Amazon Technologies, Inc. v. Ezequiel Santos Damasceno / ezequielsdbinario@gmail.com
Claim Number: FA1810001810304
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Ezequiel Santos Damasceno / ezequielsdbinario@gmail.com (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <amazondigital.store>, <amazoneletro.com>, <amazonstand.com>, <amazonstore.shop>, <amazonwhats.com>, <amazooncart.com>, <amazoonshop.com>, <marketamazon.net>, <nozamashop.com>, <standamazon.com> and <whatsamazon.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 3, 2018; the Forum received payment on October 3, 2018.
On October 4, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <amazondigital.store>, <amazoneletro.com>, <amazonstand.com>, <amazonstore.shop>, <amazonwhats.com>, <amazooncart.com>, <amazoonshop.com>, <marketamazon.net>, <nozamashop.com>, <standamazon.com> and <whatsamazon.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 October 4, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 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@amazondigital.store, postmaster@amazoneletro.com, postmaster@amazonstand.com, postmaster@amazonstore.shop, postmaster@amazonwhats.com, postmaster@amazooncart.com, postmaster@amazoonshop.com, postmaster@marketamazon.net, postmaster@nozamashop.com, postmaster@standamazon.com, postmaster@whatsamazon.com. Also on October 4, 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.
A timely Response was received and determined to be complete on October 4, 2018.
On October 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Amazon Technologies, Inc. offers online retail store services via the website <www.amazon.com>.
Complainant uses its AMAZON mark to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <amazondigital.store>, <amazoneletro.com>, <amazonstand.com>, <amazonstore.shop>, <amazonwhats.com>,<marketamazon.net>, <standamazon.com> and <whatsamazon.com> domain names are confusingly similar to Complainant’s mark as each adds a generic term and a generic top-level domain (“gTLD”). Respondent’s <amazooncart.com>, <amazoonshop.com> and <nozamashop.com> domain names are confusingly similar to Complainant’s mark as each adds a generic term and a gTLD to a misspelled version of Complainant’s AMAZON mark.
Respondent does not have rights or legitimate interests in the infringing domain names. Complainant has not licensed or otherwise authorized Respondent to use its AMAZON mark in any fashion. Respondent is also not commonly known by the disputed domain names as the WHOIS information of record lists “Ezequiel Santos Damasceno / ezequielsdbinario@gmail.com” as the registrant.
Respondent is not using the disputed domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to parked webpages that display the domain names for sale or feature pay-per-click advertisements.
Respondent registered and is using the disputed domain names in bad faith. First, Respondent engaged in a pattern of bad faith registration by registering multiple infringing domain names in the present case. Next, Respondent offered to sell the disputed domain names. Respondent also attempts to create confusion with Complainant’s AMAZON mark for commercial gain by resolving to websites featuring pay-per-click advertisements. Moreover, Respondent fails to use some of the domain names in connection with an active site. Further, Respondent registered the domain names with full knowledge of Complainant’s rights in the AMAZON mark. Finally, Respondent engaged in typosquatting by registering domain names containing typographical errors.
B. Respondent
Respondent contends as follows:
I am passionate about amazon site, and a great admirer of Jeff Bezos, I did not create these domains with intent to harm the company.
When I created these domains just wanted to show that these domains were available to register and that would be a good idea for the company to acquire.
I am a simple guy, Brazilian and that works in supermarket counter with few studies and almost no knowledge in technology.
I weigh [sic] that these domains are canceled of my name and transferred to who is of right Amazon.
I have no intention now or in the future to possess these domains.
I LOVE AMAZON
Complainant has trademark rights in the AMAZON mark.
Respondent registered the at-issue domain name after Complainant acquired rights in AMAZON.
Respondent has agreed to transfer the at-issue domain names to 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.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶ 4(a)(ii) or 4(a)(iii), when a respondent consents to the requested relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
In the instant case there is an express indication that Respondent agrees to transfer its at-issue domain names to Complainant and therefore does not oppose Complainant’s request to transfer. Respondent, in its short Response, states in no uncertain terms that it desires that the at-issue domain names be transferred to Complainant. The Panel, noting the parties’ agreement as to the disposition of the at-issue domain names, follows its rationale set out in Homer TLC, Inc. v. Jacek Woloszuk, FA613637 (Forum May 17, 2015), as well as in other similarly reasoned decisions where the respondent likewise agreed to transfer the at-issue domain name(s) to the complainant.
As more fully discussed in the cases referenced immediately above, as a necessary prerequisite to Complainant obtaining its requested relief, even where Respondent agrees to such relief, Complainant must demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name. Here, Complainant’s ownership of a USPTO trademark registration for its AMAZON trademark shows Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i). See State Farm Mutual Automobile Insurance Company v. Henry Francis, FA 1738716 (Forum July 28, 2017) (acknowledging complainant’s rights in a mark when it had registered the mark with the United States Patent and Trademark Office and the Canadian Intellectual Property Office). Furthermore, Respondent’s <amazondigital.store>, <amazoneletro.com>, <amazonstand.com>, <amazonstore.shop>, <amazonwhats.com>, <marketamazon.net>, <standamazon.com> and <whatsamazon.com> domain names each add a generic term (“digital,” “eletro,” “stand,” “store,” “whats,” or “market”) and a gTLD (“.com,” “.store,” “.net,” or “.shop.”). The inclusion of a descriptive term and a gTLD is insufficient to distinguish these trademark laden domain names from Complainant’s mark for the purposes of the Policy. Therefore the Panel finds that such domain names are confusingly similar to Complainant’s trademark pursuant to Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Likewise, Respondent’s <amazooncart.com>, <amazoonshop.com> and <nozamashop.com> domain names are confusingly similar to Complainant’s trademark as each of these domain names simply adds a generic term and a gTLD to a misspelled version of Complainant’s AMAZON mark. See Coachella Music Festival, LLC v. Domain Administrator / China Capital Investment Limited, FA 1734230 (Forum July 17, 2017) (“The addition of letters—particularly of those that create a common misspelling—fails to sufficiently distinguish a domain name from a registered mark.”).
In light of the foregoing, Respondent’s consent to transfer the at-issue domain name permits the Panel to order that the domain name be transferred to Complainant without further analysis regarding paragraph 4(a)(ii) or 4(a)(iii) 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 <amazondigital.store>, <amazoneletro.com>, <amazonstand.com>, <amazonstore.shop>, <amazonwhats.com>, <amazooncart.com>, <amazoonshop.com>, <marketamazon.net>, <nozamashop.com>, <standamazon.com> and <whatsamazon.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 8, 2018
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