Amazon.com, Inc.; and Amazon Technologies, Inc. v. shi lei
Claim Number: FA1407001568713
Complainant is Amazon.com, Inc.; and Amazon Technologies, Inc. (“Complainant”), represented by Douglas M Isenberg of The GigaLaw Firm, Douglas M Isenberg, Attorney at Law, LLC, Georgia, USA. Respondent is shi lei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amazonfirephone.us>, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 8, 2014; the National Arbitration Forum received a hard copy of the Complaint on July 9, 2014.
On July 9, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <amazonfirephone.us> domain name(s) is/are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 the U.S. Department of commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 9, 2014, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of by July 29, 2014 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 5, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 usTLD Policy, usTLD Rules, the National Arbitration 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 has rights in the AMAZON mark and uses it in a wide range of Internet media, but primarily in its operation of a website for the sale of consumer goods. Complainant owns numerous registrations for the AMAZON mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,832,943 registered on Apr. 13, 2004). Complainant also owns multiple registrations for the FIRE mark internationally, including Russia (Reg. No. 489,268 registered June 10, 2013). Respondent’s <amazonfirephone.us> domain name is confusingly similar to Complainant’s AMAZON and FIRE marks. Respondent merely adds the generic term “phone” and the addition of the country-code top-level domain (“ccTLD”) “.us.”
Respondent has no rights or legitimate interests in the <amazonfirephone.us> domain name. Complainant has not licensed or authorized Respondent to register or use any of complainant’s trademarks. Respondent is not using the disputed domain name in connection with an active website or in connection with any legitimate goods or services.
Respondent registered or is using the <amazonfirephone.us> domain name in bad faith. Respondent has a pattern of bad faith use or registrations, as evidenced by at least 14 other domain names Respondent has registered. Respondent is not making an active use of the disputed domain name. Respondent’s <amazonfirephone.us> domain name was registered by Respondent on April 2, 2014, which was days after publication of an article on the popular tech website BGR under the headline, “Insider reveals launch timing and specs for mysterious Amazon smartphone,” and the same day on which complainant filed applications to register the trademark AMAZON FIRE with the USPTO (Serial No. 86/239, 526, 86/239,533 and 86/239, 537). Respondent had knowledge of Complainant’s AMAZON and FIRE marks because Complainant’s marks are famous and, specifically, the AMAZON mark pre-dates Respondent’s registration by 19 years.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
There are two Complainants in this matter: Amazon Technologies, Inc. and Amazon.com Inc. Complainant contends that Amazon Technologies, Inc. is an affiliate of, and an intellectual property holding company for, Amazon.com, Inc. Complainant states that since these two companies are related corporate entities, it is appropriate for this Complaint to be filed on behalf of both entities.
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Amazon.com and Amazon Technologies, Inc. have a sufficient nexus to claim rights to <amazonfirephone.us> domain name. The Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other. See Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006) (“It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.”); see also Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003) (the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names). Therefore, the Panel will treat Complainants as a single entity in this proceeding. The Complainants will be collectively referred to as “Complainant.”
Complainant has rights in the AMAZON mark and uses it in a wide range of Internet media, but primarily in its operation of a website for the sale of consumer goods. Complainant owns numerous registrations for the AMAZON mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,832,943 registered on Apr. 13, 2004). Complainant also owns multiple registrations for the FIRE mark internationally, including Russia (Reg. No. 489,268 registered June 10, 2013).
Respondent, shi le, registered the <amazonfirephone.us> domain name on April 2, 2014.
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 or 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Given the similarities between the usDRP and UDRP, the Panel elects to use UDRP decisions, when and where applicable, to guide its course in deciding the merits of this dispute.
Complainant has rights in the AMAZON and FIRE marks pursuant to Policy ¶ 4(a)(i) through numerous trademark registrations. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (the complainant established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Respondent’s <amazonfirephone.us> domain name is confusingly similar to Complainant’s AMAZON and FIRE marks under Policy ¶ 4(a)(i). Respondent merely adds the generic term “phone” and the addition of the country-code top-level domain (“ccTLD”) “.us” to Complainant’s AMAZON and FIRE marks. Adding a ccTLD to a registered mark is not sufficient to differentiate the disputed domain name from that mark. See Am. Express Co. v. McWIlliam, FA 268423 (Nat. Arb. Forum July 6, 2004) (holding that the ccTLD “.us” does not negate confusing similarity under Policy ¶ 4(a)(i)). Additionally, combining multiple marks owned by a complainant results in a confusingly similar domain name. See Yahoo! Inc. v. Domain Contact 3, FA 1222420 (Nat. Arb. Forum Oct. 13, 2008) (finding that the <hotjobsyahoo.com> domain name is confusingly similar to Complainant’s HOTJOBS mark because the disputed domain name merely combined Complainant’s HOTJOBS mark with Complainant’s YAHOO! mark). Also, the addition of the generic term “phone” to the marks does not distinguish the domain name from the marks. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
There is no evidence in the record indicating that Respondent owns any service marks or trademarks that reflect the <amazonfirephone.us> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).
Complainant has not licensed or authorized respondent to register or use any of Complainant’s trademarks. The WHOIS information for the <amazonfirephone.us> domain name shows that “shi lei” is listed as the registrant. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”).
Respondent is not using the disputed domain name in connection with an active website or in connection with any legitimate goods or services. Respondent’s <amazonfirephone.us> domain name resolves to a parked website displaying links such as “The 1st True Generic,” “Top Realtors in Your Area,” “Zillow-Homes for Sale,” “Foreclosed Home- $10,000,” “How to Patent Your Idea,” and “Depositphotos Coupon.” See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names). Respondent’s use the confusingly similar <amazonfirephone.us> domain name to resolve to a website displaying links to websites that are unrelated to Complainant is not a bona fide or legitimate use under Policy ¶¶ 4(c)(ii) and (iv).
Respondent registered and is using the <amazonfirephone.us> domain name in bad faith.
Complainant alleges that Respondent has a pattern of bad faith use or registrations, as evidenced by Respondent’s registration of many other domain names that are confusingly similar to Complainant’s trademarks, including 14 domain names which are subject to a pending WIPO proceeding, Case No. D2014-1093. Since it does not appear that the WIPO case has been decided, it would not be appropriate to determine this issue in this proceeding.
Respondent is not making an active use of the <amazonfirephone.us> domain name. Respondent’s resolving website displays unrelated links. The Panel infers that Respondent is collecting pay-per-click fees from the presence of the displayed third-party links. Use of a confusingly similar domain name to resolve to a website displaying third party links that are unrelated to Complainant shows bad faith use or registration under Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s resolving website).
Respondent’s <amazonfirephone.us> domain name was registered by Respondent on April 2, 2014, which was days after publication of an article on the tech website BGR under the headline, “Insider reveals launch timing and specs for mysterious Amazon smartphone,” and the same day on which Complainant filed applications to register the trademark AMAZON FIRE with the USPTO. The panel in Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) found that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration.” The Panel finds that Respondent’s registration of the disputed domain name shows opportunistic bad faith.
Respondent had actual knowledge of Complainant’s AMAZON and FIRE marks when Respondent registered the <amazonfirephone.us> domain name. Therefore, Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. 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).
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amazonfirephone.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 15, 2014
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