Amazon Technologies, Inc. v. houchang li
Claim Number: FA2102001932207
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is houchang li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aazonaws.com>, <amafzon.com>, <amazonawws.com>, <awselementallink.com>, <awslinkbox.com> and <awsmedialive.com>, all registered with GMO Internet, Inc. d/b/a Onamae.com.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 15, 2021; the Forum received payment on February 15, 2021.
On February 16, 2021, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <aazonaws.com>, <amafzon.com>, <amazonawws.com>, <awselementallink.com>, <awslinkbox.com> and <awsmedialive.com> domain names are registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the names. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 February 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 2021 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@aazonaws.com, postmaster@amafzon.com, postmaster@amazonawws.com, postmaster@awselementallink.com, postmaster@awslinkbox.com, postmaster@awsmedialive.com. Also on February 17, 2021, 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 March 11, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
The Panel notes the Japanese language Registration Agreements. Under Rule 11(a) the language of these proceedings is therefore Japanese. Nevertheless, Complainant requests that the proceedings continue in the English language and under the Rules the Panel has discretion to allow that request.
In considering similar requests, UDRP panels have in the past taken account of factors which indicate a respondent’s proficiency with the English language[i]. Here, Complainant cites the case of Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191 (Oct. 15, 2008) holding that proceedings could be conducted in English even though the registration agreement was not in English where “the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English”.
The Panel does not find that citation instructive in this instance since the relevant domain names here resolve to Complainant’s own English language website or third-party English language websites, offering very little evidence of Respondent’s actual proficiency in English.
On the other hand, Complainant refers to LSVT Global, Inc. v. houchang li, FA1908001855442 (Forum Sept 7, 2019) where it was previously found that Respondent was likely to be conversant and proficient in the English language. The Panel finds that this is sufficient evidence to warrant that the proceedings should continue in English. Pursuant to Rule 11(a), the Panel determines that the remainder of the proceedings should be conducted in English[ii].
A. Complainant
Complainant asserts trademark rights in AMAZON, AWS, AWS ELEMENTAL and ELEMENTAL and alleges that the disputed domain names are confusingly similar to its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a well-known online retailer doing business under the name AMAZON which is registered with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 3,868,195, from October 26, 2010;
2. Complainant is also the owner of USPTO Reg. No. 3,576,161, registered February 17, 2009 for the trademark AWS; Reg. No. 5,493,570, registered June 12, 2018 for the trademark AWS ELEMENTAL; and Reg. No. 3,777,589, registered April 20, 2010 for the trademark ELEMENTAL;
3. the disputed domain names <amazonawws.com>, <aazonaws.com> and <amafzon.com> were registered on December 16, 2016, November 27, 2017, and December 15, 2018, respectively while <awselementallink.com>, <awslinkbox.com>, and <awsmedialive.com> were registered on May 4, 2020;
4. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademarks or to register any domain name incorporating its trademarks; and
5. the use of the disputed domain names is described later but in no instance is it use in connection with a business enterprise of Respondent’s making.
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 based on 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory[iii].
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. Proof of registration of the trademark with a national trademark authority is adequate proof of trademark rights. Here Complainant provides evidence of its USPTO registrations for AMAZON, AWS, AWS ELEMENTAL and ELEMENTAL and so the Panel finds that Complainant has trademark rights in those terms[iv].
Complainant submits that <amafzon.com> is confusingly similar to the AMAZON trademark; that <awslinkbox.com> and <awsmedialive.com> are confusingly similar to the AWS trademark; that <aazonaws.com> and <amazonawws.com> are confusingly similar to both AMAZON and AWS; and that <awselementallink.com> is confusingly similar to AWS, ELEMENTAL, and AWS ELEMENTAL.
