Amazon Technologies, Inc. v. Aman U Chowdhury / Amazon Bangladesh Limited
Claim Number: FA2009001912745
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, United States. Respondent is Aman U Chowdhury / Amazon Bangladesh Limited (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amazon-bd.com>, registered with GoDaddy.com, LLC (the “Disputed Domain Name”).
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.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 17, 2020; the Forum received payment on September 17, 2020.
On September 18, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <amazon-bd.com> 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 September 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 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-bd.com. Also on September 22, 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.
A timely Response was received and determined to be complete on October 12, 2020.
An Additional Submission was received from Complainant on or about October 16, 2020.
An Additional Submission was received from Respondent on or about October 24, 2020.
A Second Additional Submission was received from Complainant on or about October 27, 2020.
A Second Additional Submission was received from Respondent on or about October 31, 2020.
Each of these additional submissions has been accepted and considered by the Panel.
On October 19, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kendall C. Reed 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant is an on-line retailer. It began operations in 1995.
Complainant is the owner of numerous trademark registrations for the mark AMAZON and AMAZON.COM, in standard character mark, design mark, and combined mark formats, and variants thereof, issued by national registries in the United States, Bangladesh and many other countries around the world. These trademark registrations date from at least as early as 1997 (for AMAZON.COM), April 13, 2004 (for AMAZON), July 3, 2018 (for the combined mark of AMAZON with a “smile” arrow pointing from the “a” to the “z”), October 22, 2015 (for the smile arrow in isolation), and December 12, 1998 (for AMAZON.COM in Bangladesh).[i] [Complainant’s AMAZON trademark is hereinafter referred to as the “Complainant’s Trademark”].
Complainant’s Trademark is famous. Since the inception of its business, Complainant has expended billions of dollars on advertising its goods and services under Complainant’s Trademark on a global basis.[ii] Further, Complainant’s operations are worldwide; in its first four weeks of operations, Complainant shipped products to 45 countries, and today, Complainant ships products to at least 100 countries.
The Disputed Domain Name is identical or confusingly similar to Complainant’s Trademark because it contains the entirety thereof and adds only a hyphen, the country identifier for Bangladesh, “BD,” and the gTLD “.com”, which are insufficient to create a meaningful distinction.
Respondent has no rights or legitimate interests with respect to the Disputed Domain Name because Complainant has never given permission to Respondent to use Complainant’s Trademark, Respondent has not been commonly known by the Disputed Domain Name, and Respondent is using the Disputed Domain Name to compete with Complainant. In this regard, the landing page for the Disputed Domain Name promotes the launch of “Amazon Bangladesh” and includes usages of Complainant’s Trademark, including combined marks that include the noted “smile” arrow and coloration that mimics several of Complainant’s combined trademarks that include color elements. Respondent’s use of the Disputed Domain Name does not constitute a bona fide offering of goods or services under the Policy.[iii]
Respondent’s use of Disputed Domain Name is in bad faith because Respondent registered and is using the Disputed Domain Name in an intentional effort to attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s Trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.
B. Respondent
The Forum lacks jurisdiction over this dispute. Both Respondent and Complainant obtained their respective domain names, including the Disputed Domain Name, from GoDaddy, which is the cause of this dispute, for if GoDaddy had not done so, there would be no dispute. As such, if Complainant has any cause for complaint, it is against GoDaddy and not Respondent. Complainant may raise its objection against GoDaddy pursuant to Clause 22 of GoDaddy’s Universal Terms of Service Agreement.
Complainant is not correct in asserting trademark rights to the AMAZON trademark in Bangladesh. The cited Bangladeshi trademark registrations have lapsed,[iv] and therefore there is no justification for Complainant to assert a complaint against Respondent based on such registrations.
Complainant is not correct in asserting that Respondent has no rights or legitimate interests with respect to Disputed Domain Name. Respondent based the Disputed Domain Name on Respondent’s legitimate business name, Amazon Bangladesh Limited. Respondent is lawfully incorporated under this name pursuant to The Bangladesh companies act of 1994. It is registered with the Registrar of Joint Stock Companies and Firms as of December 10, 2018, registration number C-148856/2018.[v]
It is Respondent’s intention to do business in Bangladesh, and in furtherance of this purpose, Respondent registered a domain name that accurately reflects this business name.
