Amazon Technologies, Inc. v. Sidra Aziz
Claim Number: FA2012001925185
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by David J. Diamond of Richard Law Group, Inc., Texas, USA. Respondent is Sidra Aziz (“Respondent”), UAE.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amazon-deals.co>, registered with GoDaddy.com, LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 15, 2020; the Forum received payment on December 15, 2020.
On December 17, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <amazon-deals.co> 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 December 21, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2021 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-deals.co. Also on December 21, 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 December 25, 2020.
On December 29, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in AMAZON and submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because it has no trademark rights; is not known by the domain name; and the domain name has not been used in respect of a bona fide offering of goods or services.
Complainant alleges that Respondent registered the disputed domain name in bad faith having knowledge of Complainant and its trademark. Further, that Respondent used the domain name in bad faith since it resolved to a webpage displaying Complainant’s trademark and offering competitive services thereunder.
B. Respondent
The Response does not address the Policy in any orderly manner but in so far as it bears on the issues to be decided, the Panel has considered it as part of the Discussion below.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a well-known online retail service provider, doing business under the name AMAZON;
2. Complainant owns, inter alia, United States Patent and Trademark Office (“USPTO”) Reg. No. 3,868,195, registered October 26, 2010, for the mark, AMAZON; and
3. the disputed domain name was registered on December 3, 2019 and resolves to a website displaying Complainant’s trademark and purporting to offer retail shopping services of the kind provided by Complainant.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry - a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)). Complainant therefore has rights since it provides proof of its registration of the trademark with the USPTO, a national trademark authority. That finding is not contested by Respondent.
For the purposes of comparison of the disputed domain name with the trademark, it is well established that the ccTLD, “.co”, can be disregarded (see, for example, CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (“The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”)). The disputed domain name takes the trademark to which it hyphenates the descriptive term “deals”. These additions are of no distinctive value (see, for example, Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark).
Respondent does not address these matters but instead submits that:
… to promote my items … you can clearly see that I mention “amazon wearhouse deals” (sic) and it’s a lot different with original amazon trade mark and logo and secondly on top my sale email is sales@souqdeals.online so how can I be using amazon trade mark ?
Those submissions have no relevance to paragraph 4(a)(i) of the Policy which is only concerned with the question of whether the disputed domain name is confusingly similar to Complainant’s trademark. The Panel finds that it is and so finds that Complainant has established the first element of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating that it has those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WhoIs information listed a privacy service as the domain name registrant but in consequence of these proceedings the Registrar disclosed the underlying domain name holder as “Sidra Aziz”. Accordingly, there is no suggestion that Respondent might be commonly known by the domain name and there is no indication that Respondent has any trademark rights of its own in a corresponding term.
Complainant contends that Respondent has not used the domain name in connection with a bona fide offering of goods or services and provides evidence that the domain name resolves to a website offering essentially the same retail services as those provided by Complainant. That website also copies Complainant’s logo-style trademark for AMAZON.
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name (see, for example, Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”); Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”)).
The onus passes to Respondent to rebut that case and all that might be distilled from the Response of remote relevance are the assertions that Respondent:
“spend a lot on this domain and [has been] using it for more than a year … [Respondent] don’t know why [Complainant is] making this a big issue now. … I manage this domain for more than 1 year and taking domain from me with false allegation will be injustice to me.”
It barely requires explanation here that whatever time and money may have been spent on activity which so blatantly offends a third party’s trademark rights will not give rise to rights or a legitimate interest in the disputed domain name under the Policy. The alleged “false allegation” is inexplicable and the asserted “injustice” seems to be misconceived. Further, the Panel notes that Respondent is so brazen as to compound its illegitimate action with an offer to sell the domain name to Complainant.
The Panel finds that Respondent has failed to rebut the prima facie case against it and so finds that Complainant has established the second element of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith. Further guidance is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that use of the domain name falls squarely under paragraph 4(b)(iv) above. The Panel has already found the domain name to be confusingly similar to the trademark. The domain name will create a false impression of an online location either established by Complainant or having an affiliation with Complainant. The resolving website clearly exists for Respondent’s commercial gain. The third element of the Policy is therefore satisfied (see, for example, Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business).
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-deals.co> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: January 4, 2021
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