Amazon Technologies, Inc. v. Alex / OctaLogo / Muneeb Khan / Junaid Mansoor / Hasan Abbas / Digi Devices LLC / Roman Siddiqui
Claim Number: FA2303002034427
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., USA. Respondent is Alex / OctaLogo / Muneeb Khan / Junaid Mansoor / Hasan Abbas / Digi Devices LLC / Roman Siddiqui (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <amazonbookpublication.com>, <amazon-publications.com>, <amazonpublishingcenter.com>, <amazonpublishingcompany.com>, <amazonpublishinghub.com>, <amazonpublishingpros.com>, <kindlepublishersinc.com>, <kindlebookwriters.com>, registered with Godaddy.Com, Llc; Pdr Ltd. D/B/A Publicdomainregistry.Com; Namecheap, Inc.; Launchpad.Com Inc..
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 Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on March 3, 2023; Forum received payment on March 3, 2023.
On March 6, 2023, Godaddy.Com, Llc; Pdr Ltd. D/B/A Publicdomainregistry.Com; Namecheap, Inc.; Launchpad.Com Inc., Namecheap Inc confirmed by e-mail to Forum that the <amazonbookpublication.com>, <amazon-publications.com>, <amazonpublishingcenter.com>, <amazonpublishingcompany.com>, <amazonpublishinghub.com>, <amazonpublishingpros.com>, <kindlepublishersinc.com>, <kindlebookwriters.com> domain names are registered with Godaddy.Com, Llc; Pdr Ltd. D/B/A Publicdomainregistry.Com; Namecheap, Inc.; Launchpad.Com Inc., Namecheap Inc and that Respondent is the current registrant of the names. Godaddy.Com, Llc; Pdr Ltd. D/B/A Publicdomainregistry.Com; Namecheap, Inc.; Launchpad.Com Inc., Namecheap Inc has verified that Respondent is bound by the Godaddy.Com, Llc; Pdr Ltd. D/B/A Publicdomainregistry.Com; Namecheap, Inc.; Launchpad.Com Inc., Namecheap Inc 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 March 8, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 2023 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@amazonbookpublication.com, postmaster@amazon-publications.com, postmaster@amazonpublishingcenter.com, postmaster@amazonpublishingcompany.com, postmaster@amazonpublishinghub.com, postmaster@amazonpublishingpros.com, postmaster@kindlepublishersinc.com, postmaster@kindlebookwriters.com. Also on March 8, 2023, 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.
APPOINTMENT OF THE PANEL
On April5, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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 other than the Respondent Roman Siddiqui.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is a retailer with a wide selection of products and services, including Amazon Publishing, a print, digital, and audio book publishing service.
The Complainant seeks transfer from the Respondent to itself of certain domain names. The domain names at issue and the dates of their registration are as follows:
(a)<amazonbookpublication.com>: registered by Alex, alex.walker@octalogo.com on January 23, 2023. See Compl. Exhibit A1.
(b) <amazon-publications.com>: registered by Hasan Abbas on January 19, 2023. See Compl. Exhibit A2.
(c) <amazonpublishingcenter.com>: registered by Muneeb Khan on June 28, 2022. See Compl. Exhibit A3.
(d)<amazonpublishingcompany.com>: registered by Alex, alex.walker@octalogo.com on August 18, 2022. See Compl. Exhibit A4.
(e) <amazonpublishinghub.com>: registered by Junaid Mansoor on April 7, 2022. See Compl. Exhibit A5.
(f)<amazonpublishingpros.com>: registered by Alex, alex.walker@octalogo.com on September 29, 2022. See Compl. Exhibit A6.
(g) <kindlepublishersinc.com>: registered by Roman Siddiqui on July 5, 2022. See Compl. A7.
(h) <kindlebookwriters.com>: registered by Roman Siddiqui November 4, 2022. See Compl. A8.
Complainant has rights in the AMAZON and related marks through numerous trademark registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g., AMAZON USPTO Reg. No. 2,078,496, which was registered on July 15, 1997; and AMAZON.COM USPTO Reg. No. 2,837138, which was registered on April 27, 2004). See Compl. Exhibit I.
Complainant also has rights in the KINDLE mark through trademark registrations with the USPTO (e.g., Reg. No. 3,694,267, which was registered on October 6, 2009). See id.
Respondent’s disputed domain names are confusingly similar to Complainant’s marks since they all include an entire trademark, namely the AMAZON or the KINDLE mark, and add generic/descriptive words and expressions, namely “publication”, “publications”, “publishinghub”, “bookpublication”, “publishingcompany”, ”publishingpros”, “publishingcenter”, ”bookwriters”, and “publishersinc”, and the “.com” gTLD.
Respondent lacks rights or legitimate interests in the disputed domain names since Respondent is not licensed or authorized to use Complainant’s AMAZON or KINDLE marks and is not commonly known by the disputed domain names. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent is passing itself off as and falsely associating itself with Complainant. Respondent also uses the domain names to compete with Complainant. Further, Respondent made changes to the use of the disputed domain names after the commencement of this proceeding.
