Amazon Technologies, Inc. v. LLC "Triumph-Media»
Claim Number: FA2001001877978
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, United States. Respondent is LLC "Triumph-Media» (“Respondent”), represented by Andrey Shishkin, Moscow, Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alexa-skills.store>, registered with Registrar of Domain Names REG.RU 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.
Lars Karnøe as Panelist.
LANGUAGE OF THE PROCEEDINGS
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Russian language Registration Agreement.
It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language - See i.e. Compl. Ex. G. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Complainant submitted a Complaint to the Forum electronically on January 7, 2020; the Forum received payment on January 7, 2020.
On January 9, 2020, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <alexa-skills.store> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU 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 January 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2020 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@alexa-skills.store. Also on January 13, 2020, 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.
A timely Response was received and determined to be complete on February 1, 2020.
An Additional Submission by the Complainant was received on 3 February 2020 with certification that a true and correct copy of the Additional Submission was sent via email to Respondent at the email address 944677@mail.ru. In the view of this Panel, the Additional Submission complies with Supplemental Rule 7.
On 4 February 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lars Karnøe 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Amazon, is one of the world’s leading online retailers. Notably, Complainant is the provider of the Alexa smart devices. Complainant has rights in the ALEXA mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,181,470 registered on Aug. 11, 1998). See Compl. Ex. E. Respondent’s <alexa-skills.store> domain name is confusingly similar to Complainant’s as it includes the ALEXA mark in its entirety, adding a hyphen, the generic term “skills,” and the “.store” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <alexa-skills.store> domain name. Respondent is not commonly known by the disputed domain name and Respondent is not a licensee or authorized to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent passes off as Complainant and operates a competing Alexa store.
Respondent registered and uses the <alexa-skills.store> domain name in bad faith. Respondent passes off as Complainant and diverts Internet users to its competing Alexa store. Further, Respondent had actual or constructive knowledge of Complainant’s rights in the ALEXA mark prior to its registration of the disputed domain name.
B. Respondent
Respondent is located in Russia. Respondent registered the <alexa-skills.store> domain name on November 27, 2019 to create an independent database and search function for Alexa skills to develop a community of Alexa skills users. Respondent acknowledges Complainant’s rights in the ALEXA mark. However, Respondent contends “alexa” is a commonly used word and Respondent did not register the disputed domain name to be confusingly similar to Complainant.
Respondent alleges it has rights and legitimate interests in the <alexa-skills.store> domain name as Respondent has not received commercial gain from the disputed domain name and there have been no visitors to the site.
Respondent did not register and use the <alexa-skills.store> domain name in bad faith. Specifically, Respondent does not make a commercial use of the disputed domain name. Further, Respondent has posted a disclaimer on its webpage that it is not affiliated with Complainant.
C. Additional Submissions
Respondent’s self-serving claims about the lack of commercial gain from disputed domains and proposals to alter the disputed domain name does not negate the bad faith registration and use. Furthermore, Respondent makes an offer to sell the disputed domain name in the filed response.
There can be no doubt that the Complainant’s trademarks – The ALEXA mark and the ALEXA logo - are well-known and famous.
Secondly, there can be no doubt that the disputed domain name was registered after the applications for the Complainant’ trademarks.
Finally, the Respondent does not dispute that the Respondent was fully aware of the ALEXA trademarks and the concept of Alexa Skills when registering the disputed domain name.
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.
Complainant asserts rights in the ALEXA mark through its registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (FORUM Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides copies of its registration of the ALEXA mark with the USPTO (e.g. Reg. No. 2,181,470 registered on Aug. 11, 1998). See Compl. Ex. E. Accordingly, the Panel finds that Complainant has established rights in the ALEXA mark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <alexa-skills.store> domain name is confusingly similar to Complainant’s as it includes the ALEXA mark in its entirety, adding a hyphen, the generic term “skills,” and the “.store” gTLD. Addition of a hyphen, generic term, and gTLD is not sufficient to distinguish a domain name for purposes of Policy ¶ 4(a)(i). See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the disputed domain name is confusingly similar to the ALEXA mark under Policy ¶ 4(a)(i).
