Amazon Technologies, Inc. v. Domain Gönül Havva Taşkın / Gönül Havva Taşkın
Claim Number: FA1810001813883
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by David J. Diamond of Richard Law Group, Inc., Texas, USA. Respondent is Domain Gönül Havva Taşkın / Gönül Havva Taşkın (“Respondent”), represented by Abdullah Şimşek, Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amazonpaketim.com>, registered with FBS Inc.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically in both English and Turkish on October 26, 2018, naming a privacy service as Respondent. The Forum received payment on October 26, 2018.
On October 30, 2018, FBS Inc. confirmed by e-mail to the Forum that the <amazonpaketim.com> domain name is registered with FBS Inc. and identified Respondent as the current registrant of the name. FBS Inc. verified that Respondent is bound by the FBS Inc. registration agreement, which is in the Turkish language, 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”). That day the Forum notified Complainant of deficiencies in the Complaint and Complainant filed an amended Complaint in both English and Turkish.
On October 31, 2018, the Forum served the Amended Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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@amazonpaketim.com. Also on October 31, 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 in English was received and determined to be complete on November 8, 2018.
A timely Additional Submission from Complainant in English was received and determined to be complete on November 13, 2018.
On November 14, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the world’s largest online retailers. Its AMAZON trademark is famous. The domain name is confusingly similar to Complainant’s AMAZON trademark.
Respondent has no rights or legitimate interests in respect of the domain name. Respondent is not authorized to use Complainant’s AMAZON mark and is not commonly known by the domain name, which resolves to a site that offers retail shopping and shipping services, wherein Respondent employs Complainant’s black-and-orange color scheme, displays the Amazon Logo, displays screenshots of Complainant’s <amazon.com> website and falsely communicates that its services originate with Complainant.
The domain name was registered and is being used in bad faith. Respondent had actual or constructive notice of Complainant’s AMAZON mark when registering the domain name and is using the domain name to pass itself off as Complainant.
B. Respondent
The addition of “paketim” distinguishes Respondent’s domain name from Complainant’s domain name.
Respondent uses the website to which the domain name resolves to provide a service enabling customers in Turkey to choose a product from Complainant’s website at <www.amazon.com> and have Respondent buy it from Complainant on their behalf. The goods are delivered to Respondent’s address in the USA, where they are packaged and shipped by Respondent to Turkey, a service not provided by Complainant.
Respondent’s website is very different from Complainant’s. Turkish residents could not confuse them. A notice on the home page clearly emphasizes that there is no relationship between the two websites.
Respondent requests primarily that the Panel reject this unfair complaint. If not rejected, it prefers other measures such as adding a new declaration to the website that emphasizes Respondent’s website is not related or affiliated to Complainant’s website “www.amazon.com”.
C. Complainant’s Additional Submission
The language of the proceeding should be English because the Response is in English.
There is no notice on Respondent’s home page or any other page of its website disclaiming any relationship between the two websites. The only language that describes Respondent on the landing page actually implies an association with Complainant rather than disclaiming one. In translation, the footer of the landing page states: “amazonpaketim.co, the world’s largest shopping platform.” The only reasonable explanation for Respondent’s claim to be “the world’s largest shopping platform” is if Respondent was referring to Complainant while instead identifying the disputed domain name.
The recent decision in Amazon Technologies, Inc. v. syed ahmed, FA1810001810357 (Forum Nov. 2, 2018) has held that a virtually identical business model did not qualify as a legitimate, bona fide, or otherwise fair use of a domain name that included Complainant’s AMAZON Mark, and that it also constituted bad faith under the Policy.
Respondent’s explanation of its website only confirms that Respondent has no legitimate interest in the domain name and Respondent’s bad-faith registration and use.
Complainant has established all elements entitling it to relief.
Language of the proceeding
Paragraph 11(a) of the Rules provides: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
Because the Response is in English, the Panel determines that English shall be the language of the proceeding.
Substantive issues
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.
Complainant is the registrant of numerous AMAZON trademarks, including United States trademark No. 3,868,195, registered on October 26, 2010 and International trademark No. 751 641, registered on September 15, 2000, designating Turkey amongst other countries under the Madrid Protocol.
The domain name comprises Complainant’s AMAZON mark, together with the Turkish word “paketim”, meaning “package”, and the inconsequential gTLD “.com”, which may be disregarded. See 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).
