Amazon Technologies, Inc. v. Wael Abdel Gawad / TOP GROUP
Claim Number: FA1611001701073
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Wael Abdel Gawad / TOP GROUP (“Respondent”), El Salvador.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <amazonmasr.com>, <amazonmasr.info>, <amazonmasr.net>, <amazonmasr.org>, and <amazonmasr.tv>, 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 November 2, 2016; the Forum received payment on November 2, 2016.
On November 3, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that <amazonmasr.com>, <amazonmasr.info>, <amazonmasr.net>, <amazonmasr.org>, and <amazonmasr.tv> 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 November 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 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@amazonmasr.com, postmaster@amazonmasr.info, postmaster@amazonmasr.net, postmaster@amazonmasr.org, and postmaster@amazonmasr.tv. Also on November 7, 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 November 30, 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 has rights in the AMAZON mark pursuant to its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,832,943, registered Apr. 13, 2004). See Compl., at Attached Ex. K. Respondent’s <amazonmasr.com>, <amazonmasr.info>, <amazonmasr.net>, <amazonmasr.org>, and <amazonmasr.tv> are confusingly similar to the AMAZON mark because they each incorporate the mark fully and without alteration, and merely add the term “masr” (a geographic reference to Egypt (see Compl., at Attached Ex. M (Wikipedia page))), and a generic top-level domain (“gTLD”)—“.net,” “.com,” “.info,” or “.org”—or a country-code top-level domain (“ccTLD”) “.tv.”
Respondent has no rights or legitimate interests in <amazonmasr.com>, <amazonmasr.info>, <amazonmasr.net>, <amazonmasr.org>, and <amazonmasr.tv>. Respondent is not commonly known by the domain names per the WHOIS of record, and is not affiliated with Complainant. See Compl., at Attached Ex. A (WHOIS). Furthermore, Respondent’s <amazonmasr.com> domain name resolves to an online retail store offering product categories competing with Complainant, as well as competitors such as Neiman Marcus and Frys.com. See Compl., at Attached Ex. N. Respondent also copied Complainant’s website and promotes its VISA card. See Compl., at Attached Ex. O. Respondent’s landing page also uses a copy of Complainant’s cart icon. See Compl., at Attached Exs. B, N. Respondent has also promoted its site using logos that incorporate the Amazon smile and which are derived from and confusingly similar to the Amazon Logos. See Compl., at Attached Ex. P. This adoption of Complainant’s marks, graphics, and derivative/knockoff logos to promote its competitive online retail services constitutes passing off and is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
In addition, the remaining <amazonmasr.info>, <amazonmasr.net>, <amazonmasr.org>, and <amazonmasr.tv> are inactive. See Compl., at Attached Ex. Q. This is also not representative of a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and used <amazonmasr.com>, <amazonmasr.info>, <amazonmasr.net>, <amazonmasr.org>, and <amazonmasr.tv> in bad faith. Respondent’s passing off behavior, promoting competing online marketplaces using Complainant’s mark constitutes bad faith disruption under Policy ¶ 4(b)(iii) as well as attraction for commercial gain per Policy ¶ 4(b)(iv). In addition, Respondent registered and used all domain names with actual knowledge, given the fame associated with the AMAZON mark and the nature of Respondent’s use of <amazonmasr.com>. Lastly, Respondent’s inactive holding of <amazonmasr.info>, <amazonmasr.net>, <amazonmasr.org>, and <amazonmasr.tv> also constitutes bad faith under Policy ¶ 4(a)(iii).
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 products and services, namely books initially, but subsequently expanded to many other products and services.
2. Complainant has trademark rights in the AMAZON mark pursuant to its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,832,943, registered Apr. 13, 2004).
3. Respondent registered the disputed domain names on the following dates.
<amazonmasr.com>............................................................... March 6, 2016;
<amazonmasr.info>................................................................ June 13, 2016;
<amazonmasr.net>................................................................. June 13, 2016;
<amazonmasr.org>................................................................. June 13, 2016; and
<amazonmasr.tv>.................................................................... June 13, 2016.
4. Respondent is not commonly known by the domain names, there is no evidence that Respondent has a right or legitimate interest in them and, in addition,<amazonmasr.com> resolves to an online retail store offering product categories competing with 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 (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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant claims it has rights in the AMAZON mark pursuant to its registration of the mark with the USPTO (Reg. No. 2,832,943, registered Apr. 13, 2004). USPTO registrations are prima facie evidence of rights under Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). Therefore, the Panel finds that Complainant has established trademark rights in the AMAZON mark for the purposes of Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s AMAZON mark. Respondent’s <amazonmasr.com>, <amazonmasr.info>, <amazonmasr.net>, <amazonmasr.org>, and <amazonmasr.tv> are confusingly similar to the AMAZON mark because they each incorporate the mark fully and without alteration, and merely add the term “masr” (a geographic reference to Egypt, and a gTLD—“.net,” “.com,” “.info,” or “.org”—or a ccTLD “.tv.” Adding geographic terms, gTLDs, or ccTLDs has not been regarded as sufficient to distinguish domain names from marks incorporated within them. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). Accordingly, the Panel finds that Respondent’s <amazonmasr.com>, <amazonmasr.info>, <amazonmasr.net>, <amazonmasr.org>, and <amazonmasr.tv> domain names are confusingly similar to the AMAZON 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 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.”).
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 mark and to
use it in its domain names, adding only the term “masr”, a geographic reference to Egypt which encourages internet users to assume that the domain names relate to Complainant’ s business activities in Egypt;
(b) Respondent registered the disputed domain names as follows:
<amazonmasr.com> March 6, 2016;
<amazonmasr.info>..................................................... June 13, 2016;
<amazonmasr.net>...................................................... June 13, 2016;
<amazonmasr.org>...................................................... June 13, 2016; and
<amazonmasr.tv>......................................................... June 13, 2016.