Further, pursuant to the laws of Bangladesh, every company is required to disclose its manufacturer/supplier/service provider’s name in its products/packaging, which Respondent accomplishes by the using Respondent’s name in the Disputed Domain Name.
It is not correct for Complainant to assert exclusivity over the work/mark “amazon” because numerous other companies and entities within Bangladesh use this word/mark in connection with their operations, such as Amazon Properties Ltd., Amazon Holidays Travel Services Ltd., and M.R. Amazon Apparels Limited, among many others. Further, many potential domain names that include the word/mark ‘amazon” are available for sale by GoDaddy, such as <amazon-kw.com> and <amazon-pl.com>, and as such this word/mark is not secured for exclusive use by Complainant. Complainant’s remedy is to obtain a restraining order against GoDaddy to prevent such sales.
Additionally, “The respondent with a bonafide intention made the offer to the complainant to become its official business partner as the respondent company already set up its business structure in Bangladesh and the respondent thought that it would be for mutual benefit of the parties if they jointly do the business. There was no malafide intention on the part of the respondent for the aforesaid offer as it totally up to the complainant’s hands whether it will accept the offer or not.”
C. Additional Submissions
C.1. Complainant’s Additional Submission
The Forum does have jurisdiction over this matter. All “.com” domain name holders agree to the arbitration of domain name disputes pursuant to the Uniform Domain Name Dispute Resolution Policy, and this arbitration agreement is found in every domain name registration agreement.
Complainant has established that it has rights in Complainant’s Trademark, including currently existing trademark registrations in Bangladesh, and all of these and several of Complainant’s US registrations predate Respondent’s registration of the Disputed Domain Name.
Respondent’s business name registration, if Respondent truly has one, is unavailing. In itself, a business name does not confer rights under the Policy. Respondent must demonstrate that Respondent has been commonly known by this business name, and further, that Respondent was commonly known by this name before Respondent registered the Disputed Domain Name. Respondent has provided no such evidence.
Respondent has admitted its bad faith. “Respondent admits that it “made the offer to the complainant to become its official business partner.” See Response ¶ 7(e). Respondent does not deny knowledge of Complainant’s business or its rights in the AMAZON Mark prior to the registration of the Disputed Domain Name, and the only credible explanation for the selection of the name “Amazon Bangladesh” and registration of the Disputed Domain Name in view of the Response was to opportunistically position Respondent to profit from an affiliation with Complainant. This attempt to coopt a complainant’s trademark to induce a business relationship is bad faith registration and use under the Policy.”
Respondent provides no evidence to support any of its arguments and allegations, and as such, all of Respondent’s arguments and allegations should be given no weight.
C.2. Respondent’s Additional Submission
The Forum has no jurisdiction over this matter. This dispute has arisen because GoDaddy sold domain names to both parties that contain the word “amazon.” As such, if Complainant has any complaint it is with GoDaddy pursuant to Clause 22 of the Universal Terms of Service Agreement of GoDaddy.
Exhibit 1 to Respondent’s Additional Submission clearly shows that Complainant had no active trademark registrations for any of the Complainant’s Trademarks in Bangladesh at the time that Respondent registered the Disputed Domain Name, and therefore “…the infringement or violation of trademark in Bangladesh does not arise at all.” Further, all of Complainant’s trademark registrations in Bangladesh expired between 2015 and 2016.[vi] Whereas Complainant’s trademark registrations in Bangladesh had predated Respondent’s registration of the Disputed Domain Name, this priority was lost when Complainant’s registrations expired.
C.3. Complainant’s Second Additional Submission
Respondent is wrong about the status of Complainant’s Bangladeshi trademark registrations, as demonstrated by copies of the renewal certificate attached as an exhibit to the Second Additional Submission.[vii]
Respondent still fails to produce competent evidence that Respondent was commonly known by its business name, as required by the Policy.
