Amazon Technologies, Inc. v. pyrite nft
Claim Number: FA2306002047355
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by David J. Diamond of Richard Law Group, Inc., Texas, USA. Respondent is pyrite nft (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <totallynotamazon.com>, registered with NameCheap, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to Forum electronically on June 2, 2023; Forum received payment on June 2, 2023.
On June 6, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <totallynotamazon.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the 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 June 8, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@totallynotamazon.com. Also on June 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.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On July 7, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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, 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the AMAZON trademark and service mark established by its ownership of its portfolio of registrations described below.
Furthermore Complainant claims that it has established rights in the mark by its extensive use of the mark in its famous retail sales platform, having more than 300 million active customer accounts and more than 200 million Amazon Prime members worldwide, providing a range of services that include a virtual currency, credit cards. payment services, and digital wallet services.
Complainant adds that since it was established in 1995, it has invested in developing its reputation and goodwill. Its worldwide expenditures on advertising and other promotional costs for 2022 were $20.6 billion. For the years 2021, 2020, 2019, 2018, 2017, 2016, 2015, 2014, and 2013, advertising costs were $16.9 billion, $10.9 billion, $11.0 billion, $8.2 billion, $6.3 billion, $5.0 billion, $3.8 billion, $3.3 billion, and $2.4 billion, respectively.
Complainant submits that its website at <www.amazon.com> is the 4th most-viewed website in the United States and the 12th most-viewed website globally according to public statistics offered by Internet site ranking company Similarweb, as evidenced by a report exhibited in an annex to the Complaint.
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s AMAZON mark, as it incorporates the mark in its entirety, adding only the non-distinctive terms “totally” and “not” followed by the generic Top Level Domain (“gTLD”) extension <.com>.
Complainant submits that the elements “totally” and “not” and gTLD extension do not sufficiently distinguish the disputed domain name for purposes of the Policy. See Int’l Bus. Mach. Corp. v. Domain Manager, Webviously, Inc., WIPO Case DIO2022-0056 (finding <notibm.io> confusingly similar to complainant’s IBM trademark “notwithstanding the additional word ‘not’”); Fenix Int’l Ltd. v. Privacy Service Provided by Withheld for Privacy ehf / Julio Medina, WIPO Case D2022-0337 (finding <notyouronlyfan.com> confusingly similar to complainant’s ONLYFANS trademark); and Abbott Labs v. Whois Svc., FA0903001254682 (Forum May 14, 2009) (“the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”).
See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition § 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”); id. § 1.13 (“A domain name consisting of a trademark and a negative or pejorative term . . . is considered confusingly similar to the complainant’s trademark for the purpose of satisfying standing under the first element.”).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; and that Respondent is not making a noncommercial fair use of the disputed domain name; and Respondent has never been legitimately known as or referred to as AMAZON or any variation thereof.
Complainant adds that Respondent is not commonly known by AMAZON or any variation thereof, and the WHOIS information for the disputed domain name as disclosed by the Registrar identifies Respondent as pyrite nft.
Complainant asserts that Respondent is not affiliated with Complainant in any way, adding that Respondent is not licensed by Complainant to use Complainant’s AMAZON trademark.
Furthermore Complainant asserts that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. See Broadcom Corp. v. Ibecom PLC, FA0411000361190 (Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name).
Referring to screen captures of the website to which the disputed domain name resolves, illustrated in graphics embedded within the Complaint, Complainant contends that Respondent’s website that imitates Complainant’s website in a number of respects including through the use of close variants of Complainant’s logos as a favicon and in the substance of the website.
There is an addition of the letters “ks” to a close variant of Complainant’s AMAZON logo, which imitates a font used by Complainant on its website.
Furthermore, Respondent’s website invites users to “connect your wallet” and displays a numerical indicator in the top-left corner stating: “196/10000 minted” as of the filing of this Amended Complaint.
Respondent’s website displays 4 links: “Twitter,” “Discord,” “Youtube,” and “Connect Wallet” and the Twitter link directs users to the now-suspended Twitter account @notAmazonNFTees, which purportedly promoted NFTs in the form of packages bearing a close variation of the AMAZON logo.
