Amazon Technologies, Inc. v. Abraham Greenboim
Claim Number: FA1702001717488
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by David J. Diamond of Richard Law Group, Inc., Texas, USA. Respondent is Abraham Greenboim (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amazongenius.com>, (‘the Domain Name’) registered with GoDaddy.com, LLC.
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.
Dawn Osborne of PBIP as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 15, 2017; the Forum received payment on February 15, 2017.
On February 16, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <amazongenius.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 2017 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@amazongenius.com. Also on February 16, 2017, 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 17, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of PBIP 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant’s contentions can be summarised as follows:
Since 1995 Complainant has continuously used the AMAZON and AMAZON.com trade marks in connection with its products and services as an on line retailer. It is a well-known mark. The AMAZON mark is registered around the world including in the USA.
The Domain Name is confusingly similar to the famous registered AMAZON mark of Complainant. It incorporates wholly the AMAZON and AMAZON.COM marks adding only the generic term ‘genius’ and in the case of AMAZON, the gTLD .com. These changes are not sufficient to distinguish the Domain Name from Complainant’s well known marks.
Respondent has not used the Domain Name in relation to a bona fide offering of goods and services. The landing page for the Domain Name prominently features Complainant’s logos and graphics but promotes third party products and services, including Complainant’s competitors for commercial gain. This is not a bona fide commercial use or non commercial or fair use of the Domain Name and Respondent has never legitimately been commonly known or referred to as AMAZON or any variation thereof. Respondent is not affiliated with Complainant in any way and is not licensed by Complainant to use its AMAZON mark.
Upon contact Respondent stopped using Complainant’s logos on its site but subsequently resumed use. Such use is likely to confuse and mislead the public and amounts to passing off. Respondent does not have rights or a legitimate interest in the Domain Name.
The use of the Domain Name by Respondent as referred to above shows actual knowledge of Complainant’s rights and is evidence of bad faith registration and use. By using Complainant’s trade marks and its logo and by claiming on its site that ‘AmazonGenius.com is the official site for marketplace sellers’ Respondent creates the false impression that its services are offered or endorsed by Complainant. Respondent has attempted to commercially benefit from the goodwill of Complainant and this conduct of diversion shows bad faith registration and use pursuant to Policy 4(b)(iv). Evidence reflects that Respondent receives revenue from his website’s promotion and links to third parties unaffiliated with Complainant including Complainant’s competitors, through pay per click arrangements, referral fee or other forms of compensation. This is further evidence of bad faith. Promoting competing /alternative online retail businesses using Complainant’s mark disrupts Complainant’s business and falls under Policy 4 (b)(iv). In the commercial context of Respondent’s web site prior use of a privacy shield is further evidence of bad faith. Respondent’s failure to respond to Complainant’s cease and desist letter is also further evidence of bad faith. Finally, Respondent has been previously found to have acted in bad faith in an adverse USRP decision.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Since 1995 Complainant has continuously used the AMAZON and AMAZON.com trade marks in connection with its products and services as an on line retailer. It is a well-known mark. The AMAZON mark is registered around the world, including in the USA.
The Domain Name registered in 2011 has been attached to a website which uses Complainant’s logos and offers third party commercial services not connected 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 Domain Name consists of Complainant's AMAZON registered mark, the generic term ‘genius’ and the gTLD .com.
Panels have found confusing similarity where only generic terms were added to a mark in a domain. See Microsoft Corporation v Thong Tran Thanh, FA 1653187 (Forum Jan 21, 2016)(determining that confusing similarity exists where the disputed domain name contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
gTLDs do not serve to distinguish the Domain Names from a mark which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
Respondent has not responded to Complainant or given any explanation for its use of Complainant’s trade mark in the Domain Name. The Panel has had an opportunity to review Respondent's web site. It was not clear to the Panel upon a quick review of the site that it was not a site authorized by Complainant. As such the web site must be considered to be misleading by its use of the Domain Name confusingly similar to Complainant’s NEWDAY USA trade mark and the prominent use of Complainant’s NEW DAY USA mark in its masthead. Previous panels have also found that use by a respondent of a confusingly similar domain name to a well-known mark of Complainant to attract Internet users to a competing web site does not constitute a bona fide offering of goods and services nor a legitimate or non commercial fair use. See General Motors LLC v MIKE LEE, FA 1659965 (Forum March 10, 2016) (finding that ‘use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods and services pursuant to Policy 4 ( c ) (i) or a legitimate non commercial fair use pursuant to Policy ( c ) (iii). As such the Panel finds that Respondent lacks any rights or legitimate interests in the Domain Name.
Registration and Use in Bad Faith
Having found that Respondent's web site is confusing and misleading customers, the Panel believes that Respondent is attempting to pass itself off as authorized by Complainant and has intentionally attempted to attract for commercial gain internet users to its web site by creating a likelihood of confusion by using Complainant's marks and logos as to the source or endorsement of its web site under Para 4 (b) (iv) of the Policy and also causing disruption to Complainant under Para 4 (iii) of the Policy. See DatingDirect.com Ltd. v Aston, FA 593977 (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).) See also Asbury Auto, Group, Inc v Tex, Int'l Prop. Assocs., FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the domain name to advertise car dealerships that competed with Complainant's business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith registration and use pursuant to Policy 4(b)(iv).) See also MathForum.com, LLC v Weiguang Huang, D2000-0743 (WIPO Aug.17, 2000) (finding bad faith under Policy 4(b)(iv) where the respondent registered a domain name confusingly similar Complainant's mark and the domain name was used to host a commercial web site that offered similar services offered by the Complainant under its mark). As such the Panel finds that the Domain Name has been registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amazongenius.com> domain name be TRANSFERRED from Respondent to Complainant .
Dawn Osborne, Panelist
Dated: March 23, 2017
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