The Complainant is Amazon Europe Core S.à.r.l., of Luxembourg, Luxembourg, represented by Reed Smith LLP, Germany.
The Respondent is Wuxi Yilian LLC, of Xiamen, Fujian, China.
The disputed domain name <amazon-promo.net> is registered with Bizcn.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2017. On November 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 2017, 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 proceedings commenced on November 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2017.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on December 26, 2017. 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.
The Complainant Amazon Europe Core S.a.r.l. is an affiliate of, and intellectual property holding company for, Amazon.com, Inc., which is one of the world’s largest online retailers. AMAZON is one of the top-ranking global trademarks (it ranked as number 8 on Interbrand’s list of “Best Global Brands 2016”).
The Complainant owns numerous registered trademarks in many jurisdictions around the world for or including the word “amazon”, among which German registered trademark number 302013004893 for AMAZON.DE (registered on June 10, 2015), German registered trademark number 30046915 for AMAZON (registered on September 8, 2000), German registered trademark number 30020462 for AMAZON (registered on May 18, 2000), European Union registered trademark number 001473248 for AMAZON.COM (registered on April 17, 2009) and United States of America registered trademark number 4907371 for AMAZON (registered on March 1, 2016) (these trademarks are referred to collectively in this decision as “the Mark”).
The Respondent registered the disputed domain name on May 24, 2017.
It is linked to a website in the German language which induces visitors to open an account and which is modelled after the website of Amazon.com, Inc. at “www.amazon.de”.
(i) The Complainant submits that the disputed domain name reproduces the Mark, in which the Complainant has rights, and is confusingly similar to the Mark insofar as the disputed domain name contains the distinctive element “amazon” in its entirety. The Complainant also asserts that the addition of the generic term “promo” does not serve to distinguish the disputed domain name from the Mark and only adds to the confusion.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it never authorized the Respondent to use the Mark in any manner. The Complainant also asserts that the Respondent does not appear to be known by the disputed domain name and never had any business relationship with the Complainant.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant alleges that the Mark being famous worldwide, the Respondent had full knowledge of the Mark when registering the disputed domain name.
(iv) The Complainant submits that by misleadingly diverting consumers, most likely for its own commercial gain, the Respondent is using the disputed domain name in bad faith.
(v) The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 11(a) of the Rules provides that “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”.
The Registrar confirmed that the language of the Registration Agreement of the disputed domain name is English.
The Complainant, not being able to ascertain which was the language of the Registration Agreement, pointed out in its Complaint that English was the language used in prior URDP proceedings involving the Respondent, and formally requested that the language of the proceeding be English.
In the light of the above circumstances, and having to ensure pursuant to paragraph 10(c) of the Rules that the administrative proceeding takes place with due expedition, the Panel determines pursuant to paragraph 11(a) of the Rules that the appropriate language of the proceeding is English.
As aforementioned, no Response was received from the Respondent.
Under the Rules, paragraphs 5(f) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even in the event of a default.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant.
In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy or otherwise, from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.
In comparing the Mark with the disputed domain name, it is evident that the latter consist solely of the Mark, followed by the generic term “-promo” and by the generic Top-Level Domain (“gTLD”) “.net”.
The addition of generic terms does not typically serve to distinguish a domain name from a registered mark. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672; and Allianz AG v. Marian Dinu, WIPO Case No. D2006-0318.
The term “promo” (common shorthand for “promotion”) is strongly related to the online retailing activities of Amazon.com, Inc. and the Panel is of the view that this term is likely to reinforce the confusing similarity with the Mark and corroborate the impression that the disputed domain name belongs to, or is affiliated with the Complainant.
It is also well established that any gTLD, including, as is the case here, the gTLD “.net”, does not generally affect the assessment of a domain name for the purpose of determining identity or confusingly similarity.
The Panel finds that the disputed domain name is confusingly similar to the Mark, which it incorporates entirely.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of rights or legitimate interests in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or uses the disputed domain name in a business.
The website associated with the disputed domain name, modelled after the website of Amazon.com, Inc. at “www.amazon.de”, induces German-speaking consumers to open an account.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no business relationship with the Complainant, (ii) received no authorization from the Complainant to register or use the disputed domain name, and (iii) is not known by the disputed domain name.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name confusingly similar to the Mark.
It is established in prior UDRP decisions that where the respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
In this case, given that the Mark is famous, as was recognized in a number of previous UDRP cases, the Panel finds that it is highly unlikely that the Respondent chose to register the disputed domain name randomly with no knowledge of the Mark. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. PaulBrien, WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
Furthermore, the fact that the Respondent registered 16 domain names confusingly similar to third parties trademarks over the last four years, as revealed by a search on the domain name search engine of the WIPO website, confirms the implausibility of a random registration of the disputed domain name and by contrast reveals a history of cybersquatting and a pattern of conduct in the meaning of paragraphs 4(b)(ii) and (iii) of the UDRP to prevent the Complainant from reflecting the Mark in corresponding domain name, such conduct being strongly indicative of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.2.
In addition, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
Moreover, given the worldwide renown of the Mark, the Panel cannot find any any actual or contemplated good faith use of the disputed domain name, as it invariably results in misleading diversion and taking unfair advantage of the Complainant’s rights. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In this case, the disputed domain name resolves to the website “www.amazon-promo.net” which induces unsuspicious German-speaking consumers to open an account, thus revealing the Respondent’s phishing motives and indicating that the Respondent is using the disputed domain name in bad faith.
Finally, some UDRP panels have held that in certain circumstances, registrants of domain names have an affirmative duty to abstain from registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The Panel concludes in the light of all these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
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 <amazon-promo.net> be transferred to the Complainant.
Date: January 9, 2018
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