Amazon Technologies, Inc. v. ling liu
Claim Number: FA2112001976809
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Texas, USA. Respondent is ling liu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <blinkdoorbells.com> and <doorbellblink.com>, registered with NameSilo, LLC.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 11, 2021; the Forum received payment on December 11, 2021.
On December 13, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <blinkdoorbells.com> and <doorbellblink.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 December 14, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2022 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@blinkdoorbells.com, postmaster@doorbellblink.com.
Also, on December 14, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 5, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant submits that it launched its business at <amazon.com> in July 1995 and has since grown to become one of the world’s leading retailers, offering products and services to more than 100 countries around the globe.
Complainant relies on its rights in the BLINK trademark and service mark established by its portfolio of registrations described below and the goodwill in the mark that it has established by extensive use in its home security device products and services which it first introduced in 2014 and to which it has dedicated a website to which its domain name <blinkforhome.com> resolves. Complainant brands its devices using its logo:
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Alleging that the disputed domain names are confusingly similar to Complainant’s BLINK trademark and service mark, Complainant argues that they each incorporate Complainant’s BLINK trademark in its entirety, adding only the generic term “doorbell” or ”doorbells” together with the generic Top Level Domain (“gTLD”) <.com> extension.
Complainant argues that these elements do not distinguish the disputed domain names for the purposes of the Policy, especially since Complainant offers doorbells under its registered BLINK trademark. See e.g., American Express Co. v. MustNeed.com, FA0404000257901 (Forum June 7, 2004) (“mere addition of a generic or descriptive word to a registered mark does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i)”).
Complainant then alleges that Respondent has no rights or legitimate interests in the disputed domain names arguing that Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services; Respondent is not making a noncommercial fair use of the disputed domain names; and Respondent has never been legitimately known as or referred to as BLINK or any variation thereof. As a result, Respondent does not have a legitimate interest in the disputed domain names, as legitimate interests are defined in Paragraphs 4(c)(i)-(iii) of the Policy.
Complainant adds that Respondent is not commonly known by Complainant’s BLINK trademark and the Registrar supplied WHOIS information identifies Respondent as ling liu.
Complainant asserts that Respondent is not affiliated with Complainant in any way and that Respondent is not licensed by Complainant to use Complainant’s BLINK mark, adding that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services. See Broadcom Corp. v. Ibecom PLC, FA0411000361190 (Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name).
Referring to a screen capture of the websites to which the disputed domain names resolve, which have been submitted in evidence by Complainant in an annex to the Complaint, Complainant contends that the screen shots show that the disputed domain names resolve to fake BLINK-branded stores that prominently display the BLINK logo in the mastheads and both Complainant’s BLINK logo and its Amazon Logo in the content.
Complainant emphasizes that there are no disclaimers and no source indicators other than Complainant’s trademarks displayed in the content of the websites to which the disputed domain names resolve and the products displayed on each website are in fact Complainant’s own BLINK-branded range.
Complainant expresses concern that the resolving websites also include BLINK logo-branded login pages that solicit usernames and passwords from Internet users.
Complainant argues that Respondent’s use of Complainant’s BLINK trademark in the disputed domain names and the BLINK, AMAZON, BLINK logo, and AMAZON logo trademarks in this fashion at the resolving websites is calculated and likely to confuse and mislead the public as to the source or endorsement of Respondent’s websites and services.
Complainant alleges that such use constitutes passing off and submits that it is not a fair, nominative, or otherwise legitimate use of the disputed domain names. See Microsoft Corp. v. lijiuliang, FA0912001300266 (Forum Feb. 11, 2010) (“Respondent’s attempt to pass itself off as Complainant by imitating Complainant’s official website … is not 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 further submits that Respondent’s passing off behavior precludes bona fide or legitimate use even if Respondent resells Complainant’s goods (which upon information and belief it does not) because it is well established that in order to use a goods manufacturer’s trademark in a domain name, “[t]he site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents”. See Oki Data Americas, Inc. v. ASD, Inc., Case No. D2001-0903 (WIPO Nov. 6, 2001).
Complainant adds that such use of the disputed domain names confusingly similar to Complainant’s BLINK trademark to promote competing retail stores is also not a legitimate use.
Complainant also contends that Respondent’s use of BLINK logo-branded login pages to obtain consumers’ personal/account information is also not a legitimate or bona fide use. See e.g., Charles Komar & Sons, Inc. v. Bates, FA1108001405374 (Forum Oct. 12, 2011) (use of the disputed domain name in connection with a phishing scam does not coincide with a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant then alleges that Respondent registered the disputed domain names in bad faith, arguing that Respondent knew about Complainant’s BLINK trademark when Respondent registered the disputed domain names since Respondent is purportedly selling Complainant’s BLINK products and displays the BLINK logo and AMAZON logo throughout the resolving websites. Thus, Respondent registered the disputed domain names with knowledge of Complainant’s rights and intended to create an association with Complainant and its products and services.