C.4. Respondent Second Additional Submission
Complainant’s evidence about its Bangladeshi trademark registrations that have been renewed (registration numbers 118509 in Class 42 and 62920 in Class 16) is not relevant. Respondent is not and will not be operating in these Classes. Given Respondent’s business, it will be operating only within classes 35 and 39, and Complainant’s Bangladeshi trademark registrations in these Classes have expired on September 24, 2015. Therefore, Complainant is not entitled to the relief for which it has prayed. Further, Respondent is not concerned about Complainant’s U.S.A. trademarks, even those extending to Classes 35 and 39, because these have no force or effect within the territory of Bangladesh. “Thus, there is no embargo to do business and provide service against Trademarks Class 35 and 39 in Bangladesh by Complainant.”
Complainant owns numerous trademarks registrations in the United States and many other countries in the world for the trademark AMAZON.
Complainant registered the trademark AMAZON in the United States no later than April 13, 2004.
Complainant began its operations no later than 1995, and since that time, Complainant has expended multiple billions of dollars marketing its goods and services under the AMAZON trademark.
Respondent registered the domain name <amazon-bd.com> on or about December 13, 2018.
Respondent registered the domain name <amazon-bd.com> with GoDaddy.
Respondent’s Registration Agreement with GoDaddy includes an arbitration agreement that incorporates the Policy.
The domain name <amazon-bd.com> currently directs to a landing page as shown in Complainant’s Exhibit K.
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.
Preliminary Issue – Jurisdiction
Respondent argues that the Forum, and therefore this Panel, lacks jurisdiction to hear this matter.
Respondent argues that GoDaddy is the cause of the present dispute because GoDaddy sold the Disputed Domain Name to Respondent, which GoDaddy should not have done if the use of the Disputed Domain Name by Respondent would be subject to an objection by Complainant under the Policy. Because GoDaddy is the cause of this dispute, then Complainant can, and must, purse its objection with GoDaddy under to Clause 22 of GoDaddy’s Universal Terms of Service Agreement. As such, The Forum lacks jurisdiction.
This is not correct.
Respondent’s Registration Agreement with GoDaddy includes an arbitration agreement that incorporates the Uniform Domain Dispute Resolution Policy.[viii] Pursuant to the policies and procedures of the Internet Corporation for Assigned Names and Numbers (ICANN), the Forum is an authorized provider of arbitration services for UDRP arbitrations, and this Panel is appointed and authorized by the Forum.
It is not relevant that other options for resolving the present dispute may exist, such as a procedure pursuant to Clause 22 of GoDaddy’s Universal Terms of Service Agreement (the existence and/or applicability of which the Panel takes no position). The existence of such other options in no way interferes with or divests the Forum or this Panel of jurisdiction.
The Panel finds that the Forum and this Panel have jurisdiction over this matter.
Policy ¶ 4(a)(i) concerns standing. If the requirements for standing are met, then the action may be maintained, and the analysis proceeds to Policy ¶¶ 4(a)(ii) and 4(a)(iii). If not, then the matter is dismissed.
There are two requirements for standing under Policy ¶ 4(a(i): 1) Complainant must have rights in a trademark, and 2) the Disputed Domain Name must be identical or confusingly similar thereto.
Rights in a trademark may be established by proving ownership of a trademark registration issued by a national registry. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant has proven ownership of numerous trademark registrations in the United States and many other nations for the Complainant’s Trademark.
As such, Complainant has established rights in a trademark.
A domain name is determined to be identical or similar to a trademark by way of a simple comparison of the two by the Panel. As has been noted, Complainant’s Trademark is AMAZON and the Disputed Domain Name is <amazon-bd.com>. The only differences are the hyphen, the country designator “BD” (designating “Bangladesh”), and the gTLD “.com.” It is well established that such minor differences do not create a meaningful distinction for purposes of the first element of the Policy. See Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶ 4(a)(i) analysis.”), see also MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”), see also Le Cordon Bleu International B.V. v. Bhattacharjee, D2015-1857 (WIPO Jan. 14, 2016) (“According to the consensus view of UDRP panels, the addition of geographical terms such as ‘bd’ (a common abbreviation for Bangladesh, the domicile of the Respondent) to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity”).
As such, Complainant has established that the Disputed Domain Name is confusingly similar to Complainant’s Trademark.
Respondent argues that Complainant has no trademark rights that it can assert against Respondent in Bangladesh because Complainant’s existing trademarks in Bangladesh apply only to Classes 16 and 42, and Respondent does or will operate only within Classes 35 and 39. Respondent further argues that Complainant’s United States trademark registrations that include Classes 35 and 39 do not apply in Bangladesh and therefore cannot be a basis to proceed against Respondent under the Policy.