Respondent contends that its website differs from that of Complainant. Although website content may be relevant to the other elements required to be established, the test of confusing similarity is confined to a comparison between the domain name and the trademark.
The addition of a generic term and a gTLD to a complainant’s mark does 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).
In Microsoft Corporation v. Microsof.com aka Tarek Ahmed (WIPO case D2000-0548) contributing factors to the likelihood of confusion were held to be the visual similarity between the domain name and the complainant’s mark and the mark being strong and immediately recognizable. Here Complainant has demonstrated with extensive evidence that its AMAZON mark is famous throughout the world. Although the mark was originally adopted with the river of that name in mind, the presence in the domain name of the word “paketim” negates any possibility that Internet users might understand the domain name as making any reference to the river.
Accordingly, the Panel finds the domain name to be confusingly similar to Complainant’s AMAZON trademark. Complainant has established this element.
Policy¶4(c) sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of Policy¶4(a)(ii), i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Panel finds that the AMAZON mark is distinctive and world famous.
Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the domain name: Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014).
Respondent contends that it developed its own website to provide a shipping service that otherwise is not available to residents of Turkey making purchases from Complainant. Although such a service may well be conceptually legitimate, the manner in which Respondent has promoted this service fails to persuade this Panel as to its legitimacy, for the following reasons.
First, Respondent does not contend that it is commonly known by the domain name.
Second, because the domain name is confusingly similar to Complainant’s famous AMAZON trademark, Internet users resident in Turkey are likely to arrive at Respondent’s website wondering whether or expecting that it is Complainant’s website or that it is approved by Complainant, when in fact it is neither.
Third, in addition to its AMAZON word marks, Complainant is also the registrant of the United States logo mark No. 4,171,965 consisting of the word "AMAZON" with an arrow underneath pointing from the "a" to the "z", registered on July 10, 2012 (“the Amazon Logo”) which is displayed on Complainant’s website “www.amazon.com”. The Amazon Logo is also displayed on Respondent’s website, together with a prominent message on the Turkish-language landing page, translated into English for Complainant as either “The easiest way to shop on Amazon” or “The easiest way to shop from Amazon.” An English translation of the favicon identifies Respondent as “Amazon Turkey Online Shopping”. The Respondent’s website, which also employs Complainant’s black-and-orange website color scheme and displays screenshots of Complainant’s website, thus falsely communicates that its services originate with or are approved by Complainant.
Hence although, as mentioned, the service which Respondent provides may well be conceptually legitimate, in practice its promotion amounts to impersonation of Complainant. This is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name. See Microsoft Corp. v. lijiuliang, 1300266 (Forum Feb. 11, 2010) (“Respondent’s attempt to pass itself off as Complainant by imitating Complainant’s official website … is not 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)”).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name. Complainant has established this element.
The domain name was registered on December 10, 2015, several years after Complainant’s AMAZON trademark had become famous worldwide. This, together with the online sales and shipping services which Respondent seeks to provide by the use of the domain name, clearly lead to the conclusion that Respondent was fully aware of Complainant’s mark when registering the domain name and did so in order to attract Internet users to its website for commercial gain by masquerading as Complainant.
These circumstances reflect those in Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017), in which a finding of bad faith per Policy ¶4(b)(iv) was made where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant”).
The website considered in the recent decision in Amazon Technologies, Inc. v. syed ahmed (supra) to which Complainant refers, differed in one respect from that of Respondent in this proceeding, in that it promoted Complainant’s competitors, including eBay and AliExpress, whereas Respondent’s website appears to promote only its own services in connexion with the goods and services of Complainant. Nevertheless, as mentioned, the use of a confusingly similar domain name in association with a website displaying the Amazon Logo and the statement: “amazonpaketim.co, the world’s largest shopping platform” clearly show that Respondent masquerades as Complainant for commercial gain.
Accordingly, the Panel finds that Respondent registered and is using the domain name in bad faith under Policy¶4(b)(iv). Complainant has established this element.
Remedy
Respondent submits that, if this Complaint is not rejected, it prefers other measures such as adding a new disclaimer to the website. However, under Policy¶4(i), the only available remedies where a complaint is upheld are cancellation or transfer of the domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amazonpaketim.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Alan L. Limbury, Panelist
Dated: November 20, 2018.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page