Amazon Technologies, Inc. v. Robert Nichols
Claim Number: FA1609001693499
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Robert Nichols (“Respondent”), represented by William J. Hughes of Cooper Levenson, P.A., New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <amazonvehicles.com> and <amazoncarsandtrucks.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he 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.
Daniel B. Banks, Jr., as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 13, 2016; the Forum received payment on September 13, 2016.
On September 13, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <amazonvehicles.com> and <amazoncarsandtrucks.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 September 13, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 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@amazonvehicles.com, postmaster@amazoncarsandtrucks.com. Also on September 13, 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.
A timely Response was received and determined to be complete on October 7, 2016.
Complainant’s Additional Submission was received on October 12, 2016 and determined to be in compliance with Forum’s Supplemental Rule 7 on October 13, 2016.
On October 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Daniel B. Banks, Jr., 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant registered the AMAZON.COM mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,559,936, registered Apr. 9, 2002) (For: “Providing a searchable on-line database featuring goods and services of others in the field of finances, banking, real estate and vehicles, in class 36 . . . .”) (emphasis added). Respondent’s <amazonvehicles.com> and <amazoncarsandtrucks.com> are confusingly similar as they incorporate the AMAZON.COM mark entirely while adding either the generic term “vehicle” or the generic phrase “cars and trucks.”
Respondent has no rights or legitimate interests in <amazonvehicles.com> and <amazoncarsandtrucks.com>. The WHOIS identifies “Robert Nichols” as registrant. Respondent is not affiliated with Complainant, nor does it hold any license to use any of Complainant’s marks. Further, Respondent does not use <amazonvehicles.com> and <amazoncarsandtrucks.com> in connection with any bona fide offering of goods or services or any legitimate noncommercial or fair use because they are parked at a “website coming soon” page. Respondent answered Complainant’s offer to purchase <amazonvehicles.com> and <amazoncarsandtrucks.com> for out-of-pocket costs with a counteroffer of $75,000 for both.
Respondent registered and used <amazonvehicles.com> and <amazoncarsandtrucks.com> in bad faith. Respondent’s offer for sale of the domain names in the amount of $75,000 suggests bad faith registration and use under Policy ¶ 4(b)(i). Respondent registered the disputed domains within days of widespread auto industry and mainstream press regarding Complainant’s vehicle-related services, just two days after Complainant’s Amazon Vehicles car research destination and automotive community site was first publically visible, and just hours before the service was officially announced. This reflects opportunistic bad faith. Respondent has also registered and used <amazonvehicles.com> and <amazoncarsandtrucks.com> with actual knowledge.
B. Respondent
Complainant is not in the business of retail sales of cars and trucks. Complainant does not possess a license to sell automobiles, and the mere sale of auto parts cannot translate to the business of selling vehicles.
Respondent holds licenses in the retail sales of automobiles in New Jersey and Delaware. Respondent has been a car dealer for nearly 30 years, and has a legitimate interest in establishing a retail automobile sales business utilizing the name Amazon so long as it does not create confusion in other sectors that Complainant legitimately does business.
Respondent has not acted in bad faith. Negotiations in the litigation context are generally inadmissible. There can be no bad faith ultimately because Respondent purports to operate in an industry in which Complainant does not.
C. Additional Submissions
Respondent has not submitted any evidence to support its alleged business purpose of selling automobiles. Respondent has not denied its prior knowledge of actual knowledge, or Complainant’s opportunistic bad faith allegation.
Complainant is involved in vehicle-related commercial activities. Respondent does not deny that Complainant offers these services. Respondent’s assertion that only licensed car dealers could claim that the domain names are confusingly similar is neither the law nor the Policy. Further, vehicle dealers commonly deal in vehicle parts. This commercial overlap enhances confusion.
Respondent may have generated fictional, post-hoc excuses for the selection of <amazonvehicles.com> and <amazoncarsandtrucks.com>. Respondent had multiple opportunities prior to the proceeding to represent the intended business of the domain names, but did not do so. Respondent also provides no evidence of such a business endeavor now.
Further, Respondent’s demand of $75,000 exemplifies the essence of bad faith the Policy is designed to prevent.
1 - The domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights.
2 - Respondent has no rights or legitimate interests in respect of the domain names.
3 - The domain name have been registered and used 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.
Complainant registered the AMAZON.COM mark with the USPTO (e.g., Reg. No. 2,559,936, registered Apr. 9, 2002) (For: “Providing a searchable on-line database featuring goods and services of others in the field of finances, banking, real estate and vehicles, in class 36 . . . .”) (emphasis added). Panels have taken a consensus view that USPTO registrations show rights per Policy ¶ 4(a)(i). See Dell Inc. v. Rino Manangkalangi, FA 1626784 (Forum Aug. 5, 2015) (holding that Complainant has rights in the ALIENWARE trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO). This Panel finds that Complainant has presented sufficient evidence to support rights in the AMAZON.COM mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <amazonvehicles.com> and <amazoncarsandtrucks.com> are confusingly similar as they incorporate the AMAZON.COM mark entirely while adding either the generic term “vehicle” or the generic phrase “cars and trucks.” Complainant also argues that while it offers ancillary products within the automobile industry, the addition of these terms actually serve to enhance confusing similarity. Panels have considered the addition of such terms to fail in overcoming a finding of confusing similarity. See Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). Therefore, the Panel finds that Respondent’s <amazonvehicles.com> and <amazoncarsandtrucks.com> are confusingly similar to the AMAZON.COM mark under Policy ¶ 4(a)(i).
