Amazon Technologies, Inc. v. Richard McCarthy / WorkingWebsites / Ricardo McCartney
Claim Number: FA1904001838865
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, United States. Respondent is Richard McCarthy / WorkingWebsites / Ricardo McCartney (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kindlebookpromotions.com> registered with Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA and <kindlebookreview.net>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 15, 2019; the Forum received payment on April 15, 2019.
On April 16, 2019 GoDaddy.com, LLC confirmed by e-mail to the Forum that the <kindlebookreview.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. On April 18, 2019, Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA confirmed by e-mail to the Forum that the <kindlebookpromotions.com> domain names is registered with Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA and that Respondent is the current registrant of the name. Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA and GoDaddy.com, LLC has verified that Respondent is bound by the respective 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 April 23, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 13, 2019 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@kindlebookpromotions.com and postmaster@kindlebookreview.net. Also on April 23, 2019, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On May 15, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities that control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. 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.”
Complainant contends that the <kindlebookpromotions.com> was registered with Ascio Technologies, Inc. Danmark - Filial af Ascio technologies, Inc. USA and the <kindlebookreview.net> was registered with GoDaddy.com, LLC. Complainant argues that the domain names are owned by the same individual as the first and last names of the nominal registrants are very similar and have the same phone number and email address and very similar addresses. See Amend. Compl. Ex. A1. Additionally, the resolving webpages are similar and use the same graphic elements. See Compl. Exs. H and I.
Having regard to the foregoing matters and all the circumstances, the Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. The matter may therefore proceed in its present form.
A. Complainant
Complainant made the following contentions.
Complainant is one of the world’s leading online retailers, offering products and services to more than 100 countries around the globe. Complainant has rights in the KINDLE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,694,267, registered Oct. 6, 2009). See Compl. Ex. D. Respondent’s <kindlebookpromotions.com> and <kindlebookreview.net> domain names are confusingly similar to Complainant’s registered mark as the disputed domain names incorporate Complainant’s KINDLE mark in its entirety, adding only the generic words “book”, “promotions” and/or “review,” and the generic top level domains (“gTLD”) “.com” or “.net.”
Respondent has no rights or legitimate interests in the <kindlebookpromotions.com> and <kindlebookreview.net> domain names. Respondent is not commonly known by the disputed domain names nor is Respondent licensed or authorized to use Complainant’s mark. Furthermore, Respondent is not making a bona fide offering of goods or services or a noncommercial or fair use of the disputed domain names. Instead, Respondent is using the domain names to offer services through which authors can pay for reviews and artificially inflate their sales rankings on Complainant’s websites. Respondent’s deceptive behavior is evidence that Respondent’s business is not a legitimate or bona fide use, and is a violation of Complainant’s user agreement.
Respondent registered and uses the <kindlebookpromotions.com> and <kindlebookreview.net> domain names in bad faith as Respondent is using the disputed domain names to promote services that deceive Complainant’s customers by artificially inflating apparent reader interest and sales rankings, disrupting Complainant’s business and attracting internet users, likely for commercial gain. Respondent disrupts Complainant’s business by violating United States Federal and States laws intended to protect consumers from possible deception and fraud. Respondent’s use of multiple aliases and use of a privacy service when it registered the disputed domain names with a privacy service further demonstrates bad faith. Lastly, Respondent had actual knowledge of Complainant’s rights in the KINDLE mark due to Complainant’s extensive and global use of the mark and Respondent’s display of Complainant’s marks on the resolving webpage.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is one of the world’s leading online retailers, offering products and services to customers in more than 100 countries around the globe.
2. Complainant has established its trademark rights in the KINDLE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,694,267, registered Oct. 6, 2009).
3. Respondent registered the <kindlebookpromotions.com> domain name on January 20, 2014 and the <kindlebookreview.net> domain name on September 10, 2012.
4. Respondent is illegally using the domain names to offer a service through which authors can pay for reviews and artificially inflate their sales rankings on Complainant’s websites.
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”).
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 KINDLE mark through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant has provided this Panel with copies of it USPTO registrations for the KINDLE mark (e.g. Reg. No 3,694,267 registered Oct. 6, 2009). See Compl. Ex. D. Therefore, the Panel finds Complainant has rights in the KINDLE mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s KINDLE mark. Complainant argues Respondent’s <kindlebookpromotions.com> and <kindlebookreview.net> domain names are confusingly similar to Complainant’s registered mark as the disputed domain names incorporate Complainant’s KINDLE mark in its entirety, adding only the generic words “book,” “promotions,” and/or “review,” and the gTLDs “.com” or “.net.” Adding a gTLD to a fully incorporated mark is an insufficient change to make the disputed domain name distinct from a complainant’s mark. Furthermore, the addition of generic words does not distinguish a disputed domain name from a mark. See MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Here, as Complainant contends, Respondent sole change to Complainant’s KINDLE mark was adding the generic words “book” and “promotions” or “review” in addition to a gTLD. Therefore, the Panel finds that Respondent’s <kindlebookpromotions.com> and <kindlebookreview.net> domain names are confusingly similar to Complainant’s KINDLE mark per Policy ¶4(a)(i).