Neither point is relevant under the Policy.
A complainant has standing under the Policy if it has rights in a trademark anywhere in the world – in Bangladesh, in the U.S.A., in Germany, the UK, Belgium, etc. See Koninkljke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (The Policy does not require that the mark be registered in the country in which the Respondent operates therefore it is sufficient that Complainant can demonstrate a mark in some jurisdiction.).
And this is without regard to the international Class or Classes in which the trademark is registered and the Class or Classes within which the Respondent operates; the issue of trademark classes is relevant to trademark disputes, not disputes under the Policy.
The Panel takes no position and makes no comment about the parties’ respective trademark rights within Bangladesh. The Policy is not concerned with such matters. The Policy single focus is to address the problem of cybersquatting.
Complainant has established the first element of the Policy.
Policy ¶ 4(a)(ii) offers a potential safe harbor to domain name holders.
Complainant has the burden of making a prima facia case that supports the proposition that Respondent does not have rights or legitimate interest in the Disputed Domain, and if Complainant is successful, then the burden shifts to Respondent to establish that it does have rights or legitimate interests in the Disputed Domain Name. If Respondent is successful, then the analysis is over, and the complaint is dismissed. If not, then the analysis progresses to the third element of the Policy. 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”).
Complainant has satisfied its burden.
Complainant asserts that Respondent has no rights or legitimate interests in the Disputed Domain Name because: Respondent is not making a non-commercial fair use of it; Respondent has not been legitimately known by Disputed Domain Name or any variant thereof; Respondent has not licensed by Complainant to use the Complainant’s Trademark; and Respondent is not an authorized vendor or distributor for Complainant. Further, Complainant provides evidence that Respondent’s use of the Disputed Domain Name is in bad faith, which cannot support a bona fide offering of goods and services for purposes of Policy ¶ 4(c)(ii). . See Amazon Technologies, Inc. v. Lin, FA1301001480702 (Forum Feb 26, 2013) (“Respondent’s use of the disputed domain name to offer competing goods or services is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”); see also Acument Intellectual Props., LLC v. Aaron's General Store.com, FA1009001348931 (Forum Nov. 8 2010) (“Such usage improperly leverages the goodwill of the brand name toward the end of selling product in competition with it”); see also Amazon Technologies, Inc. v. Global Service Box Prime S.L., FA1806001791557 (Forum July 4, 2018) (“the fact that Respondent is using the disputed domain name to resolve to an online retail store for electronics that competes with Complainant’s services clearly indicates that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”); see also Amazon Technologies, Inc. v. Naguib, FA1608001688949 (Forum Sept. 16, 2016) (finding that use of <amazonarabmarket.com> for an online retail store was 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)); see also Amazon Technologies, Inc. v. Gawad, FA1611001701073 (Forum Dec. 2, 2016) (finding that use of <amazonmasr.com> to offer offering competing retail services made out a prima facie case that Respondent had no rights or legitimate interests).
Respondent has failed to meet its burden.
Respondent claims that it has the right under the Policy to use the Disputed Domain Name because the Disputed Domain Name merely and truthfully reflects Respondent’s name, which Respondent demonstrates is Amazon Bangladesh Limited. However, Respondent has not provided the necessary evidence to support this claim.
Respondent is correct that Policy ¶ 4(c)(ii) allows a respondent to use a domain name that reflects its own name; this paragraph of the Policy reads in pertinent part:
“Any of the following, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interest to the domain name…you (as an individual, business or other organization) have been commonly known by the domain name…”
However, merely having a duly registered company name is not enough. Respondent must additionally demonstrate that it has in fact been commonly known by its company name. Such a demonstration might be accomplished in any number of ways, including by way of example only, providing evidence about how long the company name has been used, the manner in which the company name has been used, and the places where and the circumstances under which the name has been used. See Gavagai Technology Inc. v. Gavagai, FA0212000135611 (Forum Feb. 3, 2003) (“business name registrations do not, per se, individually or collectively confer or evidence ‘rights or legitimate interests in respect of the domain name’ within the meaning of that expression as it occurs in Policy paragraph 4(a)(ii)”); Microsoft Corp. v. Microsoft Corp., FA1105001390322 (Forum June 17, 2011) (“While the WHOIS information states that the domain name registrant is ‘Microsoft Corporation,’ the Panel is not required to find that Respondent is commonly known by the domain name absent further supporting evidence”); Yoga Works, Inc. v. Arpita, FA0304000155461 (Forum June 17, 2003) (respondent was not commonly known by the disputed domain name for purposes of Policy 4(c)(ii) where respondent presented no “affirmative evidence” that it was commonly known by the disputed name prior to its registration of the domain); and Giant Eagle, Inc. v Giant Eagle / Giant Eagle Inc, FA1410001586562 (Forum Dec. 6, 2014) (declining to find that respondent was commonly known as Giant Eagle where “there is no evidence of any outside association between Respondent and the ‘Giant Eagle Inc’ name beyond Respondent’s own self-serving association”).