Respondent registered and uses the disputed domain names in bad faith. That is because, first, Respondent has a pattern of bad faith use and registration, having been involved in prior UDRP proceedings and registering multiple disputed domain names in the current case. Next, Respondent competes with Complainant and promotes Complainant’s competitors. Further, Respondent capitalizes on Complainant’s goodwill by falsely portraying itself as or as associated with Complainant.
Respondent also had actual knowledge of Complainant’s rights in the AMAZON and KINDLE marks, showing bad faith registration of the domain names.
Complainant has elaborated on the foregoing submissions with details of the registration of each of the disputed domain names, references to the contents of the websites to which the domain names resolve and reasons why, in Complainant’s submission, the domain names are owned or controlled by the same person or entity and can be considered in a single complaint.
B. Respondent
Respondent Roman Siddiqui made the following contentions.
Respondent Roman Siddiqui submits that the proceeding is outside the jurisdiction of the Panel because, in breach of Rule 3(c) of the UDRP Rules, it relates to more than one domain name and the domain names at issue are not registered by the same domain name holder. In particular, Respondent disputes that the domain names are under common control and denies any affiliation with the other respondents. Therefore, the separate claims against the named Respondents should not be consolidated as Complainant seeks. The Complaint should therefore be dismissed.
The Respondent Roman Siddiqui elaborates on the foregoing submission in detail and has adduced six exhibits submitted to the Panel. In those submissions, he acknowledges ownership of the <kindlepublishersinc.com> and <kindlebookwriters.com> domain names but argues that the other domain names have been improperly joined in this proceeding. Respondent submits that the other disputed domain names have different WHOIS information from each other, showing that they are not under common control and that it cannot be concluded that they have been registered by the same domain name holder. See Compl. A9, being Registrar supplied WHOIS information.
In so far as the <kindlepublishersinc.com> and <kindlebookwriters.com> domain names have similar attributes to the other disputed domain names, such as promoting publishing services and the AMAZON logo, that is explained by the fact that Respondent is in the publishing business and works with Complainant’s publishing service.
Further, Respondent submits that the sites are too dissimilar to be under common control and similar elements are a result of open-source and commonly used design elements which are also used in third-party sites. See Resp. Annexes D and E.
Moreover, “consolidation” of the separate disputes would unduly prejudice him.
The Respondent Siddiqui also argues in detail that if the disputes are consolidated, the Panel should deny the remedies requested by the Complainant, because his two disputed domain names are neither identical nor confusingly similar to the KINDLE trademarks, he has legitimate business interests in those domain names and they were not registered and used in bad faith.
The other Respondents, who are the named registrants of the Amazon domain names, have not filed Responses.
ADDITIONAL SUBMISSIONS
The Complainant filed an additional submission dated March 30, 2023.
Rule 7 of The Forum’s Supplemental Rules to ICANN’S Uniform Domain Name Dispute Resolution Policy provides inter alia that (i)t is within the discretion of the Panel to accept or consider additional unsolicited submission(s).” As the additional submission replied to new material submitted by the Respondent Saddiqui in the Response, the Panel exercises its discretion to accept and consider the additional submission of Complainant.
In that submission, the Complainant submitted that Respondent Siddiqui’s Response was not in compliance with Forum’s Supplemental Rule 5(a) because it exceeded 15 pages; elaborated by reference to relevant websites and other indications that in its submission the domain names are owned or controlled by the same person or entity and can be considered in a single complaint; that the Respondent does not have a right or legitimate interest in the domain names; that they were registered and used in bad faith and that they should be transferred to the Complainant.
In addition, it submitted that the Respondent’s purported disclaimers were added after the proceeding began, and that the Respondent had removed the Complainant Amazon’s Publishing Logo from its website.
THE FORM OF THE RESPONSE FROM THE NAMED RESPONDENT ROMAN SIDDIQUI
It will be seen that this proceeding concerns eight domain names. Six of those domain names begin with the word “amazon” and two of them begin with the word “kindle”. The former obviously invoke Complainant and will be referred to as “the Amazon domain names”. The latter relate to Kindle which is a service of the Complainant by means of its Kindle Store for e-books and Kindle Direct Publishing, and those domain names will be referred to as “the Kindle domain names”.
As noted, Roman Siddiqui is the named Respondent whom Complainant submits is the registrant of the Kindle domain names. As appears above, Complainant served Mr. Siddiqui with the Complainant, its Annexes and the Written Notice of the Complainant.
On March 28, 2023, Forum received from Mr. Siddiqui a document headed “Response”. However, the document was given the heading “World Intellectual Property Organization Arbitration and Mediation Center” and recites that the proceeding is being conducted inter alia under “the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolutioin Policy (the Supplemental Rules).”