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. 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 out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s KINDLE trademark and to use it in its domain names, adding only the generic words “book,” “promotions,” and/or “review,” that do not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <kindlebookpromotions.com> domain name on January 20, 2014 and the <kindlebookreview.net> domain name on September 10, 2012;
(c) Respondent is using the domain names to offer a service through which authors can pay for reviews and artificially inflate their sales rankings on Complainant’s websites;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits Respondent has no rights or legitimate interests in the <kindlebookpromotions.com> and <kindlebookreview.net> domain names because Respondent is not commonly known by the disputed domain names, nor was Respondent authorized to use Complainant’s KINDLE mark. Where there is no response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Furthermore, a lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel notes that the WHOIS information for the <kindlebookpromotions.com> identifies the registrant as “Ricardo McCartney” and the WHOIS information for the <kindlebookreview.net> identifies the registrant as “Richard McCarthy / WorkingWebsites,” and there is nothing in the record to suggest that Respondent is authorized to use the KINDLE mark. See Amend. Compl. Ex. 1A. Thus, the Panel finds Respondent is not commonly known by the <kindlebookpromotions.com> or <kindlebookreview.net> domain names per Policy ¶ 4(c)(ii);
(f) Complainant also argues that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <kindlebookpromotions.com> and <kindlebookreview.net> domain names. Instead, Respondent is using the domain names to offer services in which authors can pay for reviews and artificially inflate their sales rankings on Complainant’s websites. Complainant contends that this deceptive behavior is evidence that Respondent is not using the domain names for a legitimate or bona fide use. Panels have previous held that a domain name whose sole purpose is in connection with a fraudulent scheme is not a legitimate or bona fide use. See Goodwin Procter LLP v. GAYLE FANDETTI, FA 1738231 (Forum Aug. 8, 2017) (“[T]he Domain Name has been used in an attempted fraud. As such it cannot have been registered for a legitimate purpose.”). Here, Complainant has provided the Panel with screenshots from Respondent’s domain names that show the fraudulent activity. See Compl. Exs. H and I. Therefore, the Panel finds that Respondent’s business and use of the domain names in not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant argues that Respondent has adopted Complainant’s KINDLE mark and makes no effort to distinguish or distance itself from Complainant and tries to pass itself off as Complainant by doing so. Panels have previously held that attempts to confuse users into believing a respondent is affiliated with a complainant are not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant has provided this Panel with copies of Complainant’s and Respondent’s logos that show the similarity and possibility of the logos being confused as related to each other. See Compl. Exs. H and I. Therefore, the Panel finds that Respondent is trying to pass itself off as Complainant and fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
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 contends that Respondent’s bad faith is demonstrated by its use of the <kindlebookpromotions.com> and <kindlebookreview.net> domain names to create a false affiliation with Complainant that artificially inflates apparent reader interest and sales ranking. Specifically, Complainant argues this passing off behavior disrupts Complainant’s business and attracts, for commercial gain, users to the disputed domain names. Such a use has been found to demonstrate bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See Twitter, Inc. v. Privacy Protect, LLC, FA1710001753603 (Forum Nov. 13, 2017) (“using the [disputed] domain name to promote services that deceive Complainant’s users by artificially inflating popularity and viewership statistics … is evidence of disruption to Complainant’s business under Policy ¶ 4(b)(iii)”); see also Yahoo! Inc. v. sumit kalra / mam solution / mam solutions, FA1512001650447 (Forum Dec. 31, 2015) (“Respondent's registration of domain names obviously intended to create confusion with Complainant, together with its use of those domain names in connection with a fraudulent scheme involving passing itself off as Complainant and attempting to defraud Complainant's customers, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv)”). The Panel recalls that Complainant has provided copies of Complainant’s and Respondent’s logos which show the similarity and possibility of the logos being confused as related to each other. See Compl. Exs. H and I. Therefore, the Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant claims that Respondent’s use of the <kindlebookpromotions.com> and <kindlebookreview.net> domain names violates Complainant’s Terms and Conditions by its attempt to inflate sales rankings. Violation of a complainant’s terms and conditions may be evidence of bad faith under Policy ¶ 4(a)(iii). See Amazon Technologies, Inc. v. Sun, FA1810001810408 (Forum Oct. 31. 2018) (Complainant states that Respondent violates Complainant’s terms of service by attempting to manipulate sales rankings. The Panel finds that this is further evidence of bad faith under Policy ¶ 4(a)(iii)). Complainant provides a copy of its Terms and Conditions which it alleges Respondent violates through its use of the disputed domain names. See Compl. Ex. G. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent registered and uses the <kindlebookpromotions.com> and <kindlebookreview.net> domain names in bad faith as Respondent’s activities violate United State Federal and state laws intended to protect consumers. Panels have held that using a domain name for an illegal purpose has been held to constitute bad faith. See Google Inc. v. Domain Admin, FA 1502001605239 (Forum Mar. 22, 2015) (finding that use of a disputed domain name to aid illegal activities under Complainant’s trademark suggests Respondent’s bad faith). Complainant provides screenshots of the disputed domain names in support of its contentions that Respondent engages in illegal activity. See Compl. Exs. H and I. Therefore, the Panel finds that Respondent registered the domain names in bad faith per Policy ¶ 4(a)(iii).
Fourthly, Complainant argues Respondent was well-aware of Complainant’s rights in the KINDLE mark at the time Respondent registered and subsequently used the <kindlebookpromotions.com> and <kindlebookreview.net> domain names and this indicates bad faith registration and use. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product). Here, Complainant contends that, due to the extensive, global use, and fame of the KINDLE mark and Respondent’s display of the logo and attempts to manipulate services that target Complainant, Respondent had actual knowledge of Complainant’s rights in the mark. The Panel agrees and finds Respondent had actual notice of Complainant’s rights in the KINDLE mark per Policy ¶ (4)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the KINDLE mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
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 <kindlebookpromotions.com> and <kindlebookreview.net> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 18, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page