The Complainants are A, Inc., Seattle, Washington, United States of America; Amazon Technologies, Inc., Reno, Nevada, United States of America; Amazon Europe Holding Technologies SCS, Luxembourg, represented by Cooley (UK) LLP, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is Safraaz Karim, Leicester, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2016. On April 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on April 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2016.
On May 25, 2016 in reply to the notified Respondent’s default an email was received from the Respondent stating he had no problem in transferring the disputed domain name. Pursuant to the Rules, paragraph 17, the Center sent an email to the parties informing them that the proceeding may be suspended to implement a settlement agreement between the Parties.
On May 27, 2016 the Complainants forwarded their request for a suspension of the proceeding. On June 29, 2016 the Complainants requested re-institution of the proceeding as the Respondent had failed to sign the settlement form. The Center re-instituted the proceeding the same day.
On June 30, 2016, the Center appointed James Bridgeman as the sole panelist in this matter. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainants carry on the well-known AMAZON online retail service and are the owners of more than 1,400 trade mark registrations for or including the term AMAZON throughout the world including European Union.
The third named Complainant is the registered owner of European Union Trade Mark (“EUTM”) No. 007516198 for AMAZON, which was filed on December 26, 2008 in Classes 5, 7, 8, 10,14,16,18, 20, 21, 22, 24, 25, 27, 28, 29, 30, 3 1, 32, 34, 35, 36, 38, 39, 40, 43, 44 and 45 and covers, inter alia, “delivery services” in Class 39.
There is no information about the Respondent except for that provided in the WhoIs and the Complaint. He is the owner of the disputed domain name and a number of other domain name registrations which incorporate the marks which are listed below.
The disputed domain name was registered on October 23, 2015 and resolves to a website which contains pay-per-click links. 5. Parties’ Contentions A. Complainant
The Complainants rely on their rights in the AMAZON trademark established through the above EUTM and other trademark registrations and their extensive use of the mark in connection with their well-known on-line retail business.
The Complainants have developed a substantial global brand and their website at “www.a” (which primarily targets consumers based in the United States) is currently ranked as the fourth most visited website on the Internet in the United States and the sixth most visited website in the world.
The Complainants prominently feature the trade mark AMAZON on every page of their websites and have developed a formidable presence on prominent social media platforms.
Importantly in relation to the present Complaint, the Complainant’s operations network in the United Kingdom where the Respondent resides, includes eight “fulfilment centres” otherwise known as “distribution centres” totaling over 5 million square feet and over 4.3 million cubic feet of storage capacity, which dispatch packages to the Complainant’s customers in the United Kingdom and across Europe.
The Complainant submits that the disputed domain name is confusingly similar to Complainants’ AMAZON trade mark because it wholly incorporates the Complainants’ AMAZON mark and numerous UDRP panels established under the Policy have found that the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy (see: Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662 ; A Inc., Amazon Technologies, Inc. v. Giovanni Laporta /Yoyo. Email,WIPO Case No. D2015-0009, ).
The inclusion of the generic words “distribution centre” in the disputed domain name only serves to heighten the confusing similarity between the disputed domain name and the trade mark as the words “distribution centre” are often used to describe the fulfilment centres which are part of the Complainants’ operations network. The Complainants further submits that it is well established that the generic Top-Level D (“gTLD”) “.com” extension may be ignored for the purposes of comparison.
The Complainants submit that the Respondent has no rights or legitimate interests in the disputed domain name, arguing that before any notice to the Respondent of the dispute, there had been no use of, or demonstrable preparations to use the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name resolves to a website that incorporates pay-per-click advertising links.
The Complainants submit that the Respondent is intentionally using the disputed domain name as the address of a website that is established to attract, divert and profit from consumers searching for the Complainants’ websites. The Respondent’s website contains pay-per-click advertising links to the Complainants’ websites and to third party websites, including the websites of businesses that compete with the Complainants’ business. The Complainant argues that the Respondent cannot establish any rights or legitimate interests by such use (citing: Donald J. Trump v. Mediqhing LLC d/b/a Mediakíng Corporation and Aaftek Domain Corp.,WIPO Case No. D2010-7404, ; Alfa Laval AB and Alfa Laval Corporate AB v. A,WIPO Case No. D2007-1881, ).
The Complainants also submit that to the best of their knowledge the Respondent has never been commonly known by the disputed domain name. The Complainants have not granted the Respondent or any other party the right to use the AMAZON mark within a domain name and the Respondent cannot therefore be a licensee of the Complainants nor is the Respondent otherwise authorized by the Complainants to use the AMAZON mark for any purpose.
The Complainants argue that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name as he is monetizing the disputed domain name by incorporating pay-per-click advertising links.
The Complainants submit that the disputed domain name was registered and is being used in bad faith arguing that because of the reputation of the Complainants’ AMAZON mark, it is beyond doubt that the Respondent selected and registered the disputed domain name with the Complainants’ mark and operations network in mind.
The Complainants further submit that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the registration to the Complainants who are the owners AMAZON mark or to a competitor of the Complainants, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name.