While Respondent contends that the <alexa-skills.store> domain name is comprised of a common and generic/descriptive term and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Panel finds that the Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and that the burden therefore shifts to Respondent to show it does have rights or legitimate interests. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends Respondent lacks rights or legitimate interests in the <alexa-skills.store> domain name. Specifically, Complainant argues that Respondent is not commonly known by the disputed domain name and Respondent is not a licensee or authorized to use Complainant’s ALEXA mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel notes that a privacy service was used by Respondent, but was lifted as a result of this proceeding. As a result, the WHOIS information for the disputed domain name lists the registrant as “LLC "Triumph-Media»,” and there is no other evidence to suggest that Respondent was authorized to use the ALEXA mark. See Compl. Ex. A. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per ¶ 4(c)(ii).
Next, Complainant argues Respondent fails to use the <alexa-skills.store> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Specifically, Respondent uses the disputed domain name to pass off as Complainant and offers a competing Alexa store. A respondent’s use of a disputed domain name to pass off as a complainant and offer competing services is not a bona fide offering of goods or services nor a noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”); see also Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Complainant provides screenshots of Respondent’s disputed domain name which purportedly resolves to a webpage which uses Complainant’s mark and competes in Alexa services with Complainant by providing a list of skills Alexa technology can provide. See Compl. Ex. G. The Panel therefore find that Respondent fails to make a bona fide offering of goods or services nor a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues Respondent registered and uses the domain name <alexa-skills.store> in bad faith as Respondent disrupts and commercially benefits from the confusion created by Respondent’s use of the wholly incorporated ALEXA mark and directly competes in Alexa services with Complainant. A respondent’s use of the disputed domain name to pass off as a complainant in order to offer services in competition with Complainant is evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Complainant provides screenshots of Respondent’s disputed domain name which purportedly resolves to a webpage which uses Complainant’s mark and competes in Alexa services with Complainant by providing a list of skills Alexa technology can provide. See Compl. Ex. G. Therefore the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Additionally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the mark when the <alexa-skills.store> domain name was registered. Actual knowledge is sufficient and may be proven through a totality of circumstances per Policy ¶ 4(a)(iii). See 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 Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues Respondent’s actual knowledge of Complainant’s rights in the ALEXA mark is demonstrated by its use of Complainant’s marks, including the ALEXA logo, on the disputed domain name resolving webpage and its passing off as Complainant to offer competing Alexa services. The Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
It does not alter the findings of the Panel that the Respondent have changed the contents of the website after commencement of UDRP proceedings. See MB Financial Bank, N.A. v. MBBANK, FA0602000644517 (Forum April 4, 2006) (finding bad faith and no legitimate interest after noting “that the proper record for review of this dispute should be based on the website and Domain Name as it existed on the date the Complaint was filed, not on the post hoc website that the Respondent created after the fact”); InfoSpace, Inc. v. Sunwave Communications c/o Donna McCole, FA0309000198015 (Forum Nov. 10, 2003) (respondent’s alteration of a website following commencement of the UDRP was “contrived to prevent Complainant from succeeding, not to make a legitimate noncommercial or fair use of the domain name pursuant to Policy paragraph 4(c)(iii)”); and U-Haul Int’l, Inc. v. Affordable Web Productions, D2003-0511 (WIPO Aug. 18, 2003) (finding bad faith and no legitimate interest under the Policy where respondent replaced the original content of its website following the receipt of complainant’s cease-and-desist letter, concluding that “Respondent’s eleventh-hour effort to improve its position in this way has done nothing to avail it”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alexa-skills.store> domain name be TRANSFERRED from Respondent to Complainant.
Lars Karnøe, Panelist
Dated: 13 February 2020
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