Complainant submits that Respondent’s registration of the disputed domain names with actual knowledge of Complainant’s rights is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (“[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse”).
Complainant furthermore alleges that by incorporating Complainant’s BLINK trademark in the disputed domain names, identifying itself as “BLINK”, and displaying Complainant’s BLINK Logo and AMAZON logo throughout the resolving websites, Respondent creates the false impression that its websites originate with or are endorsed or certified by Complainant and submits that this is precisely the sort of conduct that falls under Policy ¶ 4(b)(iv) and thus evidences Respondent’s bad faith registration and use of the disputed domain names. Citing MetroPCS, Inc. v. Robertson, FA0609000809749 (Forum Nov. 13, 2006) (finding bad faith where the respondent’s web site gave the false impression of being affiliated with the complainant).
Complainant adds that by using the disputed domain names that are confusingly similar to BLINK to operate online stores, Respondent is attempting to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s mark and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See V Secret Catalogue, Inc. v. Bryant Little, FA0407000301728 (Forum Sept. 2, 2004) (“Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv)”).
Additionally, Complainant submits that Respondent’s use of the disputed domain names that incorporate its BLINK mark on its competing online stores also potentially diverts and disrupts Complainant’s business and falls under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA0608000768859 (Forum Sept. 21, 2006) (use of disputed domain name to operate a competing website constitutes bad faith according to Policy ¶ 4(b)(iii)).
Complainant further submits that the WHOIS shows that Respondent is using a privacy shield to conceal the identity of the registrant of the disputed domain names which are being used for these commercial websites and argues also evidences bad faith. See Microsoft Corp. and Skype v. Contact Privacy Inc. Customer 0126766269, FA1303001491615 (Forum May 6, 2013) (“Respondent registered the disputed domain name using a privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption. That alone justifies a finding of bad faith”).
Finally, Complainant asserts that Respondent has been previously found to have acted in bad faith with respect to the domain names <blinkofhome.com>, <blinkonhome.com>, and <blinktohome.com> which targeted Complainant’s BLINK trademark and resolved to similar websites, citing Amazon Technologies, Inc. v. ling liu, FA2111001973194 (Forum Dec. 14, 2021). Complainant submits that this reflects a pattern of cybersquatting conduct and is further evidence of bad faith. See e.g., Provide Commerce, Inc. v. Jardimar Holdings Corp, FA1305001502077 (Forum June 27, 2013) (“the existence of previous UDRP decisions where Respondent was found to have registered a domain name in bad faith reveals Respondent’s pattern of cybersquatting behavior”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is an international online retailer providing its services into alia under the BLINK mark which it uses to distinguish its smart home security devices and for which it owns a portfolio of registrations including the following:
· Republic of Singapore registered trademark BLINK, registration number 40201811801Q, registered on June 18, 2018 goods and services in classes 09, 11, 12, 35, 41, 42 and 45;
· Japanese registered trademark BLINK, registered on August 14, 2020, for goods and services classes 9, 11, 12, 35, 38, 41, 42, and 45.
Complainant also owns and uses AMAZON and the AMAZON logo is trademarks and service marks for which it holds a portfolio of registrations.
Complainant has an established Internet presence, hosting official websites inter alia at <https://blinkforhome.com/> which is dedicated to its smart home security devices.
The record shows that the disputed domain names <blinkdoorbells.com> and <doorbellblink.com> were each registered on November 29, 2021, and each resolve to websites which purport to be BLINK-branded stores which prominently display Complainant’s BLINK and AMAZON marks and logos in the mastheads and content. The resolving websites also include BLINK logo-branded login pages that purport to solicit usernames and passwords from Internet visitors.
There is no information available about Respondent, except for that provided in the Compliant, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name. The registrant availed of a privacy service to conceal his identity on the published WhoIs. His identity was revealed by the Registrar in the course of this proceeding.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided convincing evidence that it has rights in the BLINK mark established by its ownership of the trademark and service mark registrations described above and its extensive use of the mark on its range of home security goods and services.
The disputed domain name <blinkdoorbells.com> consists of Complainant’s BLINK mark followed by the term “doorbells”; and the disputed domain name <doorbellblink.com> consists of Complainant’s BLINK mark proceeded by the term “doorbell”; each in combination with the gTLD extension <.com>.
Complainant’s BLINK mark is the dominant, and only distinctive element in both of the disputed domain names. The elements “doorbell” and “doorbells” are each almost identical descriptive terms.
In the circumstances of this Complaint, the gTLD extension <.com> would in each case be considered by Internet users as a necessary technical requirement for a domain name.
