Amazon Technologies, Inc. v. harshit dhingaun
Claim Number: FA1505001619696
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is harshit dhingaun (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <amazonfashionindia.com> and <amazonindiafashion.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 15, 2015; the Forum received payment on May 15, 2015.
On May 18, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <amazonfashionindia.com> and <amazonindiafashion.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 May 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 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@amazonfashionindia.com, postmaster@amazonindiafashion.com. Also on May 20, 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.
A timely Response was received and determined to be complete on May 28, 2015.
Respondent’s timely Additional Submission was received on May 29, 2015. However, Respondent’s Additional Submission was determined to be deficient by the Forum pursuant to ICANN Supplemental Rule 7 as the requisite $400 payment was not furnished. With regard to a failed payment, the panel in Gestion Michel Grisé Inc. v. Calorad, FA 1418522 (Nat. Arb. Forum Jan. 23, 2012) found:
Complainant submitted an Additional Submission . . . prior to the deadline. However, payment was not received until after the deadline and so it has been deemed deficient by the National Arbitration Forum pursuant to Supplemental Rule 7. The Panel finds that since the payment was not timely received but the Additional Submission was filed by the deadline, in the interests of justice, it will be considered.
While the Panel is not required to consider Respondent’s deficient additional submission, in the exercise of discretion and in the interests of justice, we conclude that Respondent’s timely submission should be considered.
On June 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the AMAZON.COM service mark in the operation and marketing of its online retail website, which facilitates the sale of fashion merchandise.
Complainant holds a registration for the AMAZON.COM service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 2,837,138, registered April 27, 2004).
Respondent registered the <amazonfashionindia.com> domain name on February 20, 2015, and the <amazonindiafashion.com> domain name on February 19, 2015.
The domain names are confusingly similar to Complainant’s AMAZON.COM service mark.
Respondent has not been commonly known by either of the domain names.
Complainant has not given Respondent permission to register any variation of the AMAZON.COM mark in connection with domain names.
Respondent is not using the domain names for a bona fide offering of goods or services or for any legitimate noncommercial or fair use.
Instead, Respondent uses the landing pages for each domain name to offer them for sale.
Respondent has also employed the domain names to profit commercially by using them promote its own fashion blog.
Respondent has no rights to or legitimate interests in the domain names.
Respondent knew of Complainant and its rights the AMAZON.COM mark when it registered the domain names.
Respondent registered the domain names within days after the public announcement of Complainant’s sponsorship of India Fashion Week.
Respondent registered and uses the domain names in bad faith.
B. Respondent
In its Response and Additional Submission, Respondent has asserted, among other things, that:
Respondent has not gained any commercial benefit from its use of the domain names, and it has not used them for any commercial activity.
Respondent’s blog does not earn any income from its operation.
Respondent has not used the domain names in bad faith.
In India there are two websites with amazon keywords whose owners are different from Respondent.
(1) the domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the AMAZON.COM service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i)”).
This is true without regard to whether Complainant’s rights in its mark arise from registration in a jurisdiction (here: the United States) other than that in which Respondent resides or does business (here: India). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010), finding that, “USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s domain names <amazonfashionindia.com> and <amazonindiafashion.com> are confusingly similar to the AMAZON.COM service mark. The domain names contain the mark in its entirety, merely adding the geographic descriptor “india” and the generic term “fashion,” which, singly and together, describe aspects of Complainant’s business. These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between a UDRP complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where a respondent added the word “India” to that complainant’s mark); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to a UDRP complainant’s DISNEY mark because it incorporated Complainant’s entire mark and merely added to it two generic terms which described an aspect of that complainant’s business).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006), in which the panel stated:
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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain names which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the either of the domain names <amazonfashionindia.com> and <amazonindiafashion.com>, and that Complainant has not given Respondent permission to register any variation of the AMAZON.COM service mark in connection with domain names. Moreover, the pertinent WHOIS information identifies the registrant of each of the domain names only as “harshit dhingaun,” which does not resemble either of the domain names. On this record, we conclude that Respondent has not been commonly known by the disputed domain names so as to have acquired rights to or legitimate interests in either of them within the contemplation of Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding, under Policy ¶ 4(c)(ii), that without demonstrable evidence to support the assertion that a respondent was commonly known by a contested domain name, that assertion must be rejected).
We next observe that, although Respondent seeks to deny that it has employed the domain names for any profit-making purpose, including the sale of the domain names, the evidence before us amply demonstrates that it has done so, all as alleged in the Complaint. This use of the domain names is 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007), in which it was held, “An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”
See also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), in which the panel found “Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
It is plain from the evidence presented that Respondent knew of Complainant and its rights in the AMAZON.COM mark when it registered the contested <amazonfashionindia.com> and <amazonindiafashion.com> domain names. This stands as proof of Respondent’s bad faith in registering the domain names. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (finding, under Policy ¶ 4(a)(iii), that a UDRP respondent registered a domain name in bad faith after concluding that that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name.")
And we are persuaded by the evidence that, as alleged in the Complaint, Respondent registered the contested domain names within days after the announcement of Complainant’s sponsorship of India Fashion Week, thus demonstrating opportunistic bad faith in the registration and subsequent use of the domains. See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that a UDRP respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration” and thus bad faith under Policy ¶ 4(a)(iii)).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <amazonfashionindia.com> and <amazonindiafashion.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 10, 2015
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