It is true that at one point (on consolidation) the Response paraphrases what is referred to as “Forum Supplemental Rules (c)(i)-(ii)”, but for some reason
the Response subsequently relies on three rules on communications, namely “3,7,12”, which are WIPO rules and not Forum rules. However, it then reverts to citing WIPO rules under “Certification”, where it states “The Respondent agrees that, except in respect of deliberate wrongdoing, an Administrative Panel, the World Intellectual Property Organization and the Center shall not be liable to a party, a concerned registrar of ICANN for any act or omission in connection with the administrative proceeding. (emphasis added).”
The Panel is not aware how these disparities arose and presumably they are simply mistakes. Mr. Siddiqui is not legally represented, and the Panel will take that into account throughout this decision, although he seems from the length of the Response and its contents to be familiar with the field and to have had no difficulty in finding prior UDRP decisions and presenting argument on the issues. In all the circumstances, the Panel will allow the matter to proceed on the basis of the Response as presented and by noting that the proceeding is properly within the jurisdiction of Forum. However, the matters referred to are important and go to the jurisdiction of the Panel and to whether all parties have a proper understanding of the process. The Panel therefore takes this opportunity to remind parties and others that they must work within the correct rules and other procedural requirements and that they should seek advice if there is anything they do not understand.
THE LENGTH OF THE RESPONSE
As noted, the Complainant filed its Additional Submission on March 30, 2023.
In it, the Complainant submitted, inter alia, as follows:
“Forum Supplemental Rule 5(a) states, “The Response … may not exceed fifteen (15) pages.” The Response is 18 pages, not including Annexes. This prejudices Complainant because Complainant followed Forum page length rules and was forced to choose which arguments to include in the Amended Complaint and which to omit (it is not a coincidence that the Amended Complaint is exactly 15 pages). The Response should therefore be disregarded.”
The Complainant is right in drawing attention to this matter. The limits on various stages of the proceeding are included for a good reason, which is that the UDRP proceeding is an administrative rather than a judicial proceeding intended to be reasonably quick, reasonably economical, free from legalism and offering limited remedies confined to transfer of the disputed domain name or dismissal of proceedings so that the domain name then remains with the registrant. The procedure does not lend itself to endless legal argument and does not invite or allow the pursuit of wider issues such as general commercial disputes which have no, or only peripheral, connection with domain names. To date, the system has worked well. Obviously, an important feature of any such system is that submissions should be limited in length and that those limitations should be enforced. If they are not enforced, it could put the integrity of the UDRP system at risk.
Moreover, there is a lot to be said for the Complainant’s point that parties, properly advised, and who comply with the length restrictions, as the Complainant has done in this case, are prejudiced if they comply with the restrictions but the other party does not. The Panel has taken this into account.
As has been noted, the only Respondent who is defending this proceeding, Roman Siddiqui, is not legally represented and the Panel takes that into account. The Panel also takes into account that although the limit for Responses is 15 pages, Mr. Siddiqui’s Response is “only” 18 pages and it must at least be said that each page takes the matter forward and there is little if any repetition. The Response is also not otherwise formally deficient. There is also a lot to be said for making a decision on the issues in this proceeding now, with all parties having had the opportunity to put forward their respective arguments.
Taking all of those matters into account, the Panel will therefore accept the Response as it is and will take it into account in its decision. The Panel, however, takes this opportunity of reminding parties and their advisers of the limitations set out in the providers’ Supplemental Rules and their obligation to comply with those rules.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
The first substantive submission made by the Complainant is that the Panel should find that the proceeding has been properly brought and that it is within the jurisdiction of the Panel. In his Response, the Respondent Roman Siddiqui has rejected that submission and has elaborated on his reasons for doing so. In return, the Complainant has repeated and elaborated on its submission.
The issue arises because of the provision in Rule 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), that is, the Rules made by ICANN for the conduct of UDRP proceedings, not the provider’s Supplemental Rules that have just been discussed.
Rule 3(c) of the ICANN Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The present case concerns more than one domain name, namely eight domain names. Therefore, the Complaint will be a valid one if all of the domain names are registered by the same domain name holder. If they are not all registered by the one party, the Panel would then be obliged, under the Forum’s Supplemental Rule 4(c), to determine which if any domain names were commonly owned and elect which Respondent should be proceeded against, as a UDRP decision can proceed against only one Respondent. The Panel would then be required to dismiss the Complaint in relation to the domain names not commonly owned by the chosen Respondent.
Complainant has alleged that the domain names are effectively controlled by the same person and/or entity, which is operating under several aliases. Therefore, it is said, all of the domain names are in fact registered by the same domain name holder. The argument is that the single domain name holder registered them all because it operated under several aliases, so that although there may be different names on the record as registrants, in each case the same person or entity controlled the registration and therefore registered each domain name.
