Amazon Technologies, Inc. v. S3 Domains / S3 Web Domains By Proxy
Claim Number: FA1703001724707
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by David J. Diamond of Richard Law Group, Inc., Texas, USA. Respondent is S3 Domains / S3 Web Domains By Proxy (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <amazonwholesaler.com>, <amazonaccountforsale.com>, <amazonbusinessesforsale.com>, <amazonbusinessforsale.com>, <amazonfranchise.com>, <amazonmsa.com>, <amazonsupplierlist.com>, <electronicsforamazon.com>, <hotamazonproducts.com>, <hotproductsforamazon.com>, <increasesalesonamazon.com>, <iwanttosellonamazon.com>, <openamazonaccount.com>, <openanamazonaccount.com>, <sellbigonamazon.com>, <shenzhenamazon.com>, <shippingtoamazon.com>, <shiptoamazon.com>, <toysforamazon.com>, and <wholesaleamazonsellers.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 30, 2017; the Forum received payment on March 30, 2017.
On March 31, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <amazonwholesaler.com>, <amazonaccountforsale.com>, <amazonbusinessesforsale.com>, <amazonbusinessforsale.com>, <amazonfranchise.com>, <amazonmsa.com>, <amazonsupplierlist.com>, <electronicsforamazon.com>, <hotamazonproducts.com>, <hotproductsforamazon.com>, <increasesalesonamazon.com>, <iwanttosellonamazon.com>, <openamazonaccount.com>, <openanamazonaccount.com>, <sellbigonamazon.com>, <shenzhenamazon.com>, <shippingtoamazon.com>, <shiptoamazon.com>, <toysforamazon.com>, <wholesaleamazonsellers.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 April 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 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@amazonwholesaler.com, postmaster@amazonaccountforsale.com, postmaster@amazonbusinessesforsale.com, postmaster@amazonbusinessforsale.com, postmaster@amazonfranchise.com, postmaster@amazonmsa.com, postmaster@amazonsupplierlist.com, postmaster@electronicsforamazon.com, postmaster@hotamazonproducts.com, postmaster@hotproductsforamazon.com, postmaster@increasesalesonamazon.com, postmaster@iwanttosellonamazon.com, postmaster@openamazonaccount.com, postmaster@openanamazonaccount.com, postmaster@sellbigonamazon.com, postmaster@shenzhenamazon.com, postmaster@shippingtoamazon.com, postmaster@shiptoamazon.com, postmaster@toysforamazon.com, and postmaster@wholesaleamazonsellers.com. Also on April 6, 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.
A timely Response was received and determined to be complete on April 21, 2017.
Complainant’s Additional Submission was received on April 26, 2017 and determined to be in compliance with Forum Supplemental Rule 7.
Respondent made enquiry of the Forum as to whether it, too, could make an Additional Submission but was advised that the deadline for filing same had been May 1, 2017 and had passed.
On May 5, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in AMAZON and AMAZON.COM and alleges that the disputed domain names are confusingly similar to its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
As indicated, Complainant made additional submissions and these are considered as necessary under the discussion which follows shortly.
B. Respondent
Respondent denies that the disputed domain names are confusingly similar to the trademarks. It claims that can be no confusion because the disputed domain names are descriptive of the services offered or to be offered by Respondent.
Respondent states that at present only the disputed domain name <amazonwholesaler.com> is active and it resolves to a website where Respondent wholesales products to customers wishing to re-sell those items using Complainant’s business “or any platform or retail store they choose.”
Respondent submits that it has never suggested that it is affiliated with Complainant and that the website resolving from <amazonwholesaler.com> includes a disclaimer denying any affiliation with Complainant.
Respondent argues that the disputed domain names are therefore “suggestive [of] the type of service it offers, its objectives, and activities”. So, for example, Respondent states that “AmazonWholesaler.com is literally telling its clients it is a wholesale company specifically aimed at those who re-sell their goods on amazon.com” and advances the analogy: “wesellhouses.com suggests its business is structured and aimed at selling houses.”
Respondent concedes that the remaining disputed domain names are not in use. Respondent submits that bad faith use is therefore not possible. Further, in respect of those other names Respondent states that “[t]he generic and descriptive domain name extension terms the Complainant considers as offensive are actually not offensive, but congruent to a future prospect of offering other services that are wholly relevant to the activities those domains may act upon in future.”
