WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Amazon Technologies, Inc, Amazon Corporate Services Pty Ltd v. AOSS Pty Ltd
Case No. DAU2019-0018
1. The Parties
The Complainant is Amazon Technologies, Inc (the “first Complainant”), United States of America (“United States”) and Amazon Corporate Services Pty Ltd (the “second Complainant”), Australia, represented by King & Wood Mallesons, Australia.
The Respondent is AOSS Pty Ltd, Australia.
2. The Domain Name and Registrar
The disputed domain name <amazonaus.net.au> is registered with TPP Wholesale Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2019. On June 13, 2019, the Center transmitted by email to TPP Wholesale Pty Ltd a request for registrar verification in connection with the disputed domain name. On June 14, 2019, TPP Wholesale Pty Ltd 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 25, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2019
The Center appointed William A. Van Caenegem as the sole panelist in this matter on August 9, 2019. 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 second Complainant is the authorized user in Australia of a number of registered trademarks of the first Complainant. The first and second Complainant are referred to as “the Complainants” below unless otherwise required. The first Complainant has a number of Australian trademark registrations including No. 830014 for AMAZON in class 35 for, among other things, “advertising; business management; business administration; sales promotion for others”, registered since March 31, 2000, and other registrations for the term “Amazon” combined with device elements.
The Complainants also operate the websites “www.amazon.com” and “www.amazon.com.au”. The former website has been available continuously to Australian consumers since 1994.
The disputed domain name was registered on December 8, 2017 in the .au domain name space. This occurred shortly after the Complainant expanded its Australian local retail offering on the Amazon Australia website, by opening its platform up to local Australian sellers.
The disputed domain name was allegedly used by the Respondent for the purpose of sending fraudulent emails impersonating an officer of the second Complainant.
5. Parties’ Contentions
The Complainants say that the Amazon group of companies of which the Complainants form a part operate the world’s largest e-commerce store and Internet company by revenue. The Interbrand Best Global Brands report has identified the Amazon brand as one of the top 10 global brands every year since 2016. The first Complainant operates the “www.amazon.com” website and has done since 2013, and the second Complainant operates the “www.amazon.com.au” website. Australian consumers are said to have made substantial purchases from the first website since 2013 and from the second website from its expansion in 2017. The disputed domain name was registered soon after this latest expansion.
The Complainants contend that because of very extensive use and promotion since 1995, the AMAZON trademarks have enjoyed an overwhelming reputation and have become famous both in Australia and worldwide as associated with the Complainants, their websites, and/or their business.
The Complainants assert that the disputed domain name is confusingly similar to the AMAZON trademarks and to the <amazon.com.au> registered domain name, which is also the URL at which the Amazon Australia website is accessed by Australian consumers. It contains the AMAZON trademark in its entirety, with only the descriptive abbreviation “aus” appended to the disputed domain name. “Aus” is a well-known and accepted abbreviation for “Australia”, which is the country which the Amazon Australia website targets.
The Complainants assert that any reasonable person, when viewing the disputed domain name, would conclude that the disputed domain name leads to a website that is connected to the Complainants.
The Complainants point out that the Respondent, AOSS Pty Ltd, is not known by the disputed domain name, and has not acquired any rights to, or interests in it or any name consisting of or containing the name “Amazon”. The Complainants have not licensed or otherwise permitted the Respondent to use the Amazon name or the AMAZON trademarks (or any variations thereof), whether as a domain name or otherwise. The Respondent has, according to the Complainants, sought to derive a commercial gain by diverting consumers to its own website, or falsely suggesting an association or affiliation with the Complainants for the purpose of making a commercial gain. The Complainants assert that they are aware of actual instances of consumer confusion and are in receipt of at least one complaint from a consumer. The Respondent did not reply in any way to a cease-and-desist letter forwarded to it by the Complainants’ legal representatives. Nonetheless, the website to which the disputed domain name resolves was altered soon after the letter was sent with some references to AMAZON removed. The title/name of the website nonetheless remained as “amazonaus”; the operators of the website continued to refer to themselves as “www.amazonaus.net.au”; the website continued to republish and link to video material purporting to be from “Amazon Australia”; and the website continued to prominently display the AMAZON trademarks. Further changes were made to the website name from April 30, 2019 so that it is now referred to as “AOSSAUS”. The Complainants also assert that the Respondent phoned the Complainants’ legal representatives the day after the date of the cease-and-desist letter and offered to sell the disputed domain name to the Complainants.