The “Discord” link redirects users to Respondent’s website located at the disputed domain name, the “YouTube” link directs users to a “Rickroll,”1 and the “Connect Wallet” link directs users to a website located at the URL <metamask.io/download> offering the MetaMask cryptocurrency wallet.
The invitation to users to connect cryptocurrency wallets like MetaMask and the reference to minting on Respondent’s resolving website for the disputed domain are ostensibly part of Respondent’s scheme to promote NFTs, which was further substantiated in Respondent’s Twitter account prior to its suspension.
Complainant complains that there are no disclaimers distinguishing Respondent from Complainant and submits that Respondent’s use of Complainant’s AMAZON trademark in the disputed domain name, prominent use of the AMAZON trademark and close variants of the Amazon Logos, and imitation of Complainant’s <www.amazon.com> website are calculated and likely to confuse and mislead the public as to the source of Respondent’s website and services.
This, Complainant argues constitutes passing off and is not a fair, nominative, or otherwise legitimate use. Citing Motor Cars Ltd. v. Domain Adm’r, See Privacyguardian.org/namesilo, LLC, Domain Adm’r, WIPO Case D2022-1118 (“[the disputed domains] prior to the commencement of the proceeding redirected to a website ('Respondent's Website') that advertised the minting and sale of non-fungible tokens ('NFTs') under the ROLLS-ROYCE Mark. The Respondent's Website associated itself with the Complainant through the reproduction of the ROLLS-ROYCE Mark, use of the Complainant's copyrighted video, and reproduction of photos of the Complainant's automobile products. . . . [T]he Respondent has sought to use the Domain Names [<rollsroyceofficial.top> and <rollsroyceofficial.xyz>] to expressly and misleadingly associate the Respondent with the Complainant for financial gain. The use of the Domain Names for the sole purpose of benefiting from the confusion between the Domain Names and the ROLLS-ROYCE Mark is not, on its face, a bona fide offering of goods or services or for a legitimate noncommercial use.”).
In addition, Complainant submits that Respondent’s use of a domain name confusingly similar to Complainant’s AMAZON mark to promote alternative financial services is not a bona fide or legitimate or fair use. See, e.g. 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).
Complainant adds that the inclusion of “totallynot” in the disputed domain name fails to create any legitimate interest or right under the Policy.
Complainant next alleges that the disputed domain name was registered and is being used in bad faith, arguing that when Respondent registered the disputed domain name, Complainant’s AMAZON Mark was well-known and famous. Furthermore, since the resolving website for the disputed domain name displays close variants of Complainant’s Amazon Logos and mimics the landing page of Complainant’s Amazon.com website, it is clear that Respondent registered the disputed domain name with knowledge of Complainant’s rights and intended to create an association with Complainant and its products and services.
Respondent’s registration of the disputed domain name with actual knowledge of Complainant’s rights is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (“[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse”).
By incorporating Complainant’s famous AMAZON trademark in the disputed domain name and incorporating Complainant’s AMAZON trademark and close variants of Complainant’s AMAZON logos as Respondent’s identity, brand, and logo at the resolving website, Respondent creates the false impression that its website originates with or is associated with Complainant.
Furthermore, Complainant submits that Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s trademarks by using a domain name confusingly similar to Complainant’s AMAZON trademark to promote Respondent’s NFTs, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶ 4(b)(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)”).
It is further contended that promoting Respondent’s alternative financial services using Complainant’s AMAZON trademark also potentially diverts and disrupts Complainant’s business and falls under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA0608000768859 (Forum Sep. 21, 2006) (use of disputed domain name to operate a competing website constitutes bad faith according to Policy ¶ 4(b)(iii)).
The Complainant adds that the inclusion of “totallynot” in the disputed domain name fails to dispel Respondent’s bad faith, arguing that even where, unlike here, the inclusion of negative words like “not” in disputed domains is coupled with actual disclaimers in respondents’ resolving websites, panels have nonetheless found bad faith registration and use under the Policy. See Int’l Bus. Mach. Corp. v. Domain Manager, Webviously, Inc., WIPO Case DIO2022-0056 (WIPO Jan. 27, 2023) (finding bad faith registration and use of the disputed domain <notibm.io> after noting that “the mere existence of the disclaimer on the webpage (mentioned in the ‘Factual Background’ section) cannot cure such bad faith, considering the overall circumstances of this case”).
