Amazon Technologies, Inc. v. syed ahmed
Claim Number: FA1810001810357
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas. USA. Respondent is syed ahmed (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amazonshopbd.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 4, 2018; the Forum received payment on October 4, 2018.
On October 5, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <amazonshopbd.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 October 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 2018 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@amazonshopbd.com. Also on October 9, 2018, 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. However, Respondent did send a e-mail to the Forum, see below.
On November 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is one of the world’s largest online retailers. As of 2014, Complainant had more than 244 million active customer accounts, which are unique email addresses that have placed an order within the prior 12 months. As of 2017, there were more than 100 million paid Amazon Prime members globally. Revenues for Complainant’s fiscal 2017 were more than $170 billion. Complainant’s worldwide expenditures on advertising and other promotional costs for 2017 were $6.3 billion. Complainant uses the AMAZON mark to provide and market its products and services. Complainant has rights in the AMAZON mark based upon registration in the United States in 2004. The mark is registered around the world, including in Bangladesh, and it is famous.
Complainant alleges that the disputed domain name is confusingly similar to its AMAZON mark as it incorporates the mark in its entirety, merely adding the generic term “shop”, the geographic abbreviation “bd” (which is the country code for Bangladesh), and the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant’s AMAZON mark and is not commonly known by the disputed domain name. Additionally, the disputed domain name resolves to a site that offers retail shopping and shipping services, wherein Respondent employs Complainant’s black and orange color scheme, displays the Complainant’s mark and logos, and promotes Complainant’s competitors including eBay and AliExpress. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent has registered and uses the disputed domain name in bad faith. Respondent is attempting to disrupt and attract Internet users to its competing website for commercial gain. Additionally, Respondent is attempting to pass off as Complainant and used a privacy service to conceal its identity. Finally, Respondent had actual knowledge of Complainant’s AMAZON mark prior to registering the disputed domain name. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, Respondent did send an e-mail to the Forum, stating that it wanted to start an online shop which was not available in Bangladesh, where Amazon and eBay are not operating. So it wanted to allow customers to buy Amazon or eBay or other products through it: Respondent would buy from those sites, charge a service fee, and ship to customers. Respondent registered the disputed domain name because it was available. Its website indicates that it is not Amazon, and is merely providing freight forwarding services. Having been contacted by a lawyer from Complainant, Respondent offered to work together or to transfer the disputed domain name for reimbursement of costs. But Complainant did not respond.
Complainant owns the mark AMAZON and uses it to conduct its online sales business. The mark is famous.
Complainant’s rights in its mark date back to 2004.
The disputed domain name was registered in 2016.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The resolving website offers retail shopping and shipping services, wherein Respondent employs Complainant’s black and orange color scheme, displays the Complainant’s mark and logos, and promotes Complainant’s competitors. Respondent was aware of Complainant’s mark when it registered the disputed domain name.
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.
The disputed domain name is confusingly similar to Complainant’s AMAZON mark it includes the mark, plus the generic term “shop”, the letters “bd” which is a geographic abbreviation for “Bangladesh,” and the “.com” gTLD. Addition of a generic term, a geographic abbreviation, or a gTLD to a complainant’s mark may not negate any confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a 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.); see also See Amazon Technologies, Inc. v. Gawad, FA 1701073 (Forum Dec. 2, 2016) (finding <amazonmasr.com> confusingly similar to AMAZON since “masr” is a geographic reference to Egypt); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus the Panel finds that the <amazonshopbd.com> domain name is confusingly similar to the AMAZON mark per Policy ¶ 4(a)(i).
Respondent is not authorized to use Complainant’s AMAZON mark and is not commonly known by the disputed domain name: where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Here, the WHOIS information of record identifies registrant as “syed ahmed”. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name.
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent attempts to pass off as Complainant in order to promote competing services. Specifically, the resolving website offers retail shopping and shipping services, wherein Respondent employs Complainant’s black and orange color scheme, displays Complainant’s mark and logos, and promotes Complainant’s competitors. Passing off as complainant to offer or promote competing goods and services may not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Microsoft Corp. v. Lafont, FA1009001349611 (Forum Nov. 9, 2010) (finding that the Respondent’s use of Complainant’s MSN mark and logo showed a lack of rights and legitimate interests according to Policy ¶ 4(a)(ii)); see also H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017) (“A complainant can use assertions of passing off and offering competing goods or services to evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Accordingly the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
The Panel notes that these findings are made solely in the sense of the Policy.
Respondent states that it registered the disputed domain name with actual knowledge of Complainant’s mark. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Further, as already noted, Respondent is disrupting Complainant’s business and diverting users to the disputed domain name to offer competing goods and services. Use of a confusingly similar domain name to mislead users and redirect them to a competing website may indicate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶¶ 4(b)(iii) and (iv).
The Panel notes that these findings of bad faith are made solely in the sense of the Policy and that the lapse of some two years between the registration of the disputed domain name and the filing of the present case does not, under the Policy, permit to avoid a finding bad faith registration and use. See Tom Cruise v. Network Operations Center/ Alberta Hot Rods, D2006-0560 (WIPO, July 5, 2006) (finding no meaningful precedent under the Policy for refusing to enforce trademark rights based on delay in bringing a complaint).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amazonshopbd.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: November 2, 2018
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