If you’re selling stuff on Amazon, or if you curate items for sale with your affiliate id, you cannot use the Amazon brand.
Using, for example, a domain such as InterAmazon.com while claiming to be a “subsidiary” of Amazon, is a big no-no.
The registrant of InterAmazon.com soon found out that Amazon is very protective of its brand and they received a UDRP notice, to which they responded thus:
Respondent was part of the Amazon Associates program, and thus Respondent did not falsely claim to be an official partner of Amazon. The Amazon Associates program notice is located on every page of the website. Respondent used images that belonged to Complainant because Respondent received a product link with an integrated affiliate ID and product images through the Amazon Associates program. Respondent has not received sales commission from Complainant for 90 days.
On the side, the Respondent listed the domain InterAmazon.com for sale, stating that he’s selling to an apparent confusion of the domain with Amazon. The confusion was the product of promoting InterAmazon.com on social media.
Ho Hyun Nahm, Esq., Panelist for the National Arbitration Forum had an easy job. Final decision: Transfer the domain InterAmazon.com to the Complainant, Amazon Technologies, Inc.
Amazon Technologies, Inc. v. Edgar Yepremyan
Claim Number: FA2107001956733
PARTIES
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Edgar Yepremyan (“Respondent”), Armenia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <interamazon.com>, registered with Domain.com, LLC.
PANEL
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.
Ho Hyun Nahm, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on July 26, 2021; the Forum received payment on July 26, 2021.
On July 27, 2021, Domain.com, LLC confirmed by e-mail to the Forum that the <interamazon.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 July 27, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 2021 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@interamazon.com. Also on July 27, 2021, 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.
A timely Response was received and determined to be complete on August 16, 2021.
On August 18, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
i) Complainant, Amazon Technologies, Inc., is an international retailer, offering a broad range of other products and services. Complainant has rights in the AMAZON mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,868,195, registered October 26, 2010). The disputed domain name is confusingly similar to Complainant’s AMAZON mark as it merely adds the generic word or prefix “inter”, and the gTLD “.com.”
ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by AMAZON and Respondent is not authorized to use Complainant’s AMAZON mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the disputed domain name to pass off as an official partner of Complainant. Respondent also offers the disputed domain name for sale.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent offers the disputed domain name for sale. Respondent also uses the disputed domain name to create a false sense of affiliation with Complainant for commercial gain. Furthermore, Respondent had actual knowledge of Complainant’s rights to the AMAZON mark prior to registering the disputed domain name based on Respondent’s use of Complainant’s mark.
B. Respondent
Respondent was part of the Amazon Associates program, and thus Respondent did not falsely claim to be an official partner of Amazon. The Amazon Associates program notice is located on every page of the website. Respondent used images that belonged to Complainant because Respondent received a product link with an integrated affiliate ID and product images through the Amazon Associates program. Respondent has not received sales commission from Complainant for 90 days.
FINDINGS
1. The disputed domain name was registered on March 4, 2020.
2. Complainant has established rights in the AMAZON mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,868,195, registered October 26, 2010).
3. Respondent was part of the Amazon Associates program.
4. The disputed domain name resolves to a webpage displaying links to Complainant’s website while claiming that Respondent is an “official partner of Amazon.com.”
5. The resolving website of the disputed domain name displays the Amazon logos and a derivative of the Amazon logos above the phrase “Partner of Amazon.”
6. Respondent sent Complainant an unsolicited offer to sell the disputed domain name.
7. Complainant terminated Respondent’s Associates Program account in January 2021.
8. Complainant’s Associates Program Operating Agreement prohibits a deceptive use of Complainant’s trademarks.
DISCUSSION
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.
Identical and/or Confusingly Similar
Complainant asserts rights in the AMAZON mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 3,868,195, registered October 26, 2010). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds Complainant has demonstrated rights in the AMAZON mark per Policy ¶ 4(a)(i).
