Amazon Technologies, Inc. v. TerryPhilip / N/A
Claim Number: FA1402001543931
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is TerryPhilip / N/A (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amazon-gift-card.org>, 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 17, 2014; the National Arbitration Forum received payment on February 17, 2014.
On February 18, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <amazon-gift-card.org> 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 February 20, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 2014 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-gift-card.org. Also on February 20, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 19, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the <amazon-gift-card.org> domain name was registered on June 28, 2012.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant states that it uses the AMAZON mark in a wide range of Internet media, but primarily in its operation of a website for the sale of consumer goods. Complainant has registered the AMAZON mark with the USPTO (e.g. Reg. No. 2,832,943 registered on Apr. 13, 2004). In Scripps Networks, LLC v. chen wenjie, FA 1523127 (Nat. Arb. Forum Nov. 12, 2013) the panel found that USPTO registration established the complainant’s Policy ¶ 4(a)(i) rights in the mark, despite the fact that the parties resided in different countries. The Panel here agrees that Complainant has rights in the AMAZON mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <amazon-gift-card.org> domain name is confusingly similar to the AMAZON mark. Complainant cites to Am. Express Mktg. & Dev. Corp. v. Crown Ins. Partners, FA0904001255638 (Nat. Arb. Forum May 13, 2008) for the proposition that hyphens, generic top-level domains, and the phrase “gift cards” do not distinguish an Internet domain name. The Panel concludes that much in the way that the <american-express-gift-cards.com> domain name was confusingly similar in Am. Express Mktg. & Dev. Corp. v. Crown Ins. Partners, so too is <amazon-gift-card.org> confusingly similar to the AMAZON mark under 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the <amazon-gift-card.org> domain name. Complainant notes that Respondent is identified by the WHOIS information as “TerryPhilip / N/A.” Complainant avers that Respondent is not affiliated with, licensed by, or authorized by Complainant to use the AMAZON mark in domain names. The Panel agrees that there is no basis in the record for finding that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”).
Complainant next claims that Respondent is using the <amazon-gift-card.org> domain name to suggest it is an official representative of Complainant and then purports to offer free gift cards of any amount to consumers. Complainant argues that Respondent is likely impersonating Complainant so that it may obtain personal information from Complainant’s customers. The Panel agrees that there is nothing bona fide or legitimate about using the disputed domain name to acquire consumers’ personal information through deception. See, e.g., Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant also claims that Respondent is without rights or interests in the domain name because Respondent hosts advertisements to competing businesses through the <amazon-gift-card.org> domain name’s website. The Panel takes note that the domain name evidently resolves to a website listing hyperlinks to various third-party websites. See Compl., at Attached Ex. N. In Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) the panel found that there was no Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, when the domain name was used in connection with commercial hyperlink advertisements. The Panel here likewise concludes that Respondent’s use of commercial click-through hyperlinks defeats any rights pursuant to Policy ¶¶ 4(c)(i), (iii).
Complainant next claims that Internet users that click-through to retrieve a gift card through the <amazon-gift-card.org> domain name are subjected to having their electronic devices infected with malicious software. Complainant explains that its representative was only able to avoid Respondent’s malicious software by having adequate anti-virus software running when visiting the <amazon-gift-card.org> domain name. The Panel notes that there is evidence suggesting that the domain name is being used to shuttle Internet users to websites wherein the user’s electronic device is accosted by malicious software and other computer viruses. See Compl., at Attached Ex. N. The Panel finds that Respondent’s decision to associate the <amazon-gift-card.org> domain name with malicious software undermines any Policy ¶ 4(a)(ii) right or legitimate interest that Respondent may claim to have in the domain name. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
Complainant claims that Respondent seeks to profit off the likelihood of confusion that will arise when Internet users see the AMAZON mark and offers of AMAZON-brand gift cards and assume that they will be acquiring gift cards (or other goods) from Complainant or its representatives. Complainant states that the consumer is instead subjected to competing advertisements, among other things. The Panel agrees that Respondent’s use of commercial advertisements (presumably so that Respondent may gain advertising revenue) implies Policy ¶ 4(b)(iv) bad faith, as Internet users may see offers of free AMAZON gift cards and naturally assume that Complainant or its affiliates are behind the sponsored/advertised goods that resolve from the domain name’s website. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
Complainant argues that bad faith is apparent through Respondent’s decision to lure Internet users with an offer of AMAZON gift cards only to bait-and-switch the Internet users by forcibly installing malicious software onto the user’s device. See Compl., at Attached Ex. N. In Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) the panel found Policy ¶ 4(a)(iii) bad faith when the domain name was ultimately being used to spread malicious software onto the Internet users’ electronic devices. The Panel likewise infers Policy ¶ 4(a)(iii) bad faith through Respondent’s conduct.
Complainant next argues that Respondent had to have known of Complainant’s rights in the AMAZON mark prior to the registration of the <amazon-gift-card.org> domain name. Complainant bases this on the fact that Respondent’s only use of the domain name is to misrepresent that it has official ties to Complainant and is an authorized user of the AMAZON mark. The Panel agrees that Respondent’s use of Complainant’s own marks in marketing the <amazon-gift-card.org> domain name’s website creates an inference as to Respondent Policy ¶ 4(a)(iii) bad faith registration through Respondent’s registration of the domain name with evident knowledge of Complainant’s marks. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
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-gift-card.org> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: April 1, 2014
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