The Panel finds that the Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Therefore, 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 (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 (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 <amazonvehicles.com> and <amazoncarsandtrucks.com>. The WHOIS identifies “Robert Nichols” as registrant. Complainant also notes that Respondent is not affiliated with Complainant, nor does it hold any license to use any of Complainant’s marks. Panels have considered these arguments as persuasive in deciding whether a respondent is commonly known by disputed domain names. 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). Respondent has not contested that it has ever been commonly known by <amazonvehicles.com> and <amazoncarsandtrucks.com>. The Panel finds the WHOIS identification and lack of affiliation/authorization with Complainant as persuasive in determining a lack of rights or legitimate interests under Policy ¶ 4(c)(ii).
Further, Complainant argues that Respondent does not use <amazonvehicles.com> and <amazoncarsandtrucks.com> in connection with any bona fide offering of goods or services or any legitimate noncommercial or fair use because they are parked at a “website coming soon” page. Panels have agreed that failure to make any active use of a disputed domain cannot indicate rights and legitimate interests. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Therefore, while the disputed domains resolve to inactively held webpages, the Panel finds that there has been no use that may prove Respondent has rights or legitimate interests.
In addition, Complainant notes that Respondent has answered Complainant’s offer to purchase <amazonvehicles.com> and <amazoncarsandtrucks.com> for out-of-pocket costs with a counteroffer of $75,000 for both. Respondent does not dispute this. Panels have considered exorbitant offers to sell disputed domain names as a further indication of a lack of a bona fide purpose. See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“The Panel finds Respondent’s willingness to sell this <perifacts.com> domain name in excess of out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name.”).
Complainant also notes that Respondent has made unsupported allegations of being in the automotive industry and has applied this precedent to support its argument: Microsoft Corp. and Skype v. M-Style / Morgun, FA1303001491620 (Forum May 10, 2013) (awarding transfer in spite of Respondent’s claims that <skypeclubs.com> was an abbreviation for “SKY PEople Clubs”). Respondent has offered no evidence supporting its assertions. The Panel finds that Respondent has not met its prima facie burden.
Based on the above, this Panel finds that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Complainant argues that Respondent registered and used <amazonvehicles.com> and <amazoncarsandtrucks.com> in bad faith. First, Complainant argues that Respondent’s offer for sale of the domain names in the amount of $75,000 suggests bad faith registration and use under Policy ¶ 4(b)(i). In Hard Rock Café International (USA), Inc. v. Gameday Tickets, FA1202001428106 (Forum Mar. 20, 2012), the panel found that the respondent’s offer to sell the disputed domain name to the complainant was evidence that the respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i), regardless of that fact that Complainant made the first offer. Similarly, while Respondent has replied to Complainant’s offer—requesting $75,000—the Panel finds, in accordance with Gameday Tickets, that Respondent has merely registered and used the domain names for the purpose of selling them to Complainant for an excessive profit, indicating bad faith under Policy ¶ 4(b)(i).
Complainant next argues that Respondent registered the disputed domains within days of widespread auto industry and mainstream press regarding Complainant’s vehicle-related services, just two days after Complainant’s Amazon Vehicles car research destination and automotive community site was first publically visible, and just hours before the service was officially announced. Panels have agreed this type of behavior reflects opportunistic bad faith. See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website). This Panel considers the timing of Respondent’s registrations of the disputed domain names to fall under the purview of what has previously been considered as “opportunistic bad faith". This is considered evidence of bad faith registration and use per Policy ¶ 4(a)(iii).
Finally, Complainant contends that Respondent has also registered and used <amazonvehicles.com> and <amazoncarsandtrucks.com> with actual knowledge. Respondent has not disputed this contention. Amazon Technologies, Inc. v. Souders, FA1503001610740 (Forum Apr. 21, 2015) (finding it inconceivable that Respondent was not familiar with Complainant’s AMAZON mark and that “actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii)). This panel is allowed to draw reasonable inferences from the evidence presented. If Respondent has been in the auto business or any other business for over 30 years as he asserted, it is truly inconceivable that he did not actually know of Amazon's website and business interests. Accordingly, this Panel finds that Respondent had actual knowledge of Complainant when registering and using the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amazonvehicles.com> and <amazoncarsandtrucks.com> domain names be TRANSFERRED FROM RESPONDENT TO COMPLAINANT.
Daniel B. Banks, Jr., Panelist
Dated: October 20, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page