Amazon Technologies, Inc. v. Li Xiang Li / Qing Dao Ji Xing Yong Wang Lao Ke Ji You Xian Gong Si
Claim Number: FA2206002000132
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Li Xiang Li / Qing Dao Ji Xing Yong Wang Lao Ke Ji You Xian Gong Si (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amazon-trans.com>, registered with GoDaddy.com, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 13, 2022; the Forum received payment on June 13, 2022.
On June 15, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <amazon-trans.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 June 16, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 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@amazon-trans.com. Also on June 16, 2022, 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 July 12, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is a leading online retailer offering products and services in more than 100 countries around the world. In 1994, Complainant’s Founder Jeff Bezos developed an innovative plan to sell a wide selection of books over the Internet. Complainant opened its virtual doors in July 1995, offering online retail store services featuring books via the web site <www.amazon.com>. In its first four weeks of operation, the company shipped product to customers in all 50 states and in more than 45 other countries. On May 16, 1996, less than a year after its website launched, Complainant was featured on the front page of The Wall Street Journal. In recognition of Complainant’s, in 1999—only five years after its launch—Time Magazine named Mr. Bezos “Person of the Year.” The article described Complainant as the “company everyone wants to be like”. Complainant’s website is the 3rd most-viewed website in the United States and the 11th most-viewed website globally, according to public statistics offered by Internet site ranking company similarweb. More than 29 million users have “liked” and more than 29 million users follow Complainant’s Facebook page. Complainant has more than 3 million followers on Twitter. Complainant has more than 300 million active customer accounts. Complainant has rights in the AMAZON mark through its registration with multiple agencies around the world, including in United States in 1997. The mark is famous.
Complainant alleges that the disputed domain name is identical or confusingly similar to its AMAZON mark as it incorporates the mark in its entirety while merely adding the generic or descriptive term “trans”, a hyphen, and the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its AMAZON mark in any way. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for a legitimate noncommercial or fair use. The disputed domain name does not resolve to an active website; Respondent uses it to pass off as Complainant in emails which purport to offer competing services. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent disrupts Complainant’s business while passing off as Complainant for commercial benefit. Additionally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the AMAZON mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark AMAZON dating back to 1997 and uses it to market its online retail business, which includes shipping services. The mark is famous.
The disputed domain name was registered in 2021.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name does not resolve to an active website. It is used in emails that purport to offer services that compete with those of Complainant.
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”).
The disputed domain name incorporates Complainant’s AMAZON mark in its entirety, merely adding the generic/descriptive term “trans”, a hyphen, and the “.com” generic top-level domain (“gTLD”). Under Policy ¶ 4(a)(i), adding a generic or descriptive term, and a hyphen, to a mark is insufficient to differentiate a domain name from the mark it incorporates. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). Thus the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). Here, the WHOIS information identifies the registrant of the disputed domain name as “Li Xiang Li / Qing Dao Ji Xing Yong Wang Lao Ke Ji You Xian Gong S”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The disputed domain name does not resolve to an active website. Under Policy ¶¶ 4(c)(i) and (iii), inactively holding a disputed domain name does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Therefore the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent uses the disputed domain name in emails that purport to offer services that compete with those of Complainant, namely alternative shipping services. Under Policy ¶¶ 4(c)(i) and (iii), passing off as a complainant to offer competing services does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Amazon Technologies, Inc. v. Lin, FA1301001480702 (Forum Feb. 26, 2013) (“Respondent’s use of the disputed domain name to offer competing goods or services is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”); see also Marvin Lumber and Cedar Co. v. Chan, FA1205001442493 (Forum June 7, 2012) (finding that “sell[ing] products and services in direct competition with those that Complainant offers” was not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Acument Intellectual Props., LLC v. Aaron's General Store.com, FA1009001348931 (Forum Nov. 8 2010) (“Such usage improperly leverages the goodwill of the brand name toward the end of selling product in competition with it”). Thus, on this ground also, the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
And, for all the above reasons, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to purport to offer competing services. Thus Respondent has attempted to benefit commercially from the goodwill associated with Complainant’s mark, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶¶ 4(b)(iii) and (iv). See V Secret Catalogue, Inc. v. 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)”); see also Microsoft Corp. v. Lafont, FA1009001349611 (Forum Nov. 9, 2009) (“intentional appropriation of Complainant’s mark to mislead Internet users and subsequently profit from them reveals bad faith registration and use under Policy ¶ 4(b)(iv)”); see also Crocs, Inc. v. Chustz, FA0706001002536 (Forum July 24, 2007) (finding bad faith where respondent’s use of complainant’s mark in its domain was “capitalizing on the illusion of direct affiliation with Complainant’s business and goodwill”); see also Microsoft Corp. v. Lorge, FA1103001380106 (Forum Apr. 25, 2011) (featuring complainant’s competitors may cause some Internet users to purchase products from a competitor instead of from the Complainant, which disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii)); see also Amazon Technologies, Inc. v. Lee, FA1612001708538 (Forum Dec. 28, 2016) (“By promoting competing/alternative online retail businesses … Respondent seeks to divert and disrupt Complainant’s business and falls under Policy ¶ 4(b)(iii)”). Thus the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s famous mark: Respondent purports to offer shipping services as an alternative to those provided by Complainant. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under 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 the <amazon-trans.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 12, 2022
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