Amazon Technologies, Inc. v. German Ramirez / Elite Cleaning Concepts, LLC.
Claim Number: FA1901001826462
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by David J. Diamond of Richard Law Group, Inc., Texas, USA. Respondent is German Ramirez / Elite Cleaning Concepts, LLC. (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amazonprime.com.co>, 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 January 22, 2019; the Forum received payment on January 22, 2019.
On January 23, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <amazonprime.com.co> 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 January 23, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 2019 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@amazonprime.com.co. Also on January 23, 2019, 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. Respondent did however send e-mails to the Forum, see below.
On February 17, 2019, 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 largest online retailers of goods and services, active since 1995. Complainant has rights in the AMAZON.COM and PRIME marks based on its registration of the marks in the United States in, respectively, 2004 and 2007. The marks are registered elsewhere around the world and they are famous.
Complainant alleges that the disputed domain name is confusingly similar to its marks as it combines the AMAZON.COM and PRIME marks and merely adds the country-code top-level domain (“ccTLD”) “.co.”.
According to Complainant, Respondent lacks rights or legitimate interest in the disputed domain name because Respondent is not commonly known by the disputed domain name nor is Respondent licensed to use Complainant’s marks. Respondent uses the disputed domain name to attempt to pass off as Complainant by displaying Complainant’s marks, logos, color scheme, and layout as well as offering good and services in competition with Complainant’s business. This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Respondent registered and uses the disputed domain name in bad faith because Respondent attempts to disrupt Complainant’s business by diverting Internet users to the disputed domain name and offering services in competition with Complainant. Respondent attempts to pass off as Complainant for commercial gain by offering Complainant’s goods and services. Respondent had actual notice of Complainant’s rights in the marks at the time of registration and this also demonstrates bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding. In its e-mails to the Forum, Respondent states, in pertinent part: “To who it may concern I have immediately made sure to remove all domains from godaddy, and also take amazonprime.com.co off air.” And: “I will also make sure to dispute any and all proposal as I … legally acquired this domain through Godaddy.com.”
Complainant owns the marks AMAZON.COM and PRIME and uses them to provide online retail services. The marks are famous.
Complainant’s rights in its marks date back to, respectively, 2004 and 2007.
The disputed domain names were registered in 2018.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The resolving website displays Complainant’s marks, color scheme, and layout, and offers competing products and services.
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 disputed domain name is confusingly similar to Complainant’s AMAZON.COM mark and PRIME mark as Respondent merely combines the two marks and adds the ccTLD “.co.” The combination of a complainant’s marks does not distinguish a disputed domain name from the marks under Policy ¶4(a)(i). See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (finding the combination of a complainant’s marks does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i)). Additionally, the addition of a ccTLD fails to differentiate a disputed domain name from a complainant’s mark under Policy ¶4(a)(i). See CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”). Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks under Policy ¶4(a)(i).
Respondent has not been licensed or otherwise authorized to use Complainant’s marks. Respondent is not commonly known by the disputed domain name: where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Here, the WHOIS information for the disputed domain name lists the registrant as “German Ramirez / Elite Cleaning Concepts, LLC.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name because the resolving website displays Complainant’s marks, color scheme, and layout, and offers competing products and services in an attempt to pass off as Complainant. Replicating a complainant’s website and displaying a complainant’s products is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii). See Bloomberg L.P v. Bloomberg Realty (India) Private Limited, NAF Decision FA 1204001439263. (“Use of a domain name which intentionally trades on the fame of another cannot constitute a bona fide offering of goods and services”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum Aug. 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant); see also Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). The Panel therefore finds that Respondent does not use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) & (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent has not presented any plausible explanation for its use of Complainant’s famous marks. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to disrupt Complainant’s business by using the name to offer competing products and services. This is evidence of bad faith under Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Additionally, Complainant Respondent uses the disputed domain name to attract Internet users for commercial gain by passing off as Complainant and promoting competing products and services. This also demonstrates bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv) on this ground also.
Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark, as shown by the fact that the resolving website displays Complainant’s marks and color scheme. 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 Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amazonprime.com.co> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: February 17, 2019
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