On October 22, 2015, the Respondent sent an unsolicited email to Mr. Jeff Bezos, the founder and CEO of Complainant A which stated: “I have a few domains which may be of some use to you which í [sic] have no intention of hosting www. /com If you would be interested in purchasing these please contact me further to negotiate a deal”. The Complainants have attached a copy of the email as an annex to the Complaint.
The Complainants have also referred to and annexed copies of a chain of further “without prejudice” correspondence which have not been admitted in evidence or taken into account for reasons given below.
The Complainant further submits that the Respondent registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. Furthermore the Respondent’s registration of the similar domain names and constitutes a pattern of such conduct and the Complainants’ research indicates that the Respondent registered a number of other domain names on the “.” country code TLD which incorporate well-known brands such as such as , , , , , , , , ,
The Complainants additionally submit that the Respondent registered and is using the disputed domain name to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or of a product or service on the web site of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainants’ contentions, however on May 25, 2016 in response to the Notification of Respondent Default which he had been sent by email on the same day he sent an email to the Center stating: “Hi there I actually tried to call a number of times but could not get hold of the person dealing with the case I bought the website after seeing people selling this online. I can transfer it over without any problem or get it transferred yourself”. 6. Discussion and Findings
Paragraph 4 of the Policy requires the Complainant to establish that:
i. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
ii. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii. the disputed domain name has been registered and is being used in bad faith. Preliminary Issue of “Without Prejudice” Correspondence
In this case the Complaint contained a number of annexes which included correspondence between the Complainants and the Respondent. This correspondence appears to be incomplete in that the first communication on the record is an email from the Respondent to the Complainants offering to sell the disputed domain name. The Complainants submit that this was an unsolicited approach to Mr. Bezos from the Respondent.
The Complaint goes on to refer to subsequent communications in the chain of correspondence starting with the letter from the Complainant’s representatives on November 3, 2015. This letter included a “without prejudice” offer and there were further emails from the Complainants to the Complainants’ representative to the Respondent on November 3 and November 6, 2015 each referring to the ccTLD domain names and and each headed “Without Prejudice” which were adduced in the annex to the Complaint and referred to in the Complaint.
This Panel is of the view that while a respondent acting in bad faith should not be allowed to prejudice a complainant by merely adding the words “without prejudice” to a communication which is an attempt at extortion. This is a very different situation however. In this case it was the Complainants who communicated on a “without prejudice” basis and in the view of this Panel such communications should not be adduced in evidence and in other circumstances could potentially prejudice the proceeding.
This Panel has decided to proceed to consider this Complaint, admitting only the first email from the Respondent into evidence. A. Identical or Confusingly Similar
The Complainants have provided convincing evidence that they have rights in the AMAZON trademark through the abovementioned EUTM registration and at common law by their extensive use of the AMAZON mark in their online retail business.
This Panel accepts the Complainants’ submissions that the disputed domain name is confusingly similar to the Complainant’s AMAZON mark. Not only does the disputed domain name incorporate the AMAZON mark in its entirety, but the word AMAZON is the dominant element of the disputed domain name. Rather than serving in any way to distinguish the disputed domain name from the mark, the addition of the English language words “distribution” and “centre” serves to add to the confusion because the Complainants operate their online retail business through distribution centres. The gTLD extension may be ignored for the purposes of comparison in this case.
The Complainants have therefore succeeded in the first element of the test in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainants submit that the Respondent has no rights or legitimate interest in the disputed domain name. The Respondent has no connection with the Complainants; has never been given any licence or permission by the Complainants to use the AMAZON mark in connection with a domain name; nor has he been commonly known by the domain name.
The Respondent is using the disputed domain name, which is confusingly similar to the Complainants’ AMAZON mark for a commercial purpose to divert Internet traffic intended for the Complainants to a website on which he has pay-per-click links to the Complainants’ website, third party websites including those of competitors. Such use cannot establish any rights or legitimate interest in the disputed domain name.
As the Complainants have made out a prima facie case the burden of production shifts to the Respondent who has failed to discharge that burden.
In the circumstances, the Complainants have also succeeded in the second element of the test in paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainants application for registration of AMAZON as EUTM was filed on December 26, 2008 and the Complainants had an established world-wide reputation in the AMAZON mark well before the disputed domain name was registered on October 23, 2015.
This Panel finds on the balance of probability that, given the fame of the AMAZON mark and the inclusion of the words “distribution” and “centre”, the disputed domain name was chosen and registered in bad faith in order to take predatory advantage of the goodwill and reputation in the Complainants’ AMAZON mark.
It is clear from the offer made by the Respondent in open correspondence on October 22, 2015 and his subsequent email to the Center in response to the Notification of Respondent Default on May 25, 2016 that the Respondent acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the registration to the Complainants or to a competitor of the Complainants, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. It is not necessary to consider the subsequent chain of “without prejudice” correspondence referred to above.
In addition the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or of a product or service on the Respondent’s web site or location and thereby profit from the pay-per-click revenue generated.
The Complainant has therefore satisfied the third and final element of the test in paragraph 4(a)(iii) of the Policy and is entitled to succeed in this Complaint. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the first named Complainant.
James Bridgeman
Sole Panelist
Date: July 10, 2016
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