That principle has been widely accepted. But, of course, how it works out in any given case depends on whether the submission can be proved by evidence. The Complainant says that it can be proved by evidence in the present case. The Respondent says that it cannot. So the Panel must now decide if it has been proved by evidence that, on the balance of probabilities the eight disputed domain names have been “registered by the same domain name holder” or not.
THE PANEL’S DECISION ON THIS ISSUE
As will be seen, the Panel finds that it has been proved that all eight domain names have been registered by the same domain name holder. The Panel will now give its reasons for coming to its conclusion.
Accordingly, the Panel notes that the word “Respondent” is used to refer to that domain name holder and, where specified, to one or more of the named Respondents.
(a) The Complainant first examined all six of the Amazon domain names and submitted that they all have a common feature, namely the use of the Complainant’s AMAZON trademark and that this fact by itself shows there is a commonality of interest behind all six registrations and that this is likely to have been engineered by the one person or entity (hereafter referred to as an “entity”). The Panel agrees. The raw facts are shown by Registrar Email Verification (Pdr Ltd. D/B/A Publicdomainregistry.Com) including that the registrant of three of the six is “alex.walker@octalogo.com” (“the Alex / OctaLogo domain names”) and that the registrants of the other three Amazon domain names are three other entities, being one such entity for each of the three domain names. The Panel’s view is that the use of the AMAZON trademark at the beginning of all six domain names is an indication that the one entity registered all six domain names. The Panel therefore finds on the balance of probabilities that those domain names were registered by the same domain name holder.
(b) In the particular case of the three Alex / OctaLogo domain names, it is obvious that all three of those domain names had a single entity behind them as they have a common registrant. The Panel therefore finds that those domain names were registered by the same domain name holder.
(c) All of the Amazon domain names, as well as commencing with the word “amazon”, which clearly invokes the Complainant’s AMAZON trademark, follow the same pattern of constructing the domain name be adding one of the words “publications”, “publishinghub”, “bookpublication”, “publishing company”, “publishingpros”, and “publishing center”. One of the businesses of the Complainant is publishing. Six domain names have thus been registered invoking the Complainant and its publishing business. It is of course possible that this could have been done by six separate entities (or by Alex / OctaLogo and three other entities) making independent judgements without any other entity knowing that they were doing so, but it would be a remarkable coincidence. It is more likely than not that there was some commonality in the decision-making that led to the registration of six domain names all of which commenced with the word “amazon” and invoked one of Amazon’s business, but in all cases the same business. The Panel therefore finds for this additional reason that the Amazon domain names were registered by the same domain name holder.
(d)There is another commonality between two of the Amazon domain names, <amazon-publications.com> and <amazonbookpublication.com>. The former was registered on January 19, 2023 and the latter was registered on January 23, 2023.
(e) With respect to the two KINDLE domain names, they have common features, namely the use of the Complainant’s KINDLE trademark at the beginning of the domain names and that the remainder of the domain names invoke the function of the Kindle enterprise, namely as a facility for writers and as a publisher respectively. In any event there should be no dispute about this, as both domain names were in fact registered by the same person, the Respondent Roman Siddiqui. The record of this is to be found in the WHOIS information for <kindlepublishersinc.com> and <kindlebookwriters.com> which shows that the registrant is the same in both cases, namely Roman Siddiqui. (See Registrar Email Verification (Namecheap, Inc.). These facts show that there is a commonality of interest behind the two registrations and that this was effected by the one entity. Thus, the Kindle domain names were registered by the same domain name holder.
(f) As to any commonality between the Kindle domain names and the Amazon domain names, the Panel has already drawn attention to the comparative proximity in the time of the registration of the Kindle domain names and at least one of the Amazon domain names.
(g) In general terms, the Panel notes that the <kindlepublishersinc.com> domain name has a website and it contains references to both Amazon and Kindle in its pages. Together with the use of the word “kindle” in each domain name, this tends to suggest that there is a commonality of interest between both of the Kindle domain names and all of the Amazon domain names. Certainly, both Kindle and Amazon must have been in the minds of whoever registered all of the domain names.
(h)In particular, the Complainant has produced in tabular form and meticulous detail an analysis of the contents the resolving website for each domain name, both the Amazon domain names and the Kindle domain names. The Panel has examined this and the websites concerned closely and finds that there are remarkable similarities between them, showing that there was one hand and mind behind all of the registrations. The evidence shows that they all promote purported publishing assistance for authors; there are widespread similarities and identicalities in “Frequently Asked Questions” and their responses, including , notably, the same typing mistakes; similar assertions that the domain names are “ Partners With” Amazon Publishing, and Google graphics; substantially similar device graphics for other companies with whom the registrants of the Amazon and the Kindle domain names claim allegiance; identical photographs on the websites for some Amazon domain names and both Kindle domain names; similar and in some cases identical graphics for the “Marketing Manager” of four Amazon domain names and both Kindle domain names; and the same exhortation to “ Challenge us. We want to work with you to create the really cool stuff” on the websites for three Amazon and both Kindle domain names. The Panel finds this evidence very persuasive, despite the efforts of Respondent to negate its effect. The Panel does not accept that those efforts negate the effect of the overwhelming evidence and submissions of Complainant.