For the purposes of comparison, the gTLD, “.com”, can be disregarded[v] and so the trademarks are to be compared with the following terms:
aazonaws
amafzon
amazonawws
awselementallink
awslinkbox
awsmedialive
The Panel is essentially in agreement with Complainant’s submissions on similarity but makes certain narrower findings that <amazonawws.com> is confusingly similar to AMAZON; that <aazonaws.com> is confusingly similar to AWS; and that <awselementallink.com> is confusingly similar to AWS ELEMENTAL. The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[vi].
The publicly available WHOIS information lists “houchang li” as the registrant of the disputed domain names. That name provides no prima facie evidence that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any trademark rights and Complainant states that it has not given Respondent permission to use the trademarks for any purpose.
So far as use is concerned, the evidence is that the domain name <amafzon.com> resolves to Complainant’s own website. The <aazonaws.com> and <amazonawws.com> domain names resolve briefly to blank pages before redirecting to www.vultr.com, being a competing cloud services provider. The <awslinkbox.com> name resolves to a bogus McAfee virus warning and the <awselementallink.com> and <awsmedialive.com> names resolve to pages inviting installation of browser extensions that change a user’s default search provider. Clearly, none of those uses is a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain names under the Policy[vii] and so the Panel finds that Complainant has made a prima facie case in each instance.
The onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, that prima facie case is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered and used in bad faith. Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
On the evidence, the Panel finds bad faith in all cases under subparagraph (iv) above. The Panel has already found the disputed domain names to be confusingly similar to the trademark. The use of all of the disputed domain names is for commercial gain in some form or another. The Panel finds registration and use of the domain names in bad faith and so finds that Complainant has satisfied the third and final element of the Policy[viii].
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aazonaws.com>, <amafzon.com>, <amazonawws.com>, <awselementallink.com>, <awslinkbox.com> and <awsmedialive.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: March 15, 2021
[i] See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009); see also Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006).
[ii] See, for example, FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English; see also Coupang Corp. v. Hyung Jun Lim, Case No. FA1906001847602 (Forum July 20, 2019); CrossFit, Inc. v. Whois Agent, Domain Whois Privacy Prot. Serv. / James Chang, Case No. D2016-1893 (WIPO Nov. 9, 2016).
[iii] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum Jul. 31, 2000) holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true; see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”)
[iv] See, for example, DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”
[v] See, for example, Bittrex, Inc. v. Privacy protection service - whoisproxy.ru, FA 1759828 (Forum Jan. 12, 2018) (“The Panel here finds that the <bittrex.market> domain name is identical to the BITTREX mark under Policy ¶4(a)(i).”)
[vi] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[vii] See, for example, Amazon Technologies, Inc. v. Lin, FA1301001480702 (Forum Feb. 26, 2013) (“Respondent’s use of the disputed domain name to offer competing goods or services is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”); 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); see also The Office Club, Inc. and Office Depot, Inc. v. Lim Chu Ltd, FA1103001375599 (Forum March 30, 2011) (“The Panel finds that using a domain name that is identical to another’s mark to resolve to the trademark owner’s website does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”); MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) finding that “the linking of the disputed domain name to the Complainant’s commercial website is not a legitimate non-commercial or fair use of the domain name” and that the respondent’s use “cannot give rise to a right or legitimate interest in the disputed domain name”); and Direct Line Ins. plc v. Low-cost-domain c/o Stubbs, FA1007001337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of [UDRP] ¶ 4(c)(i) or ¶ 4(c)(iii) ...”); see also Google Inc. v. Petrovich, FA1008001339345 (Forum Sep 23, 2010) (“Respondent’s failure to make an active use of the disputed domain names except for the purpose of downloading malicious computer software is not a use in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”); Dell v. tawnya grilth c/o dellpc.us, FA1107001400620 (Forum Sept. 1, 2011) (use of the disputed domain name to offer downloads of software that contain malware is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iv)); and Grappone TS, Inc. v. Zhu, FA 1424557 (Forum Feb. 29, 2012) (finding that use of a disputed domain name to host a website that contains viruses is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii)).
[viii] See, for example, Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”); OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)); see also Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”).
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