Respondent has provided no such evidence.
Respondent argues that it is required by Bangladesh law to use its company name in the Disputed Domain Name, thus Respondent has a legitimate interest in the Disputed Domain Name. This law, Respondent asserts, requires every company to disclose its manufacturer/supplier/service provider’s name in their products/packaging, which Respondent accomplishes by using Respondent’s name in the Disputed Domain Name.
The Panel does not see the connection. The law may require the use of a company name on physical products and/or packaging for physical products, but neither a domain name nor an associated website is either a physical product or packaging for a physical product. If there is more to this law that clearly extends its application to domain names or websites, Respondent has not provided such evidence.
Complainant has established the second element of the Policy.
Policy ¶ 4(b)(iv) reads in pertinent part:
“For purposes of Paraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:… (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site…, by creating a likelihood of confusion with the complaint’s mark as to the source, sponsorship, affiliation, or endorsement of your web site …”
Respondent registered the Disputed Domain Name in bad faith pursuant to Policy ¶ 4(b)(iv).
When Respondent registered the Disputed Domain Name, Respondent’s intention was to offer goods and services on its website in direct competition with Complainant. Respondent’s website includes the following words: “We’re Opening Soon! Get Ready to Experience Quality Shopping and Delivery.” Further, in a document signed by Md. Aman Ullah Chowdhury, Chairman of Amazon Bangladesh Limited, and dated August 20, 2020[ix], Mr. Chowdhury states, among other things: “I have had a vision to establish an E-commerce platform in Bangladesh…” Such intended activities are directly competitive with those of Complainant.
When Respondent registered the Disputed Domain Name, Respondent had actual knowledge of Complainant’s Trademark and intentionally copied it. Complainant’s Trademark is a famous mark as Complainant’s operations are worldwide and Complainant has widely publicized its operation under Complainant’s Trademark. There is no reason to believe that Complainant’s Trademark is less well known in Bangladesh.
Further, there are two aspects of Respondent’s website that could only have been copied from trademarks owned by Complainant.[x] This is not a matter of the propriety or impropriety of this copying, per se, but rather is evidence of Respondent’s knowledge of Complainant, Complainant’s Trademark, and Complainant’s trademark rights for purposes of the Policy. These two aspects of Respondent’s website are first, the use of Respondent’s company name that includes the word “amazon” in combination with the “smile” symbol below the word and running from the “a” to the “z”; this “smile” symbol precisely mimics a significant feature of Complainant’s US registration number 5,078,752.[xi] The use of this “smile” symbol is not necessary to express Respondent’s company name, but it is necessary to closely copy said trademark. Second, the coloration of the second word in Respondent’s company name, “Bangladesh,” and the coloration of the noted “smile” symbol both precisely mimic the coloration of several of Complainant’s other trademarks.[xii] Again, this is not necessary to express Respondent’s company name, but it is necessary to closely copy these trademarks.
Respondent’s use of the Disputed Domain will likely cause confusion with Complainant’s Trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.
It is worth noting that the “confusion” element of Policy ¶ 4(b)(iv) focuses objectively on the likely outcome (likely confusion or not), and not on Respondent’s subjective intent about causing confusion. As such, it is not relevant that Respondent may subjectively believe it is not intending to cause confusion, believing it is entitled to register and use the Disputed Domain Name as a matter of Bangladeshi trademark law, not realizing, perhaps, that the Policy is a source of rights and obligations specifically with respect to domain names that is separate, distinct, and independent from traditional trademark law, whether in Bangladesh or anywhere else.
