b/a joker.com.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 9, 2019; the Forum received payment on May 9, 2019.
On May 13, 2019, CSL Computer Service Langenbach GmbH d/b/a joker.com confirmed by e-mail to the Forum that the <market-prime.com>, <marketprimemusic.com>, <marketprimevideo.com>, <marketprimebooks.com>, <marketprimeebooks.com>, and <marketprimevirtual.com> domain names are registered with CSL Computer Service Langenbach GmbH d/b/a joker.com and that Respondent is the current registrant of the names. CSL Computer Service Langenbach GmbH d/b/a joker.com has verified that Respondent is bound by the CSL Computer Service Langenbach GmbH d/b/a joker.com 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 May 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 2019 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@market-prime.com, postmaster@marketprimemusic.com, postmaster@marketprimevideo.com, postmaster@marketprimebooks.com, postmaster@marketprimeebooks.com, postmaster@marketprimevirtual.com. Also on May 17, 2019, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On June 7, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant operates an online retail store offering a large variety of goods and services. Complainant has rights in its PRIME mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,234,643, registered Apr. 24, 2007). Respondent’s <market-prime.com>, <marketprimemusic.com>, <marketprimevideo.com>, <marketprimebooks.com>, <marketprimeebooks.com>, and <marketprimevirtual.com> domain names are confusingly similar to Complainant’s mark. Respondent adds the descriptive term “market” and the “.com” generic top-level domain (“gTLD”) to each of the disputed domain names. Respondent adds a hyphen to <market-prime.com>, and the descriptive terms “music,” “video,” “books,” “ebooks,” and “virtual” to the <marketprimemusic.com>, <marketprimevideo.com>, <marketprimebooks.com>, <marketprimeebooks.com>, and <marketprimevirtual.com> domain names.
Respondent has no rights or legitimate interests in the <market-prime.com>, <marketprimemusic.com>, <marketprimevideo.com>, <marketprimebooks.com>, <marketprimeebooks.com>, and <marketprimevirtual.com> domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been licensed or authorized by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use as Respondent was attempting to pass off as the Complainant to offer competing goods or services. Additionally, upon being notified by the Complainant of the infringement, Respondent changed the look of the resolving webpages of the disputed domain names and attempted to ransom the disputed domain for an unspecified amount. The disputed domain names now resolve to parked webpages.
Finally, Respondent’s <market-prime.com>, <marketprimemusic.com>, <marketprimevideo.com>, <marketprimebooks.com>, <marketprimeebooks.com>, and <marketprimevirtual.com> domain names were registered and are being used in bad faith as Respondent attempted to ransom the disputed domain for an unspecified amount. Respondent uses the disputed domain names to promote competing alternative retail services, disrupting Complainant’s business and constituting bad faith. Additionally, Respondent incorporates Complainant’s mark in the domain names and uses Complainant’s logos to attract Internet users to the disputed domain names, presumably for commercial gain. Furthermore, after receiving notice from the Complainant of the infringement, Respondent changed the design of the webpages and moved the disputed domain names resolutions to empty pages. Respondent had actual knowledge of Complainant’s right in its PRIME mark at the time of registration, thus constituting bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Amazon Technologies, Inc. (“Complainant”), of Seattle, WA, USA. Complainant is the owner of domestic and global registrations for its PRIME mark, and various related marks constituting the family of PRIME marks. Complainant has continuously used its PRIME mark since at least as early as 2005, in connection with Complainant’s provision of entertainment goods and shipping services.
Respondent is Ivan Villanueva Rech (“Respondent”), of Barcelona, Spain. Respondent’s registrar’s address is listed as Dusseldorf, Germany. The Panel notes that Respondent registered the <market-prime.com> domain name on or about November 1, 2017, <marketprimemusic.com> domain name on or about February 28, 2019, <marketprimevideo.com> domain name on or about February 22, 2019, <marketprimebooks.com> domain name on or about February 28, 2019, <marketprimeebooks.com> domain name on or about February 28, 2019, and <marketprimevirtual.com> domain name on or about February 22, 2019.
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 has rights in its PRIME mark through registration with the USPTO (e.g. Reg. No. 3,234,643, registered Apr. 24, 2007). Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). 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 here finds that the Complainant has rights in the PRIME mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s disputed domain names are confusingly similar to Complainant’s mark as Respondent merely adds the descriptive term “market” and the “.com” gTLD to each of the disputed domain names, as well as a hyphen to the <market-prime.com> domain name, and the descriptive terms “music,” “video,” “books,” “ebooks,” and “virtual” to the <marketprimemusic.com>, <marketprimevideo.com>, <marketprimebooks.com>, <marketprimeebooks.com>, <marketprimevirtual.com> domain names. The use of words to describe goods or services offered in connection with the mark and gTLD is not sufficient to distinguish a disputed domain name from the mark, under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Likewise, the addition of a hyphen does not distinguish a disputed domain name from a mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel here finds that Respondent’s disputed domain names are confusingly similar to Complainant’s PRIME mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that 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”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been licensed or authorized by Complainant to use Complainant’s mark. Relevant information, such as WHOIS information, can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a 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)”). Here, Complainant provides WHOIS information for the disputed domain names, showing “Ivan Villanueva Rech” as the registrant of the disputed domain names, and there is no evidence in the record to suggest Respondent was authorized to use the mark. The Panel here finds that Respondent has no rights or legitimate interest in the disputed domain names as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent has no rights or legitimate interests in the <market-prime.com> domain name as Respondent’s use is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant contends that Respondent was attempting to pass off as the Complainant to offer competing goods or services. Use of a disputed domain name to replicate complainant’s website is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Here, Complainant provides screenshots of the resolving webpage of the <market-prime.com> domain name, showing an online marketplace similar to Complainants. The Panel here finds that Respondent has no rights or legitimate interests in the <market-prime.com> domain name as Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Finally, Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names because, after being notified by the Complainant of its infringement, Respondent revised the landing page of <market-prime.com> to remove the look-alike logos and began offering the disputed domain name for sale. Additionally, the other disputed domain names resolve to empty webpages and are inactively held. Offering a disputed domain name for sale is additional evidence of a lack of rights or legitimate interests in a disputed domain name. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of or a legitimate non-commercial or fair use within the meaning of Policy ¶¶ 4(c)(i) and (iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Here, Complainant provides screenshots of the resolving webpage of the <market-prime.com>, showing that the domain name is being offered for sale for an unspecified amount, as well as screenshots of the remaining disputed domain names. The Panel here finds that Respondent has no rights or legitimate interests in the disputed domain names.