(c) the domain names resolve to an active website selling competing products;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in <amazonmasr.com>, <amazonmasr.info>, <amazonmasr.net>, <amazonmasr.org>, and <amazonmasr.tv>. Complainant contends that Respondent is not commonly known by the domain names per the WHOIS of record, and is not affiliated with Complainant. See Compl., at Attached Ex. A (WHOIS). Where a response is lacking, relevant information includes the WHOIS and any other evidence of a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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). The WHOIS identifies “Wael Abdel Gawad / TOP GROUP” as registrant. Complainant has established that Respondent is not affiliated with Complainant, nor does it hold any license to use any of Complainant’s marks. Accordingly, the Panel finds that Respondent is not commonly known by <amazonmasr.com>, <amazonmasr.info>, <amazonmasr.net>, <amazonmasr.org>, and <amazonmasr.tv> per Policy ¶ 4(c)(ii);
(f) Complainant submits and has shown that the <amazonmasr.com> domain name resolves to an online retail store offering product categories competing with Complainant, as well as competitors such as Neiman Marcus and Frys.com. See Compl., at Attached Ex. N. Complainant makes several allegations about Respondent’s use of the domain name, including how Respondent allegedly copied Complainant’s website and promotes its VISA card. See Compl., at Attached Ex. O. Complainant also argues that Respondent’s landing page also uses a copy of Complainant’s cart icon. See Compl., at Attached Exs. B, N. Next, Complainant urges that Respondent has also promoted its site using logos that incorporate the Amazon smile and which are derived from and confusingly similar to the Amazon Logos. See Compl., at Attached Ex. P. According to Complainant, this adoption of Complainant’s marks, graphics, and derivative/knockoff logos to promote its competitive online retail services constitutes passing off and is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Where passing off has occurred, rights and legitimate interests cannot be found. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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 passed itself off as Complainant through <amazonmasr.com> and has made no representation of any rights and legitimate interests that may exist for that domain name;
(g) Complainant argues that the remaining <amazonmasr.info>, <amazonmasr.net>, <amazonmasr.org>, and <amazonmasr.tv> are inactive. See Compl., at Attached Ex. Q (each website displaying, “Website coming soon!”). Failure to make an active use of a domain name has often resulted in a finding of no rights or legitimate interests. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for 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)). Accordingly, as the resolving websites have been shown to fail to resolve to any active content, the Panel finds that Complainant has succeeded in proving in all the circumstances and in the absence of any evidence to the contrary, that Respondent has no rights or legitimate interests in <amazonmasr.info>, <amazonmasr.net>, <amazonmasr.org>, and <amazonmasr.tv>.
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, 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 argues that Respondent registered and used <amazonmasr.com>, <amazonmasr.info>, <amazonmasr.net>, <amazonmasr.org>, and <amazonmasr.tv> in bad faith. Complainant argues that Respondent’s passing off behavior through the <amazonmasr.com> domain name, promoting competing online marketplaces using Complainant’s mark, constitutes bad faith disruption under Policy ¶ 4(b)(iii) as well as attraction for commercial gain per Policy ¶ 4(b)(iv). Passing off behavior has been found to constitute both Policy ¶¶ 4(b)(iii) and (iv) bad faith. See Lambros v. Brown, FA 198963 (Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness). Accordingly, the Panel takes Exhibits N–P into account when determining the extent to which Respondent incorporated Complainant’s marks and likeness. As the Panel finds passing off has occurred, it finds Respondent has engaged in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant contends that Respondent registered and used all of the disputed domain names with actual knowledge of complainant’s trademark, given the fame associated with the AMAZON mark and the competitive nature of Respondent’s use of <amazonmasr.com>. Famous marks are accorded significant weight in an analysis of actual knowledge under the Policy, as are a respondent’s actions in engaging in competitive use. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). The following decisions indicate that Complainant’s AMAZON mark is famous: Amazon Technologies, Inc. v. Null, FA 1488185 (Forum Apr. 17, 2013) (finding that AMAZON is “one of the most famous marks and business names in the world”); Amazon.com, 5
Inc. v. Digital Systems c/o Daniels, FA 871120 (Forum Jan, 29, 2007) (“There is no doubt that AMAZON.COM is a very famous mark”); Amazon.com, Inc. v. .. c/o Banks, FA 785586 (Oct. 11, 2006) (“Amazon is thus a very famous brand name”). In light of these decisions and the evidence presented, the Panel finds that Complainant’s mark is famous, and that Respondent used <amazonmasr.com> in a competitive manner where it attempted to pass itself off as Complainant—imputing Respondent’s actual knowledge when registering and subsequently using the domain names in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent’s inactive holding of <amazonmasr.info>, <amazonmasr.net>, <amazonmasr.org>, and <amazonmasr.tv> also constitutes bad faith under Policy ¶ 4(a)(iii). Inactive holding may amount to bad faith under the Policy. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (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 notes Attached Exhibit Q, demonstrating the domain names do not resolve to active websites. Whilst they may never have resolved to any active content, the Panel finds in all the circumstances that Respondent inactively held them in bad faith per Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the AMAZON mark and in view of the conduct that Respondent engaged in when using the disputed domain names, Respondent registered and used them 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 <amazonmasr.com>, <amazonmasr.info>, <amazonmasr.net>, <amazonmasr.org>, and <amazonmasr.tv> be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: December 2, 2016
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