Amazon Technologies, Inc. v. Alex / OctaLogo
Claim Number: FA2211002019219
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Alex / OctaLogo (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <amazonprohub.com>, <amazonmarketinghub.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 Forum electronically on November 7, 2022; Forum received payment on November 7, 2022.
On Nov 08, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <amazonprohub.com> and <amazonmarketinghub.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 November 9, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 2022 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@amazonprohub.com, postmaster@amazonmarketinghub.com. Also on November 9, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 5, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Amazon Technologies, Inc., is an online retailer providing a wide variety of products and services.
Complainant has rights in the AMAZON mark due to numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <amazonprohub.com> and <amazonmarketinghub.com> domain names are identical or confusingly similar to the AMAZON mark because they incorporate the mark in their entirety and append generic terms and a generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <amazonprohub.com> and <amazonmarketinghub.com> domain names, as Respondent is not commonly known by either name. Complainant has never authorized Respondent to use either name. Respondent passes itself off as Complainant through website(s) posing as if sponsored by or associated with Complainant .
Respondent registered and is using the at-issue domain names in bad faith by pass itself off as, or portraying an affiliation with, Complainant. The domain names are used to attracted confused consumers to Complainant’s website(s) where they may purchase Respondent’s own services. Thereby, Respondent is trading off Complainant’s goodwill for its own commercial gain. Respondent had actual knowledge of Complainant’s trademark rights in the AMAZON mark when it registered the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the AMAZON mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the AMAZON trademark.
Respondent uses the at-issue domain names to pass itself off as Complainant and trade off Complainant’s 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.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its AMAZON trademark. Such registration is sufficient to demonstrate Complainant’s rights in the AMAZON mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <amazonprohub.com> and <amazonmarketinghub.com> domain names each contain Complainant’s AMAZON trademark followed by the generic term “pro” or “marketing,” and then by the generic term “hub.” Both domain names end with the top-level domain name “.com.” The differences between Respondent’s domain names and Complainant’s trademark are insufficient to distinguish either domain name from the Complainant’s AMAZON mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <amazonprohub.com> and <amazonmarketinghub.com> domain names are each confusingly similar to Complainant’s trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Here, Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain names identifies the domain names’ registrant as “Alex” in business as “OctaLogo.” The record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by either the <amazonprohub.com> or the <amazonmarketinghub.com> domain name. The Panel therefore concludes that Respondent is not commonly known by <amazonprohub.com> or <amazonmarketinghub.com> for the purposes of Policy ¶ 4(c)(ii). SeeCoppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the <amazonprohub.com> and <amazonmarketinghub.com> domain names to pass itself off as Complainant. Upon browsing to such domain names internet visitors find websites where Respondent identifies itself as being associated with the AMAZON mark inter alia by the site’s derivative masthead logo, and by the AMAZON trademark being displayed numerous times on the websites’ landing pages, including via inappropriate copyright notices. The websites also make substantial use of the AMAZON logo colors. Additionally, when questioned in a chat box featured on the at-issue website(s): “Is this Amazon.com,” Respondent via the chat replied, “We are certified with Amazon” or “We are Amazon Associates.” Notably, Respondent’s website actually promotes Respondent’s own AMAZON targeted SEO services. Respondent thus capitalizes on the confusion it created between the domain names (and their associated websites). Respondent’s use of the domain names in such manner shows Respondent’s scheme to pass itself off as Complainant and exploit Complainant’s trademark to promote and sell Respondent’s own services. Such use of the confusingly similar domain names is neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See e.g., Mulberry Co. (Design) Ltd. v. Chen, D2010-1718 (WIPO Nov. 26, 2010) (“[The] disputed domain names are being used by the Respondent for websites which falsely appear to be affiliated, connected or associated with the Complainant. In this Panel’s view, such use and purpose of the disputed domain names without the authorization of the trade mark owner shows that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names or a bona fide offering of goods and services”).
Given the forgoing, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain names under Policy ¶4(a)(ii).
As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent registered and used the at-issue domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent registered and uses the <amazonprohub.com> and <amazonmarketinghub.com> domain names to pass itself off as Complainant so that it might commercially benefit by capitalizing on the goodwill resident in Complainant’s trademark. As mentioned above regarding rights and legitimate interests, Respondent poses as Complainant, or as being associated with Complainant, in support of promoting its own SEO type services to internet visitors that have products offered on or through AMAZON’s online sales platform. Using the domain names in this manner is disruptive to Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) 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.”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the AMAZON mark when it registered <amazonprohub.com> and <amazonmarketinghub.com> as domain names. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s use of the domain name to pass itself off as Complainant to sell services aimed at merchants selling products via AMAZON, as discussed elsewhere herein. Respondent’s registration of the two confusingly similar domain names without having rights or legitimate interests in such domain names but having knowledge of Complainant’s trademark rights therein, shows Respondent’s bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amazonprohub.com> and <amazonmarketinghub.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 5, 2022
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