Amazon Technologies, Inc. v. Rajneesh kumar
Claim Number: FA1602001659580
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Rajneesh kumar (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <amazonechohelp.com> and <amazonechosetup.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 known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 4, 2016; the Forum received payment on February 4, 2016.
On February 4, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <amazonechohelp.com> and <amazonechosetup.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 February 5, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2016 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@amazonechohelp.com, postmaster@amazonechosetup.com. Also on February 5, 2016, 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 March 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant uses the AMAZON ECHO mark in connection with its business selling voice-controlled devices consumers can use to gather information. Complainant has registered the AMAZON ECHO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,760,324, registered June 23, 2015), which demonstrates rights in the mark. See Compl., at Attached Ex. L. Respondent’s <amazonechohelp.com> and <amazonechosetup.com> domain names are confusingly similar to the AMAZON ECHO mark as they incorporate the mark in its entirety while adding the generic words “help” and “setup,” and the general top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <amazonechohelp.com> and <amazonechosetup.com> domain names. Respondent is not commonly known by the domain names. Further, Respondent is making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the domain name. Rather, the domain name resolves to a website that Respondent is attempting to pass off as belonging to Complainant and to sell competing services. See Compl., at Attached Ex. M and O.
Respondent has registered and used the <amazonechohelp.com> and <amazonechosetup.com> domain names in bad faith. Respondent has a pattern of bad faith registration and use as evidenced by the multiple domain name registrations at issue in this proceeding. Further, Respondent’s use of the website serves as a disruption of Complainant’s legitimate business purposes. As argued above, Respondent passes itself off as Complainant to create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website to commercially gain in violation of Policy ¶ 4(b)(iv). Finally, it is inconceivable that Respondent registered and used the <amazonechohelp.com> and <amazonechosetup.com> domain names without actual and/or constructive knowledge of the AMAZON ECHO mark and Complainant’s rights in the mark, further evincing bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a prominent United States company that is one of the world’s largest online retailers, offering a broad range of goods and service within the United States and internationally.
2. Complainant has trademark rights in the AMAZON ECHO mark by virtue of its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,760,324, registered June 23, 2015).
3.Respondent registered the <amazonechohelp.com> and <amazonechosetup.com> domain names on August 19, 2015.
4.Respondent has caused the domain names to resolve to a website which Respondent is attempting to pass off as belonging to Complainant and to sell services competing with those of 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.
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 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 second issue that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s AMAZON ECHO mark. Complainant argues that Respondent’s <amazonechohelp.com> and <amazonechosetup.com> domain names are confusingly similar to the AMAZON ECHO mark as they incorporate the mark in its entirety, while adding the generic words “help” and “setup,” and the gTLD “.com.” Panels have found such alterations to marks to be insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel therefore finds that Respondent’s <amazonechohelp.com> and <amazonechosetup.com> domain names are confusingly similar to the AMAZON ECHO mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s AMAZON ECHO mark and to use it in its domain names and has simply added the generic words ““help” and “setup”;
(b) Respondent registered the disputed domain names on August 19, 2015;
(c) Respondent has caused the domain names to resolve to a website, which Respondent is attempting to pass off as belonging to Complainant and to sell services competing with those of Complainant;
(d) Respondent registered and used the disputed domain names without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <amazonechohelp.com> and <amazonechosetup.com> domain names. Complainant submits in that regard that Respondent is not commonly known by the disputed domain names. The Panel notes that the WHOIS information lists “Rejneesh kumar” as registrant. The Panel also notes that Respondent has failed to submit a response in this proceeding. Complainant submits it has not given Respondent permission to use its AMAZON ECHO mark. Therefore, in light of the available evidence, the Panel agrees that there is no basis to find Respondent commonly known by the disputed domain names. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);
(f) Further, Complainant argues that Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <amazonechohelp.com> and <amazonechosetup.com> domain names. Rather, Complainant contends that the domain names resolve to websites carrying Complainant’s logo and images and marketing materials copied from Complainant’s website. See Compl., at Attached Ex. M. After Complainant filed a complaint, Respondent represented that the title of the website would be changed. Complainant contends that as of February 3, 2016, the website was changed, but still contains “Amazon” and “Amazon Echo Help,” as well as copyrighted materials owned by Complainant. See Compl., at Attached Ex. O. Complainant further alleges that Respondent informs consumers calling Respondent’s toll free number listed on Respondent’s website that “this is Amazon technical support.” Complainant further contends that Respondent’s site promotes Respondent’s fee-based technical support services for Complainant’s products, in direct competition of Complainant’s own support service. Past Panels have found a respondent’s use of a complainant’s marks either to pass itself off as the complainant or to sell competing services not to be a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services). Therefore, the Panel finds that Respondent has no rights or legitimate interests in the domain names under Policy ¶¶ 4(c)(i) and (iii).
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 names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, the complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent has a pattern of domain name misuse as evidenced by Respondent’s current and prior holding of domain names containing the trademarks of famous brands such as <rokucom.com>, <applehelpsupport.com>, and <aolmailhelp.com>. See Compl., at Attached Ex. R and Q. Past Panels have found that a respondent’s registration of multiple names against a complainant may be evidence of a pattern of conduct showing bad faith. See YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark). The Panel finds a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii) based on Respondent’s registration of the two domain names incorporating Complainant’s AMAZON ECHO mark in this case.
Secondly, Complainant contends that Respondent’s registration and subsequent use of the <amazonechohelp.com> and <amazonechosetup.com> domain names serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(a)(ii) because of Respondent’s use of the website to promote its competing technical support services. Panels have found that where a respondent has purported to divert Internet users to a competing website related to a complainant’s legitimate business, such use constitutes bad faith disruption 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).”). Therefore, the Panel finds that Respondent’s <amazonechohelp.com> and <amazonechosetup.com> domain names constitute bad faith under Policy ¶ 4(b)(iii).
Thirdly, Complainant argues that Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Complainant contends that Respondent registered the domain names in order to profit from users looking for Complainant’s site who find Respondent’s similar site and are then prompted to pay for technical support for Complainant’s products. The Panel agrees with Complainant and holds that Internet user confusion which subsequently results in the redirection to Respondent’s site with options to purchase technical support for Complainant’s products constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Fourthly, Complainant also contends that in light of the fame and notoriety of Complainant's AMAZON ECHO mark, it is inconceivable that Respondent could have registered the <amazonechohelp.com> and <amazonechosetup.com> domain names without actual and/or constructive knowledge of Complainant's rights in the mark. Complainant further contends that Respondent’s use of images and logos from Complainant’s site on its own site demonstrates Respondent had actual knowledge of Complainant’s rights in the mark. The Panel here finds that arguments of bad faith based on constructive notice do not generally succeed. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Finally, having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration and retention of the disputed domain names using the AMAZON ECHO mark, Respondent registered and used the domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amazonechohelp.com> and <amazonechosetup.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Neil Anthony Brown, Q.C.
Panelist
Dated: March 3, 2016
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