WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Amazon.com Inc., Amazon Technologies, Inc. v. Giovanni Laporta / Yoyo.Email

Case No. D2015-0009

1. The Parties

Complainants are Amazon.com, Inc., a Delaware corporation, and Amazon Technologies, Inc., a Nevada corporation located in the State of Washington, United States of America (the “USA”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, USA.

Respondent is Giovanni Laporta / Yoyo.Email of Traverse City, Michigan, USA, self-represented.

2. The Domain Name and Registrar

The disputed domain name <amazonsupport.email> (“Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2015. On January 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 7, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceeding commenced on January 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2015. The Response was filed with the Center on February 8, 2015. On February 10, 2015, the Center received supplemental filings from Complainants and Respondent. The Panel has elected to consider the supplemental filings from Complainants and Respondent.

The Center appointed Richard W. Page as the sole panelist in this matter on February 19, 2015. 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

Complainant Amazon Technologies, Inc. (“ATI”) is an affiliate of, and an intellectual property holding company for, Complainant Amazon.com. Inc. (“Amazon.com”). Given that these companies are related corporate entities — and that the right and roles of each is relevant to this proceeding — it is appropriate for this Complaint to be filed on behalf of both entities, just at these entities have done together in previous UDRP proceedings. By way of convenience, the Panel refers to both entities as “Complainant” where appropriate.

Amazon.com was incorporated in July 1994 and launched on the World Wide Web in July 1995. Amazon.com completed its initial public offering in May 1997, and its common stock is listed on the Nasdaq Global Select Market under the symbol “AMZN.” Amazon.com’s mission is: “To be Earth’s most customer-centric company where people can find and discover anything they want to buy online.”

Amazon.com serves consumer customers throughout numerous retail websites, which include “www.amazon.com”. Amazon.com and more than two million third party sellers offer millions of unique, new, refurbished and used items.

Amazon.com’s most recently reported quarterly new sales amounted to USD 20.58 billion, and the company employs 149,000 full-time and part-time employees.

Amazon.com ranks as number 49 on the “Fortune 500” list of America’s largest corporations and as number 15 on Interbrand’s list of “Best Global Brands 2014.”

Respondent registered the Disputed Domain Name on April 16, 2014.

5. Parties’ Contentions

A. Complainant

Complainant alleges that Respondent is a serial cybersquatter which has lost a number of decisions under the Policy (as well as under the Uniform Rapid Suspension System), Respondent is engaged in the passive holding of the Disputed Domain Name, that is, Respondent is not using the Disputed Domain Name in connection with an active website as of the date of this Complaint. However, as made clear through the domain name dispute decisions that Respondent has lost, Respondent to date has registered in the “.email” generic Top-Level-Domain (“gTLD”) space some four thousand domain names, including more than a thousand domain names consisting of third-party trademarks, which Respondent submits are solely for use with a business model under development as non-public, non-consumer facing, back-end email servers for the purposes of certifying delivery and potentially receipt of emails.

Complainant is the owner of more than 1,400 trademark registrations worldwide that consist of or contain AMAZON (the “AMAZON Mark”). A previous panel under the Policy said the AMAZON Mark appears beyond question to be highly distinctive, if not famous.

The Disputed Domain Name contains the AMAZON Mark in its entirety. Numerous panels 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.

The Disputed Domain Name includes the word “support” in addition to the AMAZON Mark. The inclusion of “support” does nothing to avoid a finding of confusing similarity, as numerous previous panels have found. Indeed, the inclusion of the world “support” actually may increase the confusing similarity because it describes the customer support services associated with Complainant’s products.

Complainant contends that Respondent has no right or legitimate interest in the Disputed Domain Name. Complainant has never assigned, granted, licensed, sold, transferred or in any ways authorized Respondent to register or use Complainant’s AMAZON Mark in any manner. Upon information and belief, Complainant alleges that Respondent has never used, or made preparations to use, the Disputed Domain Name or any name corresponding to the Disputed Domain Name in connection with the bona fide offering of goods or services. Such “passive holding” of the Disputed Domain Name cannot create any rights or legitimate interests.

To Complaint’s knowledge, Respondent has never been commonly known by the Disputed Domain Name and has never acquired any trademark or service mark rights in the Disputed Domain Name. Furthermore, Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain.

Complainant alleges that Respondent is not using the Disputed Domain Name in connection with an active website. However, as set forth in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2:

“The apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding) does not as such prevent a finding of bad faith. The panel must examine all of the circumstances of the case to determine whether the respondent is acting in bad faith. As an example of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having filed, and the registrant concealing its identity. Panels may draw inference about whether the domain name was used in bad faith give the circumstances surrounding registration and vice versa.”

The AMAZON Mark has a strong reputation and is widely known, given that, as stated above, Complainant has quarterly net sale of USD 20.58 billion, employs 149,500 full-time and part-time employees, ranks as number 49 on the “Fortune 500” list of America’s largest corporation and as number 15 on Interbrand’s list of “Best Global Brands 2014.”

