Amazon Technologies, Inc. v. Theda Folkerts / azu seedorf / Douglas Hall / Kimberly Ford / Timothy McGraw / John Fitzpatrick / Linsa Starling / Clayton S. Sailor
Claim Number: FA2110001967621
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Theda Folkerts / azu seedorf / Douglas Hall / Kimberly Ford / Timothy McGraw / John Fitzpatrick / Linsa Starling / Clayton S. Sailor (“Respondent”), Wyoming, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <blink-camera.shop>, <blink-camera.store>, <blink-clearance.store>, <blink-deals.shop>, <blink-outlet.shop>, <blink-usa.sale>, <blinkusa.store>, <blink-usa.store> and <blink-wholesale.store> (collectively “Domain Names”), registered with Dynadot, 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 5, 2021; the Forum received payment on October 5, 2021.
On October 7, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <blink-camera.shop>, <blink-camera.store>, <blink-clearance.store>, <blink-deals.shop>, <blink-outlet.shop>, <blink-usa.sale>, <blinkusa.store>, <blink-usa.store> and <blink-wholesale.store> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 October 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 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@blink-camera.shop, postmaster@blink-camera.store, postmaster@blink-clearance.store, postmaster@blink-deals.shop, postmaster@blink-outlet.shop, postmaster@blink-usa.sale, postmaster@blinkusa.store, postmaster@blink-usa.store, postmaster@blink-wholesale.store. Also on October 8, 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 November 2, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.
Complainant contends that the registrants for the Domain Names are related because: 1) the Domain Names are all similar variants of Complainant’s BLINK mark 2) The Domain Names were registered with the same Registrar and within 2.5 months of one another 3) the Domain Names <blink-clearance.store>, <blink-deals.shop>, <blinkusa.store>, and <blink-wholesale.store> redirected what are very similar websites (the “Respondent’s Website”). In essence each of these domain names leads to a website offering unauthorized versions of Complainant’s products for sale, using the same layout, overall design, sharing numerous common elements and using the same photographs 4) The Domain Names <blink-camera.shop>, <blink-outlet.shop> resolve to identical parked websites 5) the named registrants of <blink-outlet.shop> and <blink-usa.sale> were participants in previous proceedings under the Policy where they were found to have registered domain names corresponding to the Complainant’s BLINK Mark and redirecting them to the Respondent’s Website and 6) the Domain Names <blink-camera.store> and <blink-usa.store> resolve to similar pages with error messages and were registered in the same period and with the same Registrar as the remaining Domain Names.
This evidence, in the Panel’s opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent; were the named Respondents unrelated, it would be unlikely that 8 unconnected entities would register very similar domain names during the same time period, with the same Registrar, with all of them pointing to either the Respondent’s Website or parked/error pages.
In light of these contentions, which none of the identified Respondents deny, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases. Hereafter the single Respondent will be referred to as “Respondent” in this Decision.
A. Complainant
Complainant, Amazon Technologies Inc., is one of the world’s leading retailers, offering BLINK-branded smart home security devices. Complainant has rights in the BLINK mark through registration with multiple trademark authorities, including the Japan Patent Office (“JPO”) (e.g., Reg. No. 6,208,519, registered August 14, 2020). Respondent’s <blink-camera.shop>, <blink-camera.store>, <blink-clearance.store>, <blink-deals.shop>, <blink-outlet.shop>, <blink-usa.sale>, <blinkusa.store>, <blink-usa.store>, and <blink-wholesale.store> domain names are confusingly similar to Complainant’s BLINK mark because they each incorporate Complainant’s mark in its entirety, simply adding a hyphen, a generic term, and a generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not licensed or authorized to use Complainant’s BLINK mark and is not commonly known by the Domain Names. Additionally, Respondent does not use the disputed domains for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the Domain Names to either to pass off as Complainant in furtherance of a phishing scheme or for the purpose of offering counterfeit products or holds the Domain Names inactively pending use for the purposes outlined above.
Respondent registered and uses the <blink-camera.shop>, <blink-camera.store>, <blink-clearance.store>, <blink-deals.shop>, <blink-outlet.shop>, <blink-usa.sale>, <blinkusa.store>, <blink-usa.store>, and <blink-wholesale.store> domain names in bad faith. Respondent has previously been found to have registered domain names in bad faith that incorporated the BLINK mark. Respondent uses the Domain Names to either pass off as Complainant while offering to sell counterfeit products or holds the Domain Names inactively pending use for such a purpose. Additionally, Respondent had actual knowledge of Complainant’s rights to the BLINK mark prior to registering the Domain Names based on the content of the Respondent’s Website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BLINK mark. Each of the Domain Names is confusingly similar to Complainant’s BLINK mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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.
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 has rights in the BLINK mark under Policy ¶ 4(a)(i) through its registration of the mark with the Japan Patent Office (“JPO”) (e.g., Reg. No. 6,208,519, registered August 14, 2020). Registration of a mark with a nation’s trademark agency is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Glashütter Uhrenbetrieb GmbH v. li zilin / QQ869292929, FA 1575562 (Forum Sept. 23, 2014) (holding, “Trademark registrations with a governmental authority are sufficient to prove rights in a mark pursuant to Policy ¶ 4(a)(i)”).
The Panel finds that each of the Domain Names is confusingly similar to the BLINK mark as they each incorporate the entire BLINK mark while adding generic terms, in some cases a hyphen and a gTLD. Adding a generic term, a hyphen and a gTLD to a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”); see also MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the BLINK mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS information of record lists “Theda Folkerts / azu seedorf / Douglas Hall / Kimberly Ford / Timothy McGraw / John Fitzpatrick / Linsa Starling / Clayton S. Sailor” as the registrants of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names <blink-clearance.store>, <blink-deals.shop>, <blinkusa.store>, and <blink-wholesale.store> (“Active Domain Names”) resolve or have resolved to the Respondent’s Website which, through the reproduction of the BLINK Mark, Complainant’s logo and reference to Complainant’s products, passes itself off as an official website of the Complainant for the purpose of selling unauthorized versions of Complainant’s goods, in direct competition with Complainant’s merchandise. The use of a confusingly similar domain name to resolve to a webpage that directly offers unauthorized versions of a complainant’s goods does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. See BALENCIAGA SA v. ling lin, FA 1768542 (Forum Feb. 16, 2018) (“The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests.”). See also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Domain Names <blink-camera.shop>, <blink-camera.store>, <blink-outlet.shop>, <blink-usa.sale> and <blink-usa.store> (“Inactive Domain Names”) are presently inactive given that they resolve to parked pages or pages with error messages[i]. Passively holding a disputed domain name may suggest a lack of rights and legitimate interests in the domain name per Policy ¶ 4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Furthermore in the present case the Panel considers it likely that the Inactive Domain Names are being held pending use in a similar manner to the Active Domain Names.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names (July-September 2021), Respondent had actual knowledge of Complainant’s BLINK mark since the Respondent’s Website passes itself off as an official website of the Complainant and as such reproduces material from Complainant and makes repeated references to Complainant and its products. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register nine domain names that contain the BLINK mark and use four of them (with the remaining domain names being inactively held) to redirect visitors to a website selling goods in direct competition with the Complainant under the BLINK mark other than to take advantage of Complainant’s reputation in the BLINK mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s BLINK mark for commercial gain by using the confusingly similar Active Domain Names (the Inactive Domain names likely being passively held pending similar use) to resolve to a website that, through the use of the BLINK mark and logo, mimics Complainant’s websites and offers unauthorized versions