Amazon Technologies, Inc. v. Visar Pacolli
Claim Number: FA2112001977243
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Visar Pacolli (“Respondent”), Albania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amazontoken.sale>, registered with NameSilo, 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 15, 2021; the Forum received payment on December 15, 2021.
On December 16, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <amazontoken.sale> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2022 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@amazontoken.sale. Also on December 20, 2021, 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 January 17, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. 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
i) Complainant, Amazon Technologies, Inc., is an online shopping platform. Complainant has rights in the AMAZON mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,078,496, Registered Jul. 15, 1997). The <amazontoken.sale> domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark and added the generic word “token” and the “.sale” generic top- level domain (“gTLD”), none of which creates a sufficient distinction.
ii) Respondent does not have rights or legitimate interests in the disputed domain because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s AMAZON mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the disputed domain name to pass itself off as affiliated with Complainant.
iii) Respondent has registered and uses the disputed domain name in bad faith because Respondent uses the disputed domain name to create bad faith attraction for commercial gain. In addition, Respondent’s attempt at a phishing scheme further demonstrates its bad faith. Finally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the AMAZON mark when it registered the domain name, which is further evidence of its bad faith.
B. Respondent
Respondent did not submit a response to this proceeding.
1. The disputed domain name was registered on November 4, 2021.
2. Complainant has established rights in the AMAZON mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,078,496, Registered Jul. 15, 1997).
3. The disputed domain name resolves to a webpage which displays Complainant’s AMAZON mark and logo and promotes “Amazon” cryptocurrency.
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 asserts rights in the AMAZON mark based on registration with the United States Patent and Trademark Office. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides evidence of its registration with the USPTO for the AMAZON mark (e.g., Reg. No. 2,078,496, Registered on July 15, 1997). Therefore, the Panel finds that Complainant has rights in the AMAZON mark under Policy ¶ 4(a)(i).
Complainant contends that the <amazontoken.sale> domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark and added the generic word “token” and the “.sale” gTLD. Domain names which incorporate the entire mark are usually considered confusingly similar while adding a gTLD generally creates no distinction between a complainant’s mark and a disputed domain name under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Further, adding a generic word does not create a sufficient distinction. See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The disputed domain name has added the generic word “token” and the “.sale” gTLD, but these distinctions may not create a sufficient distinction between the mark and the disputed domain name. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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”).
Complainant claims that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and is not associated with Complainant or authorized to use Complainant’s AMAZON mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the guardair.com domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, there is no evidence available in the WHOIS information to suggest that Respondent is known by the disputed domain name and no information suggests Complainant authorized Respondent to use the AMAZON mark. Rather, the WHOIS information lists the registrant of the domain as “Visar Pacolli.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), past panels have found no bona fide offering of goods or services, nor any legitimate noncommercial or fair use where the respondent uses the domain name to pass itself off as affiliated with the complainant. See 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).”). Here, the disputed domain name resolves to a webpage which displays Complainant’s AMAZON mark and logo and promotes “Amazon” cryptocurrency. Further, when an Internet user clicks on the “buy token” button on the resolving webpage, he/she is directed to a fake Amazon sign-in page which also displays Complainant’s mark and logo, further suggesting the webpages are affiliated with Complainant. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent has registered and uses the disputed domain in bad faith because it registered the domain to create bad faith attraction for commercial gain. Registration and use of a disputed domain name which is essentially identical to a complainant’s mark and using that domain name to attempt to benefit financially is evidence of bad faith per Policy ¶ 4(b)(iv). See Sandhills Publishing Company v. sudeep banerjee / b3net.com, Inc., FA 1674572 (Forum June 17, 2016) (finding that the respondent took advantage of the confusing similarity between the <machinerytraderparts.com> domain name and the complainant’s MACHINERY TRADER mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel notes and finds that by using the disputed domain name which is confusingly similar to Complainant’s AMAZON trademark to promote supposed cryptocurrency investments, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s trademark, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Next, Complainant contends that by incorporating Complainant’s famous AMAZON trademark in the disputed domain name and using AMAZON and Complainant’s logos to identify itself, Respondent creates the false impression that its website or services originate with or are endorsed or certified by Complainant. Use of a disputed domain name to pass off as a complainant may be evidence of bad faith per Policy ¶¶ 4(b)(iii) and (iv). See 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), see also Guess? IP Holder L.P. and Guess?, Inc. v. LI FANGLIN, FA 1610067 (Forum Apr. 25, 2015) (finding respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the resolving website to sell the complainant’s products, using images copied directly from the complainant’s website), see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Complainant has provided the Panel with screenshots of the disputed domain names’ resolving webpages that display Complainant’s AMAZON mark and logo and promotes “Amazon” cryptocurrency. Further, when an Internet user clicks on the “buy token” button on the resolving webpage, he/she is directed to a fake Amazon sign-in page which also displays Complainant’s mark and logo, further suggesting the webpages are affiliated with Complainant. Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶ 4(b)(iii) or (iv).
Complainant further argues that Respondent has registered and uses the disputed domain in bad faith because it registered the domain in furtherance of a phishing scheme. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant contends that Respondent uses the name to phish for personal or financial information from Internet users. The Panel recalls that when an Internet user clicks on the “buy token” button on the disputed domain name’s resolving webpage, he/she is directed to a fake Amazon sign-in page which also displays Complainant’s mark and logo. Therefore, the Panel finds that Respondent has registered and uses the disputed domain in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the AMAZON mark prior to registration of the disputed domain name. The Panel infers, due to the fame of Complainant’s mark and the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant’s rights in the AMAZON mark prior to registering the disputed domain name, and thus the Panel finds bad faith registration per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amazontoken.sale> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: January 27, 2022
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