Complainant argues the disputed domain name is identical or confusingly similar to Complainant’s AMAZON mark as it merely adds the generic word or prefix “inter”, and the gTLD “.com.” The addition of a generic term and a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant contends Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is not commonly known by AMAZON and Respondent is not authorized to use Complainant’s AMAZON mark. Relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Edgar Yepremyan,” and Complainant argues Respondent was not authorized to use Complainant’s mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use despite Respondent’s prior participation in Complainant’s Associates Program. A respondent’s status as an affiliate of a complainant does not necessarily create a bona fide offering of goods or services or legitimate noncommercial or fair use. See Priceline.com, Inc. v. Ryan G Foo/PPA Media Services, FA1607001684157 (Forum Aug. 18, 2016) (finding that Respondent used the disputed domain name to redirect to Complainant’s website was in violation of the affiliate agreement between Respondent and Complainant and that such use precluded Respondent from claiming a bona fide offering of goods or services or a legitimate noncommercial or fair use.). Complainant conceded Respondent was part of the Amazon Associates Program. However, Complainant argues that Complainant terminated Respondent’s Associates Program account in January 2021. Complainant also argues that even during Respondent’s Associates Program, Respondent was never authorized to use Complainant’s marks in a domain name, or to misrepresent its relationship with Complainant, or to adopt and modify Complainant’s Amazon logos. Complainant’s Associates Program Operating Agreement prohibits such deceptive use of Complainant’s trademarks, and any website that incorporates Complainant’s trademarks in a domain name is ineligible for the program. Therefore, the Panel finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant also argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses it to pass off as an official partner of Complainant. Using a confusingly similar domain name to pass off as a complainant may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots showing the disputed domain name resolves to a webpage displays links to Complainant’s website while claiming that Respondent is an “official partner of Amazon.com” and “the official partner of Amazon!” Complainant highlights the resolving website also prominently displays the Amazon logos and an unauthorized derivative of the Amazon logos above the phrase “Partner of Amazon.” Therefore, the Panel finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues Respondent further lacks rights and legitimate interests in the disputed domain name as Respondent offers it for sale. A respondent’s general attempt to sell a disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Complainant provides a screenshot showing Respondent sent Complainant an unsolicited offer to sell the domain stating that “Many people confuse this site with Amazon, and that’s why I want to sell it.” Complainant also highlights that Respondent’s resolving website states, “InterAmazon.com is on sale! Contact us: ***@gmail.com.” Complainant also notes that the “Amazon Associates Program” account mentioned by Respondent was terminated by Complainant in January 2021.
Given the considerations above, the Panel finds that Complainant has made out a prima facie case. As the onus thus shifts to Respondent, the Panel must now see if Respondent has rebutted the prima face case and shown that it has a right or legitimate interest in the disputed domain name. Respondent contends that Respondent was part of the Amazon Associates program, and thus Respondent did not falsely claim to be an official partner of Amazon. The Amazon Associates program notice is located on every page of the website. Respondent used images that belonged to Complainant because Respondent received a product link with an integrated affiliate ID and product images through the Amazon Associates program. Respondent has not received sales commission from Complainant for 90 days.
Complainant conceded that Respondent was part of the Amazon Associates Program. However, Complainant argues that Complainant terminated Respondent’s Associates Program account in January 2021. Complainant also argues that even during Respondent’s Associates Program, Respondent was never authorized to use Complainant’s marks in a domain name, or to misrepresent its relationship with Complainant, or to adopt and modify Complainant’s Amazon logos. Complainant’s Associates Program Operating Agreement prohibits such deceptive use of Complainant’s trademarks, and any website that incorporates Complainant’s trademarks in a domain name is ineligible for the program.
As the Panel finds that Respondent has failed to rebut the prima facie case against it, it concludes that Respondent has no rights or legitimate interests in the disputed domain name.
Registration and Use in Bad Faith
Complainant contends Respondent registered and uses the disputed domain name in bad faith as Respondent offers the disputed domain name for sale. Offering a disputed domain name for sale can evidence bad faith per Policy ¶ 4(b)(i). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). The Panel recalls Complainant provides screenshots showing Respondent sent Complainant an unsolicited offer to sell the domain stating that “Many people confuse this site with Amazon, and that’s why I want to sell it.” Respondent offers to sell the disputed domain name on the resolving website as well. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Complainant also argues Respondent uses the disputed domain name to create a false sense of affiliation with Complainant for financial gain. Registering a confusingly similar domain name to create a false sense of affiliation with a complainant can demonstrate bad faith per Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). As noted above, Complainant provides screenshots showing Respondent’s resolving website prominently displaying the Amazon logos and an unauthorized derivative of the Amazon logos above the phrase “Partner of Amazon.”
Respondent contends that Respondent was part of the Amazon Associates program, and thus Respondent did not falsely claim to be an official partner of Amazon. The Amazon Associates program notice is located on every page of the website. Respondent used images that belonged to Complainant because Respondent received a product link with an integrated affiliate ID and product images through the Amazon Associates program.
Complainant argues that Complainant terminated Respondent’s Associates Program account in January 2021. Complainant also argues that even during Respondent’s Associates Program, Respondent was never authorized to use Complainant’s marks in a domain name, or to misrepresent its relationship with Complainant, or to adopt and modify Complainant’s Amazon logos. Complainant’s Associates Program Operating Agreement prohibits such deceptive use of Complainant’s trademarks, and any website that incorporates Complainant’s trademarks in a domain name is ineligible for the program. The Panel agrees with Complainant and finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Finally, Complainant contends Respondent registered the disputed domain name in bad faith as Respondent had actual knowledge of Complainant’s rights to the AMAZON mark prior to registering the disputed domain name based on Respondent’s use of Complainant’s mark. Use of a mark to divert Internet traffic to a disputed domain name can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith per Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the AMAZON mark as Respondent refers to Complainant and displays Complainant’s Amazon logos at the resolving website, has falsely claimed to be Complainant’s official partner, and has contacted Complainant about selling the domain. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <interamazon.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 20, 2021
