Amazon Technologies, Inc. v. steve souders / pa1pa1
Claim Number: FA1503001610740
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is steve souders / pa1pa1 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue are <amazonprom.com>, <amazonpromdresses.com> and <amazondresses.org>, registered with Name.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 23, 2015; the Forum received payment on March 23, 2015.
On March 23, 2015, Name.com, Inc. confirmed by e-mail to the Forum that the <amazonprom.com>, <amazonpromdresses.com> and <amazondresses.org> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 March 25, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2015 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@amazonprom.com, postmaster@amazonpromdresses.com, and postmaster@amazondresses.org. Also on March 25, 2015, 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 April 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <amazonprom.com>, <amazonpromdresses.com> and <amazondresses.org> domain names are confusingly similar to Complainant’s AMAZON mark.
2. Respondent does not have any rights or legitimate interests in the <amazonprom.com>, <amazonpromdresses.com> and <amazondresses.org> domain names.
3. Respondent registered and uses the <amazonprom.com>, <amazonpromdresses.com> and <amazondresses.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the well-known AMAZON mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,832,943, registered April 13, 2004) and China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 1,427,682, registered July 28, 2010, respectively).
Respondent registered <amazonprom.com> on July 7, 2014, and uses it to promote products in competition with Complainant. Respondent registered <amazonpromdresses.com> and <amazondresses.org> on April 12, 2012, and fails to make an active use of these domain names.
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.”).
The Panel finds that Complainant’s USPTO and SAIC registrations are sufficient to establish Complaint’s rights in the AMAZON mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s SAIC was sufficient to establish rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <amazonprom.com>, <amazonpromdresses.com> and <amazondresses.org> domain names include Complainant’s AMAZON mark along with the generic words “prom” and/or “dresses,” and a generic top-level domain (“gTLD”). Previous panels have found that the addition of generic words and a gTLD does not adequately distinguish a disputed domain name from a complainant’s mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, this Panel finds that the disputed domain names are confusingly similar to Complainant’s AMAZON mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 asserts that Respondent has no rights or legitimate interests in the disputed domain names, and is not commonly known by the disputed domain names. The WHOIS record for the disputed domain names list ”steve souders / pa1pa1” is the alleged registrant of record. Further, Complainant asserts that it has never given permission for Respondent to use Complainant’s trademark. Thus, the Panel finds that Complainant has established Respondent’s lack of rights to the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent’s lack of rights or legitimate interests in the <amazonprom.com>, <amazonpromdresses.com> and <amazondresses.org> domain names is made evident by Respondent’s failure to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant contends that Respondent uses the <amazonprom.com> domain name to sell products that compete with Complainant’s business. Previous panels have found that a respondent’s use of a complainant’s mark to sell competing products or services is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). The Panel finds that Respondent’s use of the <amazonprom.com> domain name to sell competing goods is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant further claims that Respondent has failed to make an active use of the <amazonpromdresses.com> and <amazondresses.org> domain names, demonstrating Respondent’s lack of rights or legitimate interests in these domain names. Previous panels have agreed that a respondent’s inactive holding of a disputed domain name does not give rise to a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark 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)). Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the <amazonpromdresses.com> and <amazondresses.org> domain names pursuant to Policies ¶¶ 4(c)(i) or 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s registration and use of the <amazonprom.com> domain name disrupts Complainant’s business by diverting Internet users to Respondent’s <amazonprom.com> website, where they can purchase products that compete directly with Complainant’s products. Past panels have found that competitive use of a disputed domain name is indicative of bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Thus, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Respondent uses the <amazonprom.com> domain name to intentionally attract, for commercial gain, Internet users through a likelihood of confusion with Complainant. Complainant has demonstrated that Respondent intends to cause confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website, for Respondent’s benefit. Previous panels have found bad faith registration and use where a respondent uses a mark confusingly similar to a complainant’s to sell products that compete with a complainant’s products or services. See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market). The Panel finds that Respondent uses the <amazonprom.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent had knowledge of Complainant’s rights in the AMAZON mark when it registered the disputed domain name. Complainant argues that Respondent must have known of Complainant’s mark, as Respondent sells similar products to consumers under Complainant’s mark. Further, Complainant asserts that it is inconceivable that Respondent was not familiar with Complainant’s AMAZON mark when it registered the disputed domain names. The Panel agrees and finds that, due also to the fame of Complainant’s AMAZON mark, Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”); see also Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith).
Respondent inactively holds the <amazonpromdresses.com> and <amazondresses.org> domain names, which is further evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
The Panel finds that Complainant has satisfied 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 <amazonprom.com>, <amazonpromdresses.com>, and <amazondresses.org> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 21, 2015
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