(i) The Panel has also noted that the purported disclaimers on the websites for <amazonpublishing hub.com> and the three Alex / OctaLogo domain names are exactly the same, namely:
“Disclaimer:
Amazon Book Publication is an independent entity (not connected in any way with Amazon.com) helping self-reliant authors with book publishing and marketing solutions. We believe in ethical business practices and abide by US Federal and State Laws.”
The disclaimer at <amazonpublishingcenter.com> is:
Amazon Publishing Center is an independent entity helping self-reliant authors with book publishing and marketing solutions. We believe in ethical business practices and abide by US Federal and State Laws.”
Thus, it is the same, although it omits the statement that it is not connected in any way with Amazon.com, thus suggesting to any self-reliant author who looked at all of the websites that this one, <amazonpublishingcenter.com> was in fact associated with Amazon.com.
Thus, the disclaimers on five of the six Amazon domain names are virtually the same.
The conclusion to be drawn from all of this evidence is plain and virtually beyond argument. It is that all of the disputed domain names, meaning all of the Amazon and both of the Kindle domain names are registered by the same domain name holder within the meaning of Rule 3 (c).
In that regard, the Panel’s conclusion is re-enforced by two factors. First, as will be seen later in this decision, Alex / OctaLogo or the unseen hand behind these registrations had done it all before, as is demonstrated by two prior UDRP decisions, Amazon Technologies, Inc. v. Alex / OctaLogo, FA 2211002019219 (Forum Dec. 5, 2022) concerning the domain names <amazonprohub.com> and <amazonmarketinghub.com> and Amazon Technologies, Inc v. Alex / OctaLogo, FA 2212002023898 (Forum Dec. 22, 2022), in one of which the Respondent had brazenly asked for $250,000 to settle the case.
The second is the fact that the only witnesses who could bring about a different result , if there were evidence to justify it, are the named registrants of the Amazon domain names. However, although served and presumably aware of the issues and that they are at risk of losing their domain names, they have declined to come forward and give evidence.
The Panel has given careful consideration to all of the arguments and the evidence of the Respondent Roman Siddiqui who has pointed to alleged inconsistencies in the evidence relied on by the Complainant. However, the evidence in support of the Complainant’s case and the Panel’s findings is overwhelming. The only conclusion that is open is that all of the domain names were registered by the same domain name holder within the meaning of Rule 3 (c) and the Panel so finds.
1. Complainant is a United States company that is a leading retailer of a wide variety of goods and services including a print, digital, and audio book publishing service and accompanying services provided through Amazon Publishing and the Kindle Store for e-books and Kindle Direct Publishing that allow authors to self-publish their work.
2. Complainant has established its rights in the AMAZON and related marks through numerous trademark registrations, including with the United States Patent and Trademark Office (“USPTO”) being AMAZON USPTO Reg. No. 2,078,496 registered on July 15, 1997 and AMAZON.COM USPTO Reg. No. 2,837138 registered on April 27, 2004 (“ the AMAZON marks’).
3. Complainant has established its rights in the KINDLE mark through trademark registration with the USPTO being Reg. No. 3,694,267 registered on October 6, 2009 (“the KINDLE mark”).
4. Respondent registered the disputed domain names on the respective dates specified above, all of which dates were subsequent to Complainant acquiring its rights to the AMAZON marks and the KINDLE mark.
5. The disputed domain names were registered by the same domain-name holder operating under several aliases.
6. The evidence shows that the <amazonbookpublication.com>, <amazon-publications.com>, <amazonpublishingcenter.com>, <amazonpublishingcompany.com>, <amazonpublishinghub.com>, <amazonpublishingpros.com>,<kindlepublishersinc.com> and <kindlebookwriters.com> domain names are confusingly similar to the AMAZON marks and the KINDLE mark respectively.
7. The evidence shows that Respondent has no rights or legitimate interests in the disputed domain names and that Respondent has registered and used them in bad faith.
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.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the AMAZON and KINDLE marks through registration of the marks with the the USPTO, namely by way of Reg. No. 2,078,496, on July 15, 1997, with respect to AMAZON, with respect to AMAZON.COM by way of Reg. No. 2,837138 on April 27, 2004 and with respect to KINDLE by way of USPTO registration Reg. No. 3,694,267 on October 6, 2009. See Compl. Exhibit I. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Since Complainant provides evidence of registration of the AMAZON marks and the KINDLE mark with the USPTO, the Panel finds that Complainant has demonstrated rights in the AMAZON and KINDLE marks per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s AMAZON and/or KINDLE marks. Complainant argues that the disputed domain names are confusingly similar to its AMAZON and KINDLE marks since one of the marks is entirely included in one of the domain names, and they simply add generic or descriptive terms such as “publications”, “company” and “book”), a hyphen in one case, and also the “.com” gTLD. When a disputed domain name wholly incorporates another’s mark, Panels have found that additional terms of this sort are insufficient to defeat a finding of confusing similarity: Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018). Similarly, hyphens and gTLDs may be disregarded for purposes of Policy ¶ 4(a)(i) analysis: Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004). Since Respondent adds only generic words and gTLDs to Complainant’s AMAZON and KINDLE marks, the Panel finds that each of the disputed domain names is confusingly similar to the AMAZON and KINDLE marks respectively under Policy ¶ 4(a)(i).