Finally Complainant submits that Respondent’s use of a WHOIS privacy shield for a commercial website also evidences bad faith. Microsoft Corp. and Skype v. Contact Privacy Inc. Customer 0126766269, FA1303001491615 (Forum May 6, 2013) (“Respondent registered the disputed domain name using a privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption. That alone justifies a finding of bad faith”); and Phoenix Niesley-Lindgren Watt v. Contact, Privacy Inc., Customer 0150049249, FA1808001800231 (Forum Sept. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the famous online retail sales platform providing services using the AMAZON and AMAZON.COM trademarks which are registered within a large international portfolio including the following which are registered in the United States:
· United States registered service mark AMAZON, registration number 2,078,496, registered on the Principal Register on July 15, 1997 for services in international class 42;
· United States registered service mark AMAZON, registration number 2,657,226 registered on the Principal Register on December 3, 2002 for services in international class class 42;
· United States registered service mark AMAZON, registration number 2,738,837, registered on the Principal Register on July 15, 2003 for services in international class 38;
· United States registered service mark AMAZON, registration number 2, 738,838, registered on the Principal Register on July 25, 2003 for services in international class 39;
· United States registered service mark AMAZON, registration number 2, 832,943, registered on the Principal Register on April 13, 2004 for services in international class 35;
· United States registered service mark AMAZON, registration number 2,857,590, registered on the Principal Register on June 29, 2004 for services in international class 9.
Complainant has an established Internet presence and has maintained its online retail platform at <www.amazon.com> since 1995.
The disputed domain name was registered on April 4, 2023 and resolves to a website that purports to offer services which are competitive with Complainant, and displays content that includes a favicon and logo that are similar to those of Complainant.
There is no information available about Respondent except for that provided in the Complaint, as amended, the Registrar’s WhoIs and the information provided by the Respondent in response to the request by the Forum for details of the registration of the disputed domain name in the course of this proceeding.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant’s Rights
Complainant has provided convincing, uncontested evidence that it has rights in the AMAZON mark, established by the ownership of the portfolio of trademark registrations described above. Furthermore the Complainant’s uncontested evidence is that it has acquired a substantial protectable goodwill by extensive use and promotion of the mark and its website at <www.amazon.com>.
Confusing Similarity
The disputed domain name <totallynotamazon.com> consists of Complainant’s AMAZON mark in its entirety in combination with the terms “totally” and “not” and the gTLD <.com>.
Complainant’s AMAZON mark is the dominant and only distinctive element in the disputed domain name.
Notwithstanding that the elements “totally” and “not” are in combination a denial of any association between the disputed domain name and Complainant’s AMAZON mark, the presence of the mark in its entirey as the only distinctive element within the disputed domain name is the deciding factor.
The principal to be applied to the addition of the words “totally not” to the trademark, should be the similar to the approach to be taken where the domain name at issue is a combination of a trademark with a perjorative term such as “sucks”, because in each case domain name at issue is contrived to attract Internet traffic by using the incorporated trademark to create confusion.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) explains that panels have taken the view that:
“[a] domain name consisting of a trademark and a negative or pejorative term (such as <[trademark]sucks.com>, <[trademark]구려.com>, <[trademark]吸.com>, or even <trademark.sucks>) is considered confusingly similar to the complainant’s trademark for the purpose of satisfying standing under the first element. The merits of such cases, in particular as to any potential fair use, are typically decided under the second and third elements….
Panels have thereby observed that permitting such standing avoids gaming scenarios whereby appending a “sucks variation” would potentially see such cases fall outside the reach of the UDRP.”
Similarly, the gTLD extension <.com> does not prevent a finding of confusing similarity as the circumstances of this proceeding, it would be considered to be a necessary technical requirement for a domain name registration.
This Panel finds therefore that the disputed domain name is confusingly similar to the AMAZON mark, and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services;
· Respondent is not making a noncommercial fair use of the disputed domain name;
· Respondent has never been legitimately known as or referred to as AMAZON or any variation thereof;
· Respondent is not commonly known by AMAZON or any variation thereof.
