The Complainants are A, Inc. of Delaware and Amazon Technologies, Inc. of Nevada, United States of America ("United States"), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Vedran Hochberger of Zagreb, Croatia. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 3, 2017. On December 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 proceedings commenced on December 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 2, 2018.
The Center appointed David J.A. Cairns as the sole panelist in this matter on January 11, 2018. 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 Complainant Amazon Technologies, Inc. is an affiliate of, and an intellectual property company for, the Complainant A, Inc.
The Complainant Amazon Technologies, Inc. is the registered owner of the United States trademark registration number 2078496 for the word mark AMAZON, registered on July 15, 1997, by the Complainant A, Inc. The Complainant Amazon Technologies, Inc. is also the registered owner of the United States trademark registration number 5038752 for the design mark AMAZON, registered on September 13, 2016, and composed of the word AMAZON with an curved arrow motif under the word AMAZON, beginning beneath the "a" and terminating beneath the "z".
The Complainant Amazon Technologies, Inc. holds the domain name registration, registered on October 31, 1994, which is used in connection with the goods and services associated with the AMAZON trademark
The disputed domain name was registered on November 5, 2017. The Panel entered the disputed domain name in its web browser on January 23, 2018. The Panel found that the landing site for the disputed domain name contained notice that advised "Account Suspended" and "This account has been suspended. Contact your hosting provider for more information." 5. Parties' Contentions A. Complainants
The Complainants state that they are the owners of more than 1,800 trademark registrations worldwide for trademarks that consist of or contain "AMAZON". The Complainants serve customers through numerous retail websites where more than two million third-party sellers offer millions of new, refurbished and used items. The Complainants cite several domain name cases in which UDRP panels have recognised the Complainants' AMAZON trademark as "highly distinctive" and "very famous". As evidence of their distinction, the Complainants assert that their AMAZON trademark has been ranked number 12 on the "Fortune 500" list of America's largest corporations and number 8 on Interbrand's list of "Best Global Brands 2016".
The Complainants state that it is appropriate for this Complaint to be filed on behalf of both Complainants given that these companies are "related corporate entities" and that the rights and roles of each are relevant to this proceeding. The Complainants cite several dispute domain cases in which UDRP panels accepted multiple complainants, including previous cases involving these two entities as complainants.
The Complainants state that the disputed domain name is confusingly similar to the AMAZON trademark. They state that the disputed domain name contains the AMAZON trademark in its entirety plus the word "exchange". The Complainants assert that the inclusion of a descriptive word in the disputed domain name does not avoid the confusing similarity with the Complainants' trademark and that, in this particular case, the word "exchange" enhances the similarity with the Complainants' AMAZON trademark because the Complainants offer a detailed exchange policy to customers who purchase goods and services. The Complainants further allege that by appearing at the beginning of the disputed domain name the "dominant portion" of the disputed domain name consists of the AMAZON trademark and that the addition of the word "exchange" is insufficient to avoid the confusing similarity with the Complainants' trademark. The Complainants state that the "overall impression of the designation" of the disputed domain name is one of being connected to the trademark of the Complainants.
The Complainants state that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainants assert that they have never signed, granted, licensed, sold, transferred or authorized the Respondent in any other way to register or use the Complainants' AMAZON trademark in any manner. They aver that the Respondent has never used or made preparations to use the disputed domain name in connection with a bona fide offering of goods and services. The Complainants assert that the Respondent has never been commonly known by the disputed domain name and that it is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The Complainants assert that the Respondent is using the disputed domain name in connection with a website for a "Multi Asset Cryptocurrency Exchange". The Complainants further state that the Respondent's use of a logo on this website that is confusingly similar to the Complainants' AMAZON trademark with the "arrow" logo is further evidence of the Respondent's intention to obtain commercial gain by the misleading diversion of consumers.
The Complainants state that the disputed domain name was registered and is being used in bad faith. They assert that by associating the disputed domain name to a website that uses a logo that is confusingly similar to the Complainants' AMAZON "arrow" motif, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants' trademark. The Complainants argue that the similarities between the Complainants' AMAZON arrow logo and the Respondent's logo lead to a confusion as to the source, sponsorship affiliation or endorsement of the Respondent's website by the Complainants. The Complainants also allege that a likelihood of confusion exists even though the Respondent's activities do not overlap with the Complainants' services. A likelihood of confusion also exists because the Complainants offer a detailed exchange policy to customers, and Internet users seeking information about the "Amazon exchange" policy may instead be misled to the Respondent's website. The Complainants also state that the disputed domain name is so obviously connected with the Complainant to suggest "opportunistic" bad faith. The Complainants finally assert that the fact that the AMAZON trademark pre-dates the Respondent's registration of the disputed domain name by more than 20 years proves the Respondent's registration and use of the disputed domain name in bad faith.
The Complainants request the transfer of the disputed domain name to the Complainant Amazon Technologies, Inc. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
The Panel is required to decide on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. (Paragraph 15(a) of the Rules).
The Policy requires the Complainants to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name.