This Panel finds therefore that the disputed domain names <blinkdoorbells.com> and <doorbellblink.com> are each confusingly similar to the BLINK mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent has never been legitimately known as or referred to as BLINK or any variation thereof;
· the WHOIS information disclosed by the Registrar identifies Respondent as ling liu;
· Respondent is not affiliated with Complainant in any way;
· Respondent is not licensed by Complainant to use Complainant’s BLINK mark;
· Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services;
· the screen capture of the websites to which the disputed domain names resolve, which have been submitted in evidence by Complainant show that the disputed domain names resolve to fake BLINK-branded stores that prominently display the BLINK logo in the mastheads and both Complainant’s BLINK logo and its AMAZON logo in the content and there are no disclaimers and no source indicators other than Complainant’s trademarks displayed in the content of the websites;
· Respondent’s use of Complainant’s BLINK trademark in the disputed domain names and the BLINK, AMAZON, BLINK logo, and AMAZON logo trademarks in this fashion at the resolving websites is calculated and likely to confuse and mislead the public as to the source or endorsement of Respondent’s websites and services which constitutes passing off and is not a fair, nominative, or otherwise legitimate use of the disputed domain names;
· Respondent’s passing off behavior precludes bona fide or legitimate use even if Respondent resells Complainant’s goods (which upon information and belief it does not) because it is well established that in order to use a goods manufacturer’s trademark in a domain name, a reseller’s website must accurately disclose the registrant's relationship with the trademark owner, which is not done in this case;
· such use of the disputed domain names that are confusingly similar to Complainant’s BLINK trademark to promote competing retail stores is also not a legitimate use; and
· Respondent’s use of BLINK logo-branded login pages to obtain consumers’ personal/account information is also not a legitimate or bona fide use.
It is well established that once our complainant makes out a prima facie case that a complainant has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has shown that it has an extensive worldwide reputation in the use of the BLINK mark on its products and services, with an established Internet presence.
It is improbable that the registrant would have chosen and registered either of the disputed domain names, without knowledge of Complainant’s BLINK mark which is the dominant and only distinctive element of the disputed domain name. The similarity of the disputed domain names to each other and the fact that they were each registered on the same date indicates that they were each registered by the same person.
On the balance of probabilities therefore, this Panel finds that each of the disputed domain names was registered in bad faith with the intention of targeting and taking predatory advantage of Complainant’s mark and goodwill in the BLINK mark.
This finding is supported by the fact that each of the disputed domain names <blinkdoorbells.com> and <doorbellblink.com> combine Complainant’s BLINK mark with the singular and plural of the word “doorbell” which is a direct reference the home security product range on which Complainant uses the trademark.
This Panel finds therefore that each of the disputed domain names were, on the balance of probabilities, registered in bad faith with knowledge of Complainant’s rights.
On the balance of probabilities, the registrant of the disputed domain name chose and registered the disputed domain name in bad faith with the intention of creating an association between the disputed domain names with Complainant and its products and services in the eyes of the public and confusing Internet users in order to divert Internet traffic seeking information about Complainant, its products and services.
The screen captures of the websites to which the disputed domain names resolve show that Respondent is identifying himself as “BLINK”, and displaying Complainant’s BLINK Logo and AMAZON logo throughout the resolving websites, thereby creating the false impression that its websites originate with or are endorsed or certified by Complainant.
Respondent is therefore using the disputed domain names in an attempt to commercially benefit, unfairly and opportunistically, by confusing Internet users so as to take predatory advantage of the goodwill associated with Complainant’s mark and divert Internet traffic.
If the stores that Respondent purports to have established at the websites to which the disputed domain names resolve, exist in fact, such use of the disputed domain names that incorporate its BLINK mark to attract custom to Respondent’s competing online stores also potentially diverts and disrupts Complainant’s business. Complainant however alleges that they do not exist and this has not been denied.
In the circumstances of this case, Respondent’s use of a privacy shield to conceal the registrant’s identity for the disputed domain names and Respondent’s failure to respond to this Complaint are also indicators of bad faith registration and use.
This Panel’s finding that the disputed domain names were registered and are being used in bad faith is further support ed by the fact that Respondent has been previously been found to have acted in bad faith with respect to <blinkofhome.com>, <blinkonhome.com>, and <blinktohome.com> which targeted Complainant’s BLINK trademark and resolved to similar websites in earlier proceedings Amazon Technologies, Inc. v. ling liu, FA2111001973194 (Forum Dec. 14, 2021) which reflects a pattern of cybersquatting conduct by Respondent.
As this Panel has found that the disputed domain names were registered and are being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that both the <blinkdoorbells.com> and <doorbellblink.com> domain names be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: January 6, 2022
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