A further indication of Respondent’s bad faith under the Policy is the fact that the AMAZON Mark predates Respondent’s registration of the Disputed Domain Name by twenty (20) years.

B. Respondent

Respondent alleges that it can be found to have committed no violation because it has not used the Disputed Domain Name to resolve to a website. Respondent alleges that it has a “www.yoyo.email” holding page and a “www.yoyo.email/beta” site under construction, but neither has been launched.

Respondent contests that the inclusion of the entirety of the AMAZON Mark is an adequate basis for finding identity or confusing similarity.

Respondent strongly argues that the criticism of Respondent by prior UDRP panels is meaningless and constitutes a campaign of ignorance and bias against Respondent.

Respondent asserts that it will soon be performing a service of certifying receipt of email for the benefit of both the sender and the recipient. In addition, Respondent asserts that it has a Declaratory Judgment concluding that its business model is not violative of the United States Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. §1915 et seq. from the United States District Court of Arizona, Case No. CV-14-01922-PHX-JJT.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Because both Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether Complainant has met its burden as established by paragraph 4(a) of the Policy, the Panel may look to rules and principles of law set out in decisions of the courts of the United States in addition to the Policy and Rules. Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772, n. 3.

ICANN has recently expanded and made available an increased number of new gTLDs, including “.email”. Respondent is correct that there was a minimum thirty day Sunrise Period required by ICANN for each new gTLD providing trademark holders an advanced opportunity to register domain names corresponding to their marks before such second-level domain names in these new gTLDs became generally available to the public. However, there is nothing in the sale of domain names under new gTLDs which protects the purchaser from claims under the existing body of the UDRP. Therefore, the Panel hereby finds that the pre-existing analyses under UDRP cases, including cases involving this Respondent, constitute the applicable law to be applied in this matter. The United States Anti-Cybersquatting Consumer Protection Act is persuasive, but not determinative, to the UDRP.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

(i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) that Respondent has no 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.

A. Identical or Confusingly Similar

Complainant alleges that it is the owner of more than 1,400 trademark registrations worldwide that consist of or contain AMAZON (the “AMAZON Mark”). A previous Panel under the Policy said the AMAZON Mark appears beyond question to be highly distinctive, if not famous.

Respondent has not contested the validity of the AMAZON Mark. Therefore, for purposes of this proceeding the Panel finds that Complainant has protectable trademark rights.

Complainant further alleges that the Disputed Domain Name contains the AMAZON Mark in its entirety. Numerous panels 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.

The Disputed Domain Name includes the word “support” in addition to the AMAZON Mark. The inclusion of “support” does nothing to avoid a finding of confusing similarity, as numerous previous panels have found. Indeed, the inclusion of the world “support” actually may increase the confusing similarity because the term “support” describes the customer support services associated with Complainant’s products.

Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the AMAZON Mark pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Policy, paragraph 4(c) allows three nonexclusive methods for Respondent to show rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant contends that Respondent has no right or legitimate interest in the Disputed Domain Name. Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use Complainant’s AMAZON Mark in any manner. Upon information and belief, Complainant alleges that Respondent has never used, or made preparations to use, the Disputed Domain Name or any name corresponding to the Disputed Domain Name in connection with the bona fide offering of goods or services. Such “passive holding” of the Disputed Domain Name cannot create any rights or legitimate interests.

Respondent alleges that this information shows that it intends to use the Disputed Domain Name for a legitimate purpose.

Complainant counters that the Disputed Domain Name resolves to no website, which is mere “passive holding”, and insufficient to establish rights or legitimate interests in the Disputed Domain Name.

Having considered the totality of the circumstances presented, the Panel concurs that the particular plans of future use by Respondent are not sufficient to establish rights or legitimate interests in the Disputed Domain Name pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product

Complainant alleges that Respondent is not using the Disputed Domain Name in connection with an active website. WIPO Overview 2.0, paragraph 3.2 indicates that the Panel is to assess the circumstances surrounding any passive holding to determine whether Respondent is acting in bad faith.

Respondent has explained its future intention of creating a service to Internet users to confirm the delivery and receipt of email. The explanation of how such a service will work is vague. Furthermore, there is no explanation of why Respondent needs the Disputed Domain Name, <amazonsupport.email>, for the functioning of its prospective business plan.

A further indication of Respondent’s bad faith under the Policy is the fact that the AMAZON Mark predates Respondent’s registration of the Disputed Domain Name by twenty (20) years.

From the paucity of evidence presented by Respondent on its prospective business plan, the Panel can see no other reason than the desire of Respondent to trade on the well-known, if not famous, AMAZON Mark.

Therefore, based upon the evidence submitted in this proceeding, the Panel finds that Complainant has shown sufficient facts to support a finding that the Disputed Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

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, <amazonsupport.email>, be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: March 5, 2015