DECISION
Amazon Technologies, Inc. v. Salem Merchants / Publishing Domains / Max Jeffery / Shahab Khan / James William / Logan Smith / Saqib Nizam / Zeph Bruno / Syed Hassan
Claim Number: FA2403002086811
PARTIES
Complainant is Amazon Technologies, Inc. ("Complainant"), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Salem Merchants / Publishing Domains / Max Jeffery / James William / Logan Smith / Saqib Nizam / Zeph Bruno / Syed Hassan ("Respondent"), Multiple Locations.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <amazonbookpublishersllc.com>, <amazonkdppublishers.com>, <amazonkdppublishers.net>, <amazonpublicationhub.com>, <amazonpublicationsconsultants.com>, <amazonpublicationservices.com>, <amazonpublishingnetwork.com>, <amazonpublishingprofs.com>, <amazonsmartpublishing.co>, <amazonsmartpublishing.com>, <amzbookpublishingsolutions.com>, <amzpublishingscentral.com>, <kindepublishersinc.com> and <thekindlepublishers.com>, registered with Namecheap, Inc.; Godaddy.Com, Llc; Hostinger Operations, Uab and Porkbun Llc.
PANEL
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.
Hon. Karl v. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on March 4, 2024; Forum received payment on March 4, 2024.
On March 5, 2024, Namecheap, Inc., Godaddy.Com, Llc, Hostinger Operations, Uab and Porkbun Llc confirmed by e-mail to Forum that the <amazonbookpublishersllc.com>, <amazonkdppublishers.com>, <amazonkdppublishers.net>, <amazonpublicationhub.com>, <amazonpublicationsconsultants.com>, <amazonpublicationservices.com>, <amazonpublishingnetwork.com>, <amazonpublishingprofs.com>, <amazonsmartpublishing.co>, <amazonsmartpublishing.com>, <amzbookpublishingsolutions.com>, <amzpublishingscentral.com>, <kindepublishersinc.com> and <thekindlepublishers.com> domain names are registered with Namecheap, Inc., Godaddy.Com, Llc, Hostinger Operations, Uab and Porkbun Llc and that Respondent is the current registrant of the names. Namecheap, Inc., Godaddy.Com, Llc, Hostinger Operations, Uab and Porkbun Llc have verified that Respondent is bound by the Namecheap, Inc., Godaddy.Com, Llc, Hostinger Operations, Uab and Porkbun Llc registration agreements 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 7, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 2024 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@amazonbookpublishersllc.com, postmaster@amazonkdppublishers.com, postmaster@amazonkdppublishers.net, postmaster@amazonpublicationhub.com, postmaster@amazonpublicationsconsultants.com, postmaster@amazonpublicationservices.com, postmaster@amazonpublishingnetwork.com, postmaster@amazonpublishingprofs.com, postmaster@amazonsmartpublishing.co, postmaster@amazonsmartpublishing.com, postmaster@amzbookpublishingsolutions.com, postmaster@amzpublishingscentral.com, postmaster@kindepublishersinc.com, postmaster@thekindlepublishers.com. Also on March 7, 2024, 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.
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.
On April 1, 2024, Complainant filed a notice that on March 28, 2024, in a California State civil action, Complainant served a third-party subpoena on a non-party calling for document production with respect to one of the disputed domain names. Complainant states that the civil action does not name or seek transfer of any other domain names at issue in this proceeding and does not name any nominal respondents in this proceeding as defendants. Complainant submits that this proceeding should proceed to decision since the relief sought in the present proceeding does not contradict or overlap with the civil action. See Swagelok Co. v. Elite Sales, Inc., FA 1421137, (Forum Feb. 23, 2012) ("Since there is no contradiction between the remedy sought in the present proceeding – transfer of the disputed domain name to Complainant – and the order of transfer sought in the civil action, the Panel sees no reason to suspend or terminate the proceeding, and, in exercise of its discretion, decides to proceed to a decision"); WIPO Jurisprudential Overview 3.0 § 4.14.2 ("Panels generally issue a UDRP decision on the merits even in an overlapping court-UDRP proceeding scenario where, notwithstanding the fact that a UDRP decision would not be binding on the court, the relative expediency of the UDRP versus courts is seen as a benefit to the parties.").
Based on Complainant's submissions and no opposition from Respondent, the Panel will proceed to a decision.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Respondents
Complainant alleges that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Complainant has provided evidence to support this allegation. Respondent has not contested these proceedings or this allegation. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "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 Panel finds from the uncontested allegations and evidence that the disputed domain names are controlled by the same person or entity and respondents will be referred to as "Respondent" throughout this complaint.
PARTIES' CONTENTIONS
A. Complainant
As used herein, "Complainant" or "Amazon" means Amazon Technologies, Inc. and its licensees and predecessors in interest, including but not limited to Amazon.com, Inc.
Complainant has offered retail store services and products, including Amazon Publishing and Kindle electronic reading devices on its the website <amazon.com> since 1995. Due to extensive advertising, use, and commercial success, Complainant's trademarks have become famous, and Complainant is consistently ranked as one of the most well-known and recognizable brands globally.
Respondent's disputed domain names are identical to or confusingly similar to Complainant's, AMAZON, AMAZON.COM, AMZ, or KINDLE marks. The disputed domain names domain names incorporate the AMAZON, AMAZON.COM, AMZ, or KINDLE marks in their entirety.
Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Respondent been authorized by Complainant to use the marks. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services.
Respondent registered and uses the disputed domain names in bad faith. Respondent registered and is using the disputed domain names to impersonate Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <amazonbookpublishersllc.com>, <amazonkdppublishers.com>, <amazonkdppublishers.net>, <amazonpublicationhub.com>, <amazonpublicationsconsultants.com>, <amazonpublicationservices.com>, <amazonpublishingnetwork.com>, <amazonpublishingprofs.com>, <amazonsmartpublishing.co>, <amazonsmartpublishing.com>, <amzbookpublishingsolutions.com>, <amzpublishingscentral.com>, <kindepublishersinc.com> and <thekindlepublishers.com> domain names.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").
Identical and/or Confusingly Similar
Complainant's registration of the AMAZON, AMAZON.COM, AMZ, and KINDLE marks with the United States and/or other countries establishes Complainant's rights in the mark, as "registration of a mark with a legitimate governmental authority is sufficient under the Policy to allow a rebuttable presumption of rights in the mark." See Target Brands, Inc. v JK Internet Services, FA 349108 (Forum Dec. 14, 2004). The Panel finds that Complainant has rights in the marks under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain names are identical or confusingly similar to Complainant's registered trademarks. The disputed domain names incorporate: (1) Complainant's trademarks AMAZON, AMZ, or KINDLE, or KINDE which omits the single letter "L" from KINDLE; (2) descriptive or generic terms ("book," "central," "consultants," "hub," "inc," "llc," "network," "profs," "publication," "publications," "publisher," "publishers," "publishing," "publishings," "services," "smart," "solutions," "the"); (3) for one domain, the ccTLD ".co"; and (4) for all other domains, the gTLD ".com" which is shared with AMAZON.COM. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms does not prevent a finding of confusing similarity. See Rakuten, Inc. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Matthew Connor, No Company, WIPO Case No. D2019-2983. Furthermore, the addition of a top-level domain is irrelevant for purposes of paragraph 4(a)(i) of the Policy. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs."). The Panel finds that the disputed domain names are identical or confusingly similar to Complainant's trademark.
Complainant has proved this element.
Rights or Legitimate Interests
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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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."). The Panel finds that Complainant has made a prima facie case as to each domain name.
Complaint argues that Respondent has not been licensed, contracted, or otherwise permitted by the Complainant in any way to use the AMAZON, AMAZON.COM, AMZ, or KINDLE marks or to apply for any domain names incorporating the AMAZON, AMAZON.COM, AMZ, or KINDLE marks, nor has the Complainant acquiesced in any way to such use or application of the AMAZON, AMAZON.COM, AMZ, or KINDLE marks by the Respondent. There is no evidence of fair use and there is no evidence that the Respondent is using or plans to use the AMAZON, AMAZON.COM, AMZ, or KINDLE marks or the domain names incorporating the AMAZON, AMAZON.COM, AMZ, or KINDLE marks for a bona fide offering of goods or services. Complainant also argues that Respondent has been actively using the AMAZON, AMAZON.COM, AMZ, or KINDLE marks in the disputed domain names and on the physical websites to confuse users as to their authenticity. Such unauthorized use of the AMAZON, AMAZON.COM, AMZ, or KINDLE marks is likely to trick consumers into erroneously believing that Complainant is somehow affiliated with Respondent or endorsing its commercial activities. There is no evidence of Respondent's use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the domain names in connection with any bona fide offering of goods or services. There is no evidence that Respondent has been commonly known by any of the disputed domain names.
WIPO Overview 3.0, Section 2.1 provides:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has proved this element.
Registration and Use in Bad Faith
Respondent had actual knowledge of Complainant's rights in the AMAZON, AMAZON.COM, AMZ, and KINDLE marks when it registered the disputed domain names. Respondent's prior knowledge of Complainant's AMAZON, AMAZON.COM, AMZ, and KINDLE marks is evident from the fame of Complainant's marks, the Respondent's use of the disputed domain names, and from the contents of the resolving websites. Respondent's registration and use of the disputed domain names with knowledge of Complainant's rights in the AMAZON, AMAZON.COM, AMZ, and KINDLE marks shows Respondent's bad faith registration and use of the disputed domain names pursuant to the Policy. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Ripple Labs Inc. v. Jessie McKoy/Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) ("Complainant contends Respondent's appropriation of Complainant's trademark was a clear intent to trade upon Complainant's reputation and goodwill in order to confuse Internet users.").
The Panel finds that Respondent registered and uses the domain names in bad faith.
Complainant has proved this element.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <amazonbookpublishersllc.com>, <amazonkdppublishers.com>, <amazonkdppublishers.net>, <amazonpublicationhub.com>, <amazonpublicationsconsultants.com>, <amazonpublicationservices.com>, <amazonpublishingnetwork.com>, <amazonpublishingprofs.com>, <amazonsmartpublishing.co>, <amazonsmartpublishing.com>, <amzbookpublishingsolutions.com>, <amzpublishingscentral.com>, <kindepublishersinc.com> and <thekindlepublishers.com> domain names TRANSFERRED from Respondent to Complainant.
______________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
April 9, 2024
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