There is a preliminary procedural question relating to the fact that the Complaint has been presented by two related corporate entities. While the Policy and the Rules are silent on the treatment of multiple complainants, there is a significant number of UDRP decisions which have admitted complaints filed by multiple affiliate complainants (see, for example, Staples, Inc., Staples The Office Superstore, Inc., and Staples Contract and Commercial, Inc. v. SkyLabs Corporation and DL Enterprises,WIPO Case No. D2004-0220). Some UDRP panels have considered that when the complainants have a "common legal interest" in the trademark rights and the disputed domain name is causing them a "common grievance", then it is acceptable for them to file the complaint jointly (Fulham Football Club (1987) Limited, Tottenham Hotspur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd,WIPO Case No. D2009-0331). In short, a joint complaint and multiple complainants are justified where more than one entity has an interest in the trademark. In the present case, the Complainant Amazon Technologies, Inc. is an intellectual property holding company and as such the registered owner of AMAZON trademarks. It is also an affiliate of the Complainant A, Inc., which is the retail user and the beneficiary of the goodwill of the AMAZON trademarks registered by the Complainant Amazon Technologies, Inc. This formal separation of the registration of trademark rights from the commercial exploitation of those rights is a common business practice. The Panel is satisfied that both Complainants share a common interest in the trademark rights, and it is proper, and indeed desirable, that they bring the Complaint jointly. A. Identical or Confusingly Similar
The Panel accepts that the Complainants own the trademark registrations for the word and design marks for AMAZON, referred to above.
"Amazon" has multiple meanings, the most prominent one being as the name of a river and a large geographical area associated with the Amazon river. At the same time, the Panel accepts that AMAZON is a famous trademark with widespread international recognition and goodwill. In fact, the Complainants' AMAZON trademark has been ranked number 12 on the "Fortune 500" list of America's largest corporations, and number 8 on Interbrand's list of "Best Global Brands 2016".
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition. ("WIPO Overview 3.0") states that the test for identity or confusing similarity "typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name".
Section 1.6 WIPO Overview 3.0 states that "[g]eographical terms which are not used solely in a geographically descriptive sense […] and which are registered as a trademark, would provide standing to file a UDRP case." In addition, section 1.7 of the WIPO Overview 3.0 explains that "in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing."
Section 1.8 of the WIPO Overview 3.0 states that "[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element."
In the present case, the disputed domain name is not identical to the AMAZON trademark. The disputed domain name is composed of the Complainants' word mark AMAZON and the generic word "exchange".
The Panel considers that on a side-by-side comparison, the disputed domain name is confusingly similar to the AMAZON trademark for the following reasons: (i) the disputed domain name contains the Complainants' AMAZON trademark in its entirety; (ii) the word AMAZON is the first and dominant word in the disputed domain name; (iii) the Complainants' AMAZON trademark is famous and widely used for its online retail business and therefore has enormous goodwill and recognition by consumers; (iv) the term "Amazon" is not used in the disputed domain name in a geographical or descriptive sense, but rather the combination of "amazon" and "exchange" has a commercial connotation; and (v) the use of the generic word "exchange" does not avoid the confusion of the disputed domain name with the Complainants' AMAZON trademark, but rather enhances the association of the disputed domain name with the AMAZON trademark due to its commercial connotations, and possible reference to the Complainants' exchange policy for customers.
For these reasons, the Panel considers that the disputed domain name is confusingly similar to the Complainants' trademark. B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent has any contractual or proprietary rights in any registered trademark corresponding to the disputed domain name; (ii) the Respondent is not authorized or licensed by the Complainants to use the AMAZON trademark or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name; (iv) the Respondent has not used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services.
Paragraph 4(c) of the Policy refers to three circumstances, any of which is sufficient to evidence that the Respondent has rights or legitimate interests in the disputed domain name. There is no evidence of any use of the disputed domain name to make a bona fide offering of goods or services; rather the only evidence of use of the disputed domain name is the association of the disputed domain name with a "Multi Asset Cryptocurrency Exchange" website. This website includes a logo with an arrow motif which the Panel finds is deliberately copied from the Complainants' use of an arrow motif with its AMAZON trademark, and therefore is calculated to deceive Internet users to believe that the website is associated with the Complainants. The Respondent has clearly sought to impersonate the Complainants for its own financial benefit, which means the use of the disputed domain name to host the "Multi Asset Cryptocurrency Exchange" website is clearly neither a bona fide offering of goods or services nor a fair use of the disputed domain name within the meaning of paragraph (4)(c)(i) or (iii) of the Policy.
For the above reasons, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that a disputed domain name was registered in bad faith and also that it is being used in bad faith. Paragraph 4(b) of the Policy sets out four circumstances "in particular but without limitations" which, if found to be present by the Panel, shall be evidence of the registration and use of a domain name in bad faith.
The Panel finds that bad faith registration and use within the meaning of paragraph 4(b) of the Policy is established in the present case for the following reasons: (i) the Panel finds that the Respondent's choice of the terms "Amazon" and "exchange" for the disputed domain name was deliberate, and in full knowledge of the Complainant's AMAZON trademark; (ii) the use of the generic word "exchange" is intended to enhance the likelihood of confusion and the association of the disputed domain name with the Complainants' exchange policy for customers; and (iii) the use of a confusingly similar arrow motif in conjunction with the AMAZON trademark in its website was deliberate and with intent to deceive Internet users. By registering and using the disputed domain name in this way, the Respondent has clearly intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants' AMAZON mark as to source, sponsorship, affiliation or endorsement.
Furthermore, the Complainants' AMAZON trademark is famous and widely used, known and recognized internationally. The Panel finds that the Respondent knew of the Complainants' AMAZON trademark at the time of registering the disputed domain name. The Panel is satisfied that the disputed domain name was registered and is used opportunistically, and with a willful indifference to the Complainants' trademark rights and the deception of Internet users. This constitutes registration and use in bad faith.
For these reasons, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith. 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 Amazon Technologies, Inc.
David J.A. Cairns
Sole Panelist
Date: January 26, 2018
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