Respondent states that:
AmazonWholesaler.com is making a noncommercial fair use of the disputed domain name; and it has been legitimately known as or referred to as AMAZON WHOLESALER.COM. In no way has it ever suggested or used Amazon.com as part of its name or business. As a result, AmazonWholesaler.com does have a legitimate interest in the disputed domain names, as legitimate interests are defined in Paragraphs 4(c)(i)-(iii) of the UDRP.
Respondent agrees it is not commonly known by AMAZON, AMAZON.COM or any variations thereof and it does not purport or suggest that it does in person or in text or context. Respondent is not licensed by Complainant to use Complainant’s AMAZON or AMAZON.COM marks and it does not use said marks anywhere on its website or other paraphernalia. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services nor does it suggest to be.
…
AmazonWholesaler.com has a real place of business, brick and mortar showroom, located in China and with warehouse and distribution services in Hong Kong. AmazonWholesaler does not have any physical presence in the USA. Its website is a place for wholesale clients all over the world to place bulk orders for their various businesses.
The factual findings pertinent to the decision in this case are that:
1. Complainant is an online retailer of consumer goods and services (“the Complainant’s Business”)
2. Complainant’s Business is conducted by reference to the trademarks AMAZON and AMAZON.COM;
3. Complainant is the proprietor of, inter alia, United States Patent and Trademark Office (“USPTO”) Reg. Nos. 2,078,496, registered July 15, 1997 for the trademark AMAZON.COM and 2,832,932, registered April 13, 2004 for the trademark AMAZON;
4. Respondent registered the disputed domain names in the period 2013 to 2016;
5. the disputed domain name <amazonwholesaler.com> resolves to an online store selling toys, electronics, and other goods;
6. the remaining domain names resolve to holding pages which state: “website coming soon!”; and
7. Complainant has not licensed or otherwise given permission to Respondent to use its trademark or to register any domain name incorporating the trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its USPTO trademark registrations for AMAZON and AMAZON.COM, the Panel is satisfied that it has trademark rights in those terms. See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (ForumJune 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”).
For the purposes of the following discussion the Panel has for convenience treated AMAZON as the relevant trademark but makes it clear that no different result would flow were the analysis based on the AMAZON.COM trademark. Further, for the purposes of the discussion under paragraph 4(a)(iii) of the Policy, Panel makes the additional finding (based on the evidence provided with the Complaint) that the trademark is well-known.
The disputed domain names take the trademark and merely add non-distinctive matter. Panelists applying the Policy have long agreed that the gTLD, “.com” can be disregarded for the purposes of paragraph 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). So, too, the addition to Complainant’s trademark of either descriptive words or phrases, or geographical place names does not distinguish the disputed domain names from the trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) finding confusing similarity where a disputed domain name contains a complainant’s trademark and differs only by the addition of a generic or descriptive phrase; see also Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) finding that addition of the term “batteries,” which described the complainant’s products, was insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark.).
Panel is therefore satisfied that the disputed domain names are all confusingly similar to Complainant’s trademark. Accordingly, Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
To the extent that Respondent argues against confusingly similarity based upon what is essentially a nominative fair use argument, Panel leaves that argument to the other limbs of the Policy in conformity with accepted practice.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests. See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information nominates “S3 Domains / S3 Web Domains By Proxy” (a proxy service provider) as the domain name registrant in each instance. That fact provides no prima facie evidence that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Respondent admits there has been no authorization.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain names.