The named Respondent Roman Siddiqui submits that this conclusion is unwarranted in the case of the two Kindle domain names, as publishing and book writing services are not generic or descriptive of the services offered under the KINDLE trademark. That argument is not correct. The words added are in each case properly described as generic and descriptive. The point is that if a generic or descriptive word is added to a trademark, the internet user will think that the domain name as a whole is invoking the trademark. Thus, in the present case, the internet user would probably think that the two Kindle domain names are referring to publishing and book writing under the KINDLE trademark and therefore by Kindle. In any case, the evidence is that Kindle does in fact provide services relating to book writing and publishing.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests in the domain name: Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). The Panel will therefore consider if a prima facie case has been made out and, if so, whether it has been rebutted.
This issue can be looked at under several headings.
1. Commonly known
The first is the issue of whether the Respondent is commonly known by the domain name, as that can give rise to a right or legitimate interest. In other words, the domain name cannot be challenged if it is the registrant’s own name or if the registrant is commonly known by the domain name.
This defense could hardly be upheld in the case of the two Kindle domain names, as the Respondent Roman Siddiqui does not argue that his name is Kindle or that he is commonly known by that name or anything like.
The issue requires more examination in the case of the Amazon domain names, because the registrants of those domain names have not filed a Response and have not given any evidence to the Panel.
Complainant argues that those Respondents are not commonly known by the disputed Amazon domain names and Complainant has never licensed rights to or authorized them to use the AMAZON mark. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name: Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support for the view that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name: Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) The WHOIS information for <amazonbookpublication.com>, <amazon-publications.com>, <amazonpublishingcenter.com>, <amazonpublishingcompany.com>, <amazonpublishinghub.com>, and <amazonpublishingpros.com> lists the registrant as either “Alex / OctaLogo,” “Muneeb Khan,” “Junaid Mansoor / Digi Devices LLC,” or “Hasan Abbas.” See Compl. Exhibit A9. Further, there is no evidence to suggest that Respondent was authorized, licensed rights to, or otherwise permitted to use the AMAZON mark. Therefore, the Panel finds that Respondent is not commonly known by the domain name, and therefore lacks rights or legitimate interests in the disputed domain names per Policy ¶ 4(c)(ii).
2.Is there a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names?
Complainant argues that Respondent seeks to use confusingly similar domain names including the AMAZON and KINDLE marks to divert Internet traffic to websites that pass themselves off as Complainant and confuse internet users. Previous Panels have found that use of a domain name to mislead and divert customers away from a complainant to a competing supplier does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use: Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017). Panels have also declined to find a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name when a respondent diverts traffic to a site that impersonates or passes itself off as a complainant: Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) In this proceeding, Complainant provides evidence that all of the disputed domain names display the AMAZON or KINDLE marks in some capacity. See Compl. Exhibits K-Q, S; see also Compl. pp. 9-11. One of the marks and/or logos is displayed in each header as the name of Respondent’s business; several use Complainant’s black and orange color scheme; and copyright is attributed to Complainant. See id. All of the resolving websites also purport to be publishing services and provide publishing assistance, which Complainant provides under its Amazon Publishing service and its Kindle service. See id. As the Panel agrees that Respondent is passing itself off as Complainant and confusing customers by mimicking Complainant’s website, the Panel finds that Respondent making a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain names under Policy ¶¶ 4(c)(i) and (iii).
3.Competing with the Complainant.
In addition to the foregoing, Complainant contends that by registering the domain names and by using them as it has, Respondent competes with Complainant by advertising its own publishing and related services. In that regard it is in reality using the Complainant names, both Amazon and Kindle, to solicit publishing work and business for itself under the guise that it is Amazon and Kindle or using the Amazon and Kindle names and trademarks to attract business for itself. Where a respondent hosts a site that competes with Complainant by advertising or offering the same or similar goods or services, such use has been held not to satisfy Policy ¶¶ 4(c)(i) or (iii): Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016). In the present case, Respondent promotes itself as a book publisher, and also advertises third-party book and book-publishing services and similar services being offered by other companies (e.g., Scribd, iBooks). See Compl. Exhibits K-Q, S; see also Compl. pp. 9-11. All of this is additional evidence that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶¶ 4(c)(i) and (iii).