The Complainants also point out that the Respondent has, as it says, misappropriated other famous names and trademarks owned by third parties for its own benefit, and sought to misleadingly divert consumers from other famous online businesses such as Google and eBay, to the Respondent’s AOSS website or to other websites and businesses associated with it. In particular, the Complainants assert that the Respondent has registered <googlebayshop.com> and <googlebayshop.com.au>. The Complainants suspect that the person behind both the disputed domain name and the “googlebay” domain names is one and the same individual, because of the common use of the “[…]@outlook.com.au” email address and the reference in the WhoIs data concerning the “googlebay” domain names to the tech address “[…]@amazonaus.net.au”. The aforementioned individual filed two Australian trademark applications immediately after the cease-and-desist letter was sent by the Complainants, for the marks AMAZONAUS and GOOGLEBAY.COM in class 35 and 42, respectively. It appears from other material submitted by the Complainants that the Respondent and some of its associated parties, including a director of the Respondent, have been involved in illegal and fraudulent activities in Australia, and therefore the Complainants submit that the Respondent’s conduct, as well as the conduct of its director and known associates, including the registration of domain names and attempted registration of Australian trademarks containing other well-known trademarks, support a finding that the Respondent has no bona fide rights or legitimate interests in the disputed domain name.
The Complainant also asserts that given the extensive reputation that attaches to the Complainants’ AMAZON trademarks and business name, and the matters raised above in relation to rights and interests, there can be no doubt that the Respondent was fully aware of the Complainants’ rights at the time of registration of the disputed domain name. The Complainant asserts that the disputed domain name was registered and is being used with the intention of causing confusion with the Amazon Australia website, the Amazon website, and/or the AMAZON trademarks in order to divert Internet traffic otherwise rightfully bound for the Complainants and their websites, or to mislead web users into thinking that the AOSS website is affiliated with or approved by the Complainants. The Complainants contend that this amounts to bad faith. Further evidence of bad faith, in the Complainants’ contention, is the fact that the disputed domain name was registered immediately after the domestic expansion in Australia of its online activities, and the fact that the Respondent and its known associates were concerned with the registration of other domain names incorporating well reputed trademarks that the Respondent had no rights to, with a view to misleading consumers.
The Respondent did not reply to the Complainants’ contentions
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainants’ AMAZON trademark. However, it contains that trademark as registered and in its entirety, and the trademark is immediately recognizable within the disputed domain name. The addition of the descriptive extension “aus” has no impact in this regard.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainants’ AMAZON trademark.
B. Rights or Legitimate Interests
The Respondent has not filed a response to the Complaint. The Complainants have not authorized the use of the AMAZON trademark by the Respondent in any way, and there is no indication that the Respondent does legitimate business under the name “Amazon” or “amazonaus.net.au” or is known by that name. The Respondent appears to have offered to sell the disputed domain name to the Complainants, which suggests that its real purpose is simply to derive a financial benefit from registering a domain name containing a trademark that would be immediately recognized by consumers. This activity does not give rise to rights or legitimate interests in the disputed domain name. The incorporation of a trademark in a domain name for the purpose of enticing consumers to visit a website established by a party such as the Respondent which is in fact neither connected with nor authorized by the owner of that trademark is illegitimate and does not give rise to any rights or legitimate interests.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered or Subsequently Used in Bad Faith
It is unimaginable that the Respondent registered the disputed domain name in ignorance of the reputation that adheres to the AMAZON trademark of the Complainants in Australia. It is clear that the AMAZON mark has been deliberately combined with the letters “aus” for the purpose of registration and use in Australia. Further, the disputed domain name has been used to induce consumers who recognize the trademark AMAZON in it to visit the website to which the disputed domain name resolves and which has in fact been established for that purpose by the Respondent. That website has at various times and continues to display the trademarks of the Complainants in a wholly unauthorized and deceptive manner. It appears from the material submitted by the Complainants that the Respondent has also taken deliberate steps in response to receiving notice that are suggestive of bad faith: an offer to sell the disputed domain name to the Complainants and the immediate lodgment of a trademark application for AMAZONAUS which appears to be nothing other than a misguided attempt to illegitimately reinforce its position vis-à-vis the Complainants.
Therefore the Panel holds that the disputed domain name was registered and subsequently used in bad faith.
For all 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, <amazonaus.net.au>, be transferred to the second Complainant.
William A. Van Caenegem
Date: August 23, 2019