Amazon Technologies, Inc. v. master / masterforwarder
Claim Number: FA2001001880203
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, United States. Respondent is master / masterforwarder (“Respondent”), Michigan, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amazon-mining.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 23, 2020; the Forum received payment on January 23, 2020.
On January 24, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <amazon-mining.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.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 January 27, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 18, 2020 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@amazon-mining.com. Also on January 27, 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 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 February 20, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its rights in the AMAZON trademark acquired through its ownership of the portfolio of trademark and service mark registrations described below as well as the goodwill that it has acquired at common law by its extensive use of the mark in its Internet-based retail and technology business.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s AMAZON trademark as it incorporates its AMAZON trademark and service mark in its entirety adding only a hyphen, the generic term “mining” which relates to Complainant’s business that includes data mining.
Complainant submits that the addition of the descriptive or generic term “mining” to the AMAZON does not avoid confusing similarity, especially when the added terms relate to Complainant’s services. See Amazon Technologies, Inc. v. Gulati, FA1604001671917 (Forum May 21, 2016) (“It is well established authority that the addition of generic words to a trade mark does not serve to distinguish the Domain Name from the Complainant’s mark”).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; that Respondent is not making a noncommercial fair use of the disputed domain name; and that Respondent has never been legitimately known as or referred to as AMAZON or any variation thereof. As a result, Respondent does not have a legitimate interest in the disputed domain name, as legitimate interests are defined in Policy ¶ 4(c)(i)-(iii).
Complainant adds that Respondent is not affiliated with Complainant in any way; that Respondent is not licensed by Complainant to use Complainant’s AMAZON mark; and that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. Complainant cites Broadcom Corp. v. Ibecom PLC, FA0411000361190 (Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name).
Complainant refers to a print-out of the website to which the disputed domain name resolves which shows that Respondent is adopting Complainant’s identity, trademark and logo to promote Respondent’s purported data centers and cloud cryptocurrency mining services. Examples of such unauthorized use by Respondent which are exhibited in the Complaint are as follows:
Complainant adds that there are no disclaimers on Respondent’s website and submits that Respondent’s purported use of the disputed domain name cannot be classified as a bona fide use.
Complainant further submits that Respondent purports to charge from $100 to $50,000 for its services, and therefore Respondent’s use of the disputed domain name is neither a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant adds that Respondent’s use of the disputed domain name 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)”).
Complainant submits that the disputed domain name was registered and is being used in bad faith arguing that because Respondent is displaying Complainant’s AMAZON logos on the website to which the disputed domain name resolves, it is clear that the disputed domain name was registered with knowledge of Complainant’s rights and that the registrant intended to create an association with Complainant and its goods and services. Complainant submits that the registration of the disputed domain name with actual knowledge of Complainant’s rights is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Complainant cites the decision of the panel in Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (“[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse”).
Furthermore, Complainant alleges that by incorporating Complainant’s well-known AMAZON trademark and logos Respondent creates the false impression that its website originates with or is endorsed or certified by Complainant. Microsoft Corp. v. Pennisi, FA0908001280894 (Forum Sep. 29, 2009) (finding bad faith due in part to Respondent’s “repeated use of Complainant’s logo”).
Complainant adds that by using Complainant’s trademark and logos to promote its fee-based services, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s mark, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Citing V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (Forum Sept. 2, 2004) (“Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv)”).
Moreover, Complainant argues that by promoting alternative data centers or data mining services using the AMAZON trademark potentially diverts and disrupts Complainant’s business and falls under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA0608000768859 (Forum Sep. 21, 2006) (use of disputed domain name to operate a competing website constitutes bad faith according to Policy ¶ 4(b)(iii)).
Finally, Complainant argues that Respondent’s use of a privacy shield for this commercial web site reflects bad faith. Citing Microsoft Corp. and Skype v. Contact Privacy Inc. Customer 0126766269, FA1303001491615 (Forum May 6, 2013) (“Respondent registered the disputed domain name using a privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption. That alone justifies a finding of bad faith”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is one of the world’s leading online retailers, offering products and services to more than 100 countries around the globe and has continuously used the AMAZON and AMAZON.COM trademarks (together, the “AMAZON Mark”) in connection with its products and services since 1995. Complainant’s products and services including AWS cloud computing, data storage, databases, artificial intelligence, data lakes, data analytics, and data mining with data centers serving 245 countries and territories around the world.