Respondent is using the Disputed Domain Name in bad faith pursuant to Policy ¶ 4(b)(iv).
The Disputed Domain Name currently directs and resolves to a web site consisting of a landing page[xiii] which reads[xiv]:
Amazon Bangladesh
We’re Opening Soon!
Get Ready to Experience Quality Shopping and Delivery.
112 days, 05 Hours, 05 Mins, 10 Sec
Amazon Bangladesh
This use of the Disputed Domain Name by Respondent is not quite the same as a use in connection with a functioning website, but it is significantly more than what is sometimes referred to as “passive holding”, which describes a situation in which a domain name does not resolve to any web site. Whereas the analysis under the Policy is different for each of these situations, and this difference can lead to different outcomes, in this present case the outcome is the same either way.
As a matter of actual use, the Disputed Domain Name resolves to a landing page which expresses Respondent’s intention to operate a website that will, when functional, compete with the operations of Complainant. This intention is more than mere speculation or an inchoate plan. Respondent presents a countdown clock showing that the website will become operational in somewhat more than 100 days. This is more in the nature of an inevitability, and it is fair to treat it as such. thus, in combination with the other considerations noted above, this establishes a bad faith usage pursuant to Policy ¶ 4(b(iv). See 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”); see also Skype v. Caruso, FA1202001431445 (Forum May 4, 2012) (“Respondent’s actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name further evidences Respondent’s bad faith under Policy ¶ 4(a)(iii)”); see also IMDB.COM, INC. v armin n.s / Netafraz Hosting, FA1410001582698 (Forum Nov. 13, 2014) (“Given the use of Complainant’s own marks and logos in the content of the websites, the Respondent registered and uses the disputed domain names with actual knowledge of Complainant’s rights. As such Respondent has registered and uses all of the domain names in Policy ¶ 4(a)(iii) bad faith”).
As a matter of passive holding, the Panel finds that the Complainant’s Trademark is famous and, based on an analysis of the record as a whole, the Panel cannot reasonably conceive of any use of the Disputed Domain Name by Respondent that would not be in bad faith, thus in combination with the other considerations noted above establishes a bad faith usage pursuant to Policy ¶ 4(b)(iv). See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). See also Fox Media LLC v. Global Investor Media Ltd./ Global Investor Medial Limited, FA 1900503 (Forum August 3, 2020)(finding that the passive holding of the <foxnewsmedia.com> Disputed Domain Name was in bad faith because the Panel could not conceive of a plausible use by the Respondent that would be legitimate.).
The Complainant has established the third element of the Policy.
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-bd.com> domain name be TRANSFERRED from Respondent to Complainant.
Kendall C. Reed, Panelist
Dated: November 2, 2020
[i] Complaint Exhibit I, copies of various trademark registration certificates for various AMAZON trademarks in standard character form, combined form, and design form.
[ii] Complainant Exhibit G, Geek Wire article dated May 21, 2014
[iii] Complainant Exhibit K, screen shot of Respondent’s website to which the Disputed Domain Name resolves
[iv] Exhibit 1 to Respondent’s Additional Submission, copies of various Complainant Bangladeshi trademark registrations and screen shots of a website that shows the status thereof
[v] Exhibit 2 to Respondent’s Additional Submission, list of other company names of companies in Bangladesh that include the word “amazon.”
[vi] Respondent Additional Submission Exhibit 1
[vii] Complainant Second Additional Submission Exhibit 1
[viii] Complainant Additional Submission Exhibit 1, a copy of the GoDaddy Uniform Domain Name Dispute Resolution Policy, which includes the following language: “This Uniform Domain Name Dispute Resolution Policy (the "Policy") has been adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"), is incorporated by reference into your Registration Agreement, and sets forth the terms and conditions in connection with a dispute between you and any party other than us (the registrar) over the registration and use of an Internet domain name registered by you.”
[ix] Complainant Exhibit L
[x] Complainant Exhibit K, a screen shot of Respondent’s website to which the Disputed Domain Name resolves
[xi] Complainant Exhibit I
[xii] Complainant Exhibit I
[xiii] Complainant Exhibit K
[xiv] This is followed by contact information and a copyright notice
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