It cannot be legitimate or fair for the Respondents to register and use the Amazon and/or the Kindle domain names to pretend that it is Amazon or Kindle, that it is a partner of either of them, or to offer competing or similar services to Amazon and Kindle. And yet, this is what the Respondents have done. Indeed, it cannot be legitimate or fair for any of the Respondents to construct a website that virtually, if not unequivocally, asserts that they are Amazon or Kindle. But that again is what the Respondents have done. Moreover, they have done it clearly for profit and, with the exception of Roman Siddiqui, have not even come forward to defend what they have done.
Finally, the Respondent Siddiqui relies on the disclaimer on the Kindle sites. Depending on all the circumstances and of course depending on their terms, disclaimers may or may not sufficiently eliminate consumer confusion, although their mere existence cannot confer a right or legitimate interest: Google Inc. v. Domain Admin / Whois Privacy Corp, FA 1726692 (Forum May 16, 2017). The Respondent submits that his disclaimer is at “the top and bottom of the Domains “and that it is “prominent.” So far as the Panel can tell, there are two purported disclaimers on the Kindle sites. The first is a continuous banner in small print that moves from right to left across the screen. The Panel has looked at this many times, but it is very unhelpful. Whether for technical or other reasons, it simply cannot be read, and the Panel has no idea what it says, so it is ineffectual for a disclaimer.
The second one is prominent, as the Respondent says. Its terms are as follows:
“Disclaimer: All company logos and trademarks appearing on our website are the property of their respective owners. We are not affiliated, associated, endorsed by, or in any way officially connected with these companies or their trademarks. The use of these logos and trademarks does not imply any endorsement, affiliation, or relationship between us and the respective companies. We solely use these logos and trademarks for identification purposes only.” Annex F.
In the opinion of the Panel, this labyrinthine disclaimer has no effect at all, other than to confuse users who are likely to read it. It is pointless to devote an entire website to one assertion after another that it is Kindle and that it offers the same or similar services as Kindle offers and then to say it is not affiliated and suchlike with Kindle. That is the whole point of the Complainant’s case, that the Respondent is not affiliated with Kindle and yet the Respondent asserts that it is, and acts consistently with that assertion and seems to believe that it can so act. The Panel is therefore not prepared to say that the purported disclaimer relieves Respondent of any liability when it tries to wriggle out of what it plainly means by its website.
The purported disclaimer on the Amazon sites is no better. The Panel has already drawn attention to the curious result that the disclaimer on four of the Amazon websites states that the site is “not connected in any way with Amazon.com” but on the site at <amazonpublishingcenter.com> that statement is omitted, raising the inference that the Respondent in that case may be asserting that the site is in fact connected with Amazon.
In addition, there is a fundamental problem with the disclaimer, coming as it does after so many assertions in varying degrees of clarity that it either is Amazon, is a partner of Amazon and/or provides the same services as Amazon. The disclaimer could have denied all of those inferences, but it has not done so. Not having done so it must leave the internet user confused and by that fact alone casts doubt on whether the purported disclaimer is of any effect at all.
The Panel also finds, as Complainant submits, that the Respondent’s purported disclaimers were added after the proceeding began and that the Respondent had removed the Complainant Amazon’s Publishing Logo.
The Panel therefore finds that the purported disclaimers do not relieve any of the Respondents of any liability and that at least in the case of the Kindle domain names, the Respondent has been promoting itself by using Amazon’s Publishing Logo.
The Panel has given careful consideration to all of the arguments and the evidence of the Respondent Roman Siddiqui. However, the evidence in support of the Complainant’s case is overwhelming. The only conclusion that is open is that none of the registrants of the domain names has a right or legitimate interest in any of the domain names and the Panel so finds.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the disputed domain names in bad faith because there are multiple infringing domain names in the current proceeding and Respondent has been involved in prior UDRP proceedings where the decisions in those proceedings were adverse to the Respondents. Registration of multiple domain names targeting even a single trademark in one proceeding has been held to constitute bad faith pursuant to Policy ¶ 4(b)(ii): United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018). Involvement in previous adverse UDRP proceedings has also been found to show a pattern of bad faith: DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018).
In that regard, Complainant provides citations to two previous cases involving respondent “Alex / OctaLogo”, which is the nominal Respondent for three of the Amazon domain names in the current proceeding. The first of the two decisions is Amazon Technologies, Inc. v. Alex / OctaLogo, FA 2211002019219 (Forum Dec. 5, 2022) concerning the domain names <amazonprohub.com>and <amazonmarketinghub.com>. In that case, which the Respondent did not defend, the panel found for the Complainant Amazon on all issues, including that “Respondent uses the at-issue domain names to pass itself off as Complainant and trade off Complainant’s trademark”.
The second case is Amazon Technologies, Inc v. Alex / OctaLogo, FA 2212002023898 (Forum Dec. 22, 2022), which the Respondent did defend, but where the Panel, consisting of a different panelist, found against the Respondent on all issues. The decision was also notable for two facts: (a)that the Respondent Alex / OctaLogo made it plain that its attitude would be more accommodating on disposing of the case if it were paid $250,000; and (b) that as the domain name at issue was <amazonkindledirect.com>, it is clear that Alex / OctaLogo was aiming at Amazon’s KINDLE trademark as well as its AMAZON trademark.