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent’s <market-prime.com>, <marketprimemusic.com>, <marketprimevideo.com>, <marketprimebooks.com>, <marketprimeebooks.com>, and <marketprimevirtual.com> domain names were registered and are being used in bad faith as Respondent is attempting to sell the disputed domain names to Complainant. Offering a disputed domain name for sale can be evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Deutsche Lufthansa AG v. Kenechukwu Okoli, FA 1821759 (Forum Jan. 13, 2019) (“The domain name’s website listed the domain name for sale for $9,150. Respondent also contacted Complainant directly to offer the domain name for sale. Doing so suggests bad faith registration and use of the <lufthansamiles.com> domain name pursuant to Policy ¶ 4(b)(i).”). Here, Complainant provides copies of corespondences with Respondent in which Respondent threatens to disrupt Complainant’s position in Google searches unless Complainant purchases the disputed domain names. The Panel here finds that Respondent’s disputed domain names were registered and are being used in bad faith under Policy ¶ 4(b)(i).
Next, Complainant argues that Respondent’s disputed domain names were registered and are being used in bad faith as Respondent attempts to disrupt Complainant’s business by promoting alternative retail services. Use of a disputed domain name to offer goods or services in competition with a complainant’s business is evidence of bad faith under Policy ¶ 4(b)(iii). See Am. Online, Inc. v. Tapia, FA 328159 (Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). The Panel again notes that Complainant provided screenshots of the resolving webpage of the <market-prime.com> domain name which purportedly offers competing retail services. The Panel here finds that Respondent’s, <market-prime.com> domain name was registered and is being used in bad faith per Policy ¶ 4(b)(iii).
Furthermore, Complaint argues that Respondent’s <market-prime.com>, <marketprimemusic.com>, <marketprimevideo.com>, <marketprimebooks.com>, <marketprimeebooks.com>, <marketprimevirtual.com> domain names were registered and are being used in bad faith as Respondent is attempting to attract Internet users for commercial gain by passing off as Complainant. Use of a disputed domain name to mimic complainant’s website to attract users for commercial gain is evidence of bad faith, under Policy ¶ 4(b)(iv). See Wells Fargo & Co. v. Mihael, FA 605221 (Forum Jan. 16, 2006) (“Complainant asserts,…that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers…. The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).”). Here, the Panel again recalls that Complainant provided screenshots of the resolving webpage for the <market-prime.com> domain name, showing that Complainant’s mark is displayed on the website. The Panel here finds that Respondent’s <market-prime.com> domain name was registered and is being used in bad faith per Policy ¶ 4(b)(iv).
Additionally, Complainant argues that Respondent’s disputed domain names were registered in bad faith as Respondent had actual notice of Complainant rights in its PRIME mark. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering a disputed domain name containing said mark is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). A respondent’s actual knowledge of a complainant’s rights in a mark may be demonstrated by the fame and notoriety of a mark and a respondent’s use of the mark in connection with the disputed domain name, constituting bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainant provides numerous new articles about the fame of its PRIME mark and screenshots of the resolving webpage for the <market-prime.com> domain name, showing an ad for Complainant’s service. The Panel here finds that Respondent had actual notice of Complainant rights in its PRIME mark, thus Respondent’s registration and use of the disputed domain names, as minor variants of each other, constitute bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondents disputed domain names were registered and are being used in bad faith as Respondent is inactively holding the disputed domain names. Inactive holding of a disputed domain name can be evidence of bad faith, under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Here, Complainant provides screenshots of the resolving webpages for the <marketprimemusic.com>, <marketprimevideo.com>, <marketprimebooks.com>, <marketprimeebooks.com>, <marketprimevirtual.com> domain names, showing errors as the address could not be found. Complainant also provides a screenshot of the current resolving webpage of the <market-prime.com> domain name which displays a parked webpage. The Panel finds Complainant’s evidence of Respondent’s inactivity supports a finding of bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <market-prime.com>, <marketprimemusic.com>, <marketprimevideo.com>, <marketprimebooks.com>, <marketprimeebooks.com>, and <marketprimevirtual.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 24, 2019
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