· the WHOIS information for the disputed domain name, as disclosed by the Registrar, identifies Respondent as pyrite nft;
· Respondent is not affiliated with Complainant in any way;
· Respondent is not licensed by Complainant to use Complainant’s AMAZON trademark;
· Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services;
· screen captures of the website to which the disputed domain name resolves which are illustrated in graphics within the Complaint, show that Respondent’s website that imitates Complainant’s website in a number of respects including through the use of close variants of Complainant’s logos as a favicon and in the substance of the website including the addition of the letters “ks” to a close variant of Complainant’s AMAZON Logo, which imitates Complainant’s font for the AMAZON component.
· Respondent’s website invites users to “connect your wallet” and displays a numerical indicator in the top-left corner stating: “196/10000 minted” as of the filing of this Amended Complaint.
· Respondent’s website displays 4 links: “Twitter,” “Discord,” “Youtube,” and “Connect Wallet” and the Twitter link directs users to the now-suspended Twitter account @notAmazonNFTees, which purportedly promoted NFTs in the form of packages bearing a close variation of the AMAZON logo;
· the “Discord” link redirects users to Respondent’s website located at the disputed domain name, the “YouTube” link directs users to a “Rickroll,” and the “Connect Wallet” link directs users to a website located at the URL <metamask.io/download> offering the MetaMask cryptocurrency wallet;
· the invitation to users to connect cryptocurrency wallets like MetaMask and the reference to minting on Respondent’s resolving website for the disputed domain are ostensibly part of Respondent’s scheme to promote NFTs, which was further substantiated in Respondent’s Twitter account prior to its suspension;
· such prominent use by Respondent of Complainant’s AMAZON trademark in the disputed domain name, the prominent use of the AMAZON trademark and close variants of the AMAZON logos, and the imitation of Complainant’s <www.amazon.com> website are calculated and likely to confuse and mislead the public as to the source of Respondent’s website and services, which constitutes passing off and is not a fair, nominative, or otherwise legitimate use;
· Respondent’s use of the disputed domain name which is confusingly similar to Complainant’s AMAZON mark to promote alternative financial services is not a bona fide or legitimate or fair use; and
· the inclusion of “totallynot” in the disputed domain name fails to create any legitimate interest or right, or a bona fide offering of goods or services under the Policy.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has adduced clear and convincing, uncontested evidence that it has trademark and service mark rights in the AMAZON mark which predate the registration and first use of the disputed domain name on on April 4, 2023.
It is most improbable that the disputed domain name which is composed of only the AMAZON mark and the words “totally not” was chosen and registered without actual knowledge of Complainant, its name, its AMAZON mark and its famous website at <www,amazon.com>.
In fact the domain name itself shows that the registrant had actual knowledge of Complainant because it reads as a denial that the disputed domain name is associated with Complainant because it infers that the website to which it resolves it is “totally not” Complainant.
This Panel finds therefore that the disputed domain name was chosen and registered in bad faith, with Complainant’s mark in mind in order to attract and divert Internet traffic intended for Complainant’s website so that the registrant could take predatory advantage of Complainant’s goodwill and reputation.
The evidence shows that Respondent is using the disputed domain name to create an initial interest confusion with Complainant’s mark with the intention of attracting, initially confusing, and misdirecting Internet users to Respondent’s website.
The presence of Complainant’s AMAZON mark in its entirey within the disputed domain name is clearly calculated to attract Internet users for the unauthorized benefit of Respondent. Furthermore the use of Complainant’s mark within the disputed domain name associates the website to which it resolves and the financial services which Respondent purports to offer with Complainant. Complainant offers financial services and so to that extent Respondent is using Complainant’s mark to present competing financial services to the public.
Such use of Complainant’s mark within the disputed domain name which resolves to Respondent’s competing website offering products similar to those offered by Complainant constitutes predatory use of Complainant’s mark and of the disputed domain name in bad faith.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy paragraph 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 <totallynotamazon.com> domain name be TRANSFERRED from Respondent to Complainant.
____________________________________
James Bridgeman SC, Panelist
Dated: July 9, 2023
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