Complainant claims that for its fiscal year 2018 its revenues were more than $230 billion with worldwide expenditures on advertising and other promotional costs at $8.2 billion.
Complainant owns a large portfolio of trademark and service mark registrations that include
· United States registered service mark AMAZON, registration number 3, 868, 195, registered on October 26, 2020 for services in international class 45;
· United States registered service mark, AMAZON, registration number 2, 832, 943, registered on April 13 004 for services in international class 35;
· United States registered trademark AMAZON, registration number 2,857, 590 registered on June 29, 2004 for goods in internatonal class 9.
Complainant also owns a number of design registrations for trademarks that incorporate an arrow device including:
United States registered service mark registration number 5,508,999, registered on July 3, 2018 for services in internatonal classes 35, 36, 41 and 42.
United States registered service mark registration number 4,841,614, registered on October 27, 2015 for services in international classes 35 and 36; and
United States registered service mark registration number 4,067,393, registered on December 6, 2011 in internatonal class 38.
The disputed domain name <amazon-mining.com> was registered on July 23, 2019 and resolves to a website that uses Complainant’s trademarks its logo device and purports to offer services related data storage and cloud cryptocurrency mining.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the Registrar’s response to the Forum’s request for verification of the details of the registration of the disputed domain name in the course of this Complaint. Respondent availed of a privacy service to conceal its identity which was disclosed by the Registrar in the course of this proceeding.
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 adduced convincing undisputed evidence of its rights in the AMAZON trademark and service mark acquire through the abovementioned portfolio of registered trademarks and its extensive use of the mark in its global Internet business.
The disputed domain name consists of Complainant’s AMAZON mark in its entirety, in combination with the word “mining”, which references the data-mining business activity in which Complainant is engaged together with a hyphen and the gTLD <.com> extension.
The AMAZON trademark is the initial, dominant and only distinctive element in the disputed domain name. The word “mining” is generic and descriptive and adds no distinctive character to the disputed domain name. In the circumstances of this case both the hyphen and the gTLD <.com> extension may be ignored for the purposes of comparison.
This Panel finds that the disputed domain name is confusingly similar to Complainant’s AMAZON trademark and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name alleging that Respondent has never been legitimately known as or referred to as AMAZON or any variation thereof. Complainant also asserts that Respondent is not affiliated with Complainant in any way; that Respondent is not licensed by Complainant to use Complainant’s AMAZON mark; and that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services.
Complainant has furthermore adduced in evidence a copy of Respondent’s website which evidences that Respondent is adopting Complainant’s identity, trademark and logo to promote Respondent’s purported data centers and cloud cryptocurrency mining services. Complainant alleges that such use cannot be considered either a bona fide use or a non-commercial or fair use of the disputed domain name.
It is well established that in such circumstances the burden of production shifts to Respondent to establish that he has such rights or legitimate interests. Respondent has failed to respond to this Complainant and has therefore failed to discharge the burden of production.
This Panel must therefore find that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name. Respondent has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii)
There is ample evidence to find that AMAZON is a famous mark and that Complainant has a global reputation. While the word “Amazon” is also a geographical term this Panel notes the use to which the disputed domain name has been put by Respondent and finds that on the balance of probabilities the disputed domain name was chosen and registered in bad faith in order to take predatory advantage of Complainant, its reputation and trademarks.
In reaching this decision this Panel is conscious that the disputed domain name is being used by Respondent to resolve to a website which purports to offer services in competition with Complainant and that the content of Respondent’s website is designed to create the misleading impression that the subject website is owned or associated with Complainant and that the services that Respondent purports to offer on the website are being provided by or in some way endorsed by Complainant.
In the circumstances this Panel finds that by using the disputed domain name, Respondent has intentionally attempted in bad faith to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's AMAZON mark as to the source, sponsorship, affiliation, or endorsement of his web site and the services he purports to offer on his web site.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the reliefs sought in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amazon-mining.com> domain name be TRANSFERRED from Respondent to Complainant.
_____________________________
James Bridgeman SC
Panelist
Dated: February 21, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page