Respondent’s submissions relate in one way or another to all of paragraphs 4(c)(i)-(iii). With regard to paragraph 4(c)(ii), Respondent states that “it has been legitimately known as or referred to as AMAZON WHOLESALER.COM”. However, there is (a) no evidence of that claim beyond a webpage screenshot; (b) no evidence in any case that Respondent has been commonly known by that domain name as required by Policy ¶ 4(c)(ii); (c) no evidence in this regard with respect to any of the other disputed domain names (which have not, by admission, been used), and (d) no direct correspondence between the relevant disputed domain name and the name by which the Respondent claims to have been commonly known, a requirement which the majority of UDRP panelists have insisted upon. Accordingly, Panel finds that any argument based on paragraph 4(c)(ii) of the Policy has not been established. See e.g., Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015). “In light of Respondent’s failure to provide any evidence to the contrary,” the Panel may find that “there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”
With regard to paragraph 4(c)(iii), Respondent states that it is “making a noncommercial fair use of the disputed domain name [<amazonwholesaler.com>]”. Respondent misreads the Policy. Paragraph 4(c)(iii) requires a legitimate noncommercial or fair use of the domain name. The use is neither. By admission, it is commercial. Nor is it “fair use” within the meaning of the Policy since it takes unfair advantage of the trademark. Respondent’s example of the hypothetical domain name, <wesellhouses.com> is not helpful since no trademark is concerned. Use of the trademark in the disputed domains does not qualify as nominative fair use of the trademark because (a) in all but one case there has been no use against which to assess whether the use is in fact nominative; (b) the intended use is not established in any detail; (c) to the extent that prospective use might be understood in terms of Respondent’s business as described, some of the disputed domain names would be clearly misleading: for example, <amazonbusinessesforsale.com>, <amazonbusinessforsale.com>, and <amazonfranchise.com> since they would be entirely suggestive of a business established by Complainant, and (d) by admission, re-sale of goods from the website resolving from <amazonwholesaler.com> is not limited to sales via the Complainant’s Business. Accordingly, Respondent is unable to reply on paragraph 4(c)(iii) to show a legitimate interest in the domain names.
With regard to paragraph 4(c)(i), Respondent’s submissions indicate its belief that it has used the <amazonwholesaler.com> domain name in connection with a bona fide offering of goods or services. Again, that asserted bona fides would rest on claimed nominative, fair use of the trademark and for the reasons I have already given that bona fides does not exist.
Panel finds that Respondent has no right or legitimate interest in the disputed domain names and so finds that Complainant has established the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and that they are being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
In relation to the <amazonwholesaler.com> domain name, Panel finds registration and use in bad faith pursuant to paragraph 4(b)(iv) above. Panel has already found the domain name to be confusingly similar to the trademark. The resolving website exists for commercial gain. The fact that the website now includes a disclaimer to any association with Complainant’s Business is of no consequence. Complainant provides evidence that the disclaimer was only added after notice of this dispute. Further, it is agreed by UDRP panelists that such disclaimers have no effect. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), where at 3.5 it is asked: What is the role of a disclaimer on the web page of a disputed domain name? The consensus view is expressed to be that:
The existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors. This is typically explained by UDRP panels with reference to the probability of Internet user "initial interest confusion" - by the time such user reaches and reads any disclaimer under the domain name, any registrant objective of attracting visitors for financial advantage to its website through use of the trademark in the domain name will generally have been achieved.
In terms of paragraph 4(b)(iv), Panel finds that Respondent has intentionally attempted to attract, for gain, internet users to its website by creating a likelihood of confusion with the trademark as to the source, sponsorship, affiliation, or endorsement of that website.
In relation to the remaining, unused domain names Panel finds, as separate matters, registration in bad faith and “use” (in the sense of passive holding) in bad faith. Respondent admits knowledge of Complainant’s well-known trademark. Panel has already rejected Respondent’s nominative fair use submission and finds registration of the domain names in bad faith. Further, Panel finds bad faith use in terms of the reasoning first laid out in the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Panel finds that Complainant has established this third aspect of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amazonwholesaler.com>, <amazonaccountforsale.com>, <amazonbusinessesforsale.com>, <amazonbusinessforsale.com>, <amazonfranchise.com>, <amazonmsa.com>, <amazonsupplierlist.com>, <electronicsforamazon.com>, <hotamazonproducts.com>, <hotproductsforamazon.com>, <increasesalesonamazon.com>, <iwanttosellonamazon.com>, <openamazonaccount.com>, <openanamazonaccount.com>, <sellbigonamazon.com>, <shenzhenamazon.com>, <shippingtoamazon.com>, <shiptoamazon.com>, <toysforamazon.com> and <wholesaleamazonsellers.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: May 14, 2017
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