These decisions, and other decisions cited in those proceedings, show that there has been a domain name campaign against the Complainant, both with respect to its AMAZON trademark and its KINDLE trademark. The Panel has no hesitation in finding that the present proceeding is a continuation of that campaign. That conclusion relates to all of the Amazon domain names and both of the Kindle domain names.
Accordingly, the Panel agrees with the Complainant’s reliance on the two previous decisions and finds that they show that the Respondent concerned registered and used the disputed domain names in bad faith.
Secondly, Complainant argues that Respondents’ bad faith registration and use are also shown by the fact that they have used the disputed domain names including, as they do, the Complainants AMAZON and KINDLE trademarks, to compete with the Complainant. A respondent’s use of a disputed domain name including a complainant’s trademark to advertise or offer the same or similar services has been found to be competing with the complainant and therefore to disrupt a complainant’s business, evincing bad faith under Policy ¶ 4(b)(iii). 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)). The Complainant submits that Respondent is using the domain names to hold itself out as a publishing service and to advertise competing publishers and/or reading platforms on the websites to which the disputed domain names resolve. See Compl. Exhibits K-Q, S. As the Panel agrees, it finds bad faith registration and use within the meaning of Policy ¶ 4(b)(iii).
Thirdly, Complainant submits that Respondent is using the domain names to trade off Complainant’s goodwill in the AMAZON and KINDLE marks, deceiving customers through including the marks in the domain names and on sites that impersonate the Complainant. Where a disputed domain name is found to be confusingly similar to a mark that is well-known and connected to goods or services, panels have accepted that the registrant of the domain name is seeking to capitalize on the complainant’s trademark, confusing consumers and attracting them for commercial gain pursuant to Policy ¶ 4(b)(iv): Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005). A respondent’s use of a domain name to attract Internet traffic to a site that passes itself off as or as affiliated a complainant will also show Policy ¶ 4(b)(iv) bad faith: Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017). As noted, Respondent’s webpages display the AMAZON or KINDLE marks and logos throughout the site and the Respondents purport to be engaged in book publishing and the provision of related goods and services. See Compl. Exhibits K-Q, S; see also Compl. pp. 9-11. As the Panel agrees that Respondent is passing itself off as Complainant and taking advantage of the AMAZON and KINDLE marks, it finds bad faith registration and use under Policy ¶ 4(b)(iv).
Fourthly, the Respondent Siddiqui submits with respect to the <kindlepublishersinc.com> and <kindlebookwriters.com> domain names that he is protected by the presence of disclaimers on his websites. Complainant submits that the existence of a disclaimer does not negate bad faith that is otherwise shown. Panels have agreed that including a disclaimer may not be sufficient to defeat a finding of bad faith. Moreover, Complainant submits that Respondent made changes to the resolving sites of <kindlepublishersinc.com> and <kindlebookwriters.com> after the proceeding commenced, specifically adding the disclaimer and removing an Amazon logo, and did not disclose this fact in the Response. Compare Compl. Exhibits Q and S (screenshots taken February 20, 2023 and March 3, 2023) with Resp. Annex F (screenshots taken March 24-25, 2023). The Panel notes that Respondent was served with the Complaint on March 8, 2023. The Panel has already given reasons why none of the disclaimers in this proceeding are effective and, even if they were, the Panel finds against the Respondent as it seems they were added after service of the Complaint. Also, the logo was removed. The Panel therefore finds bad faith registration and use pursuant to Policy ¶ 4(a)(iii) despite Respondent’s submissions on the alleged disclaimers.
Fifthly, Complainant submits that Respondent had actual knowledge of Complainant’s rights in the AMAZON and KINDLE marks when it registered the disputed domain names. Actual knowledge of a trademark is sufficient to establish a respondent’s bad faith: AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018). In support, Complainant points to the fame of the Complainant’s marks and the evidence to that effect and Respondent’s use of the AMAZON and KINDLE marks and logos on the resolving websites. As the Panel determines that Respondent had actual knowledge of Complainant’s trademarks, it finds bad faith registration under Policy ¶ 4(a)(iii).
The Panel has given careful consideration to all of the arguments and the evidence of the Respondent Roman Siddiqui. However, the evidence in support of the Complainant’s case is overwhelming. The only conclusion that is open is that all of the registrants registered and used their respective domain names in bad faith and the Panel so finds.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amazonbookpublication.com>, <amazon-publications.com>, <amazonpublishingcenter.com>, <amazonpublishingcompany.com>, <amazonpublishinghub.com>, <amazonpublishingpros.com>, <kindlepublishersinc.com>, and <kindlebookwriters.com> domain names be TRANSFERRED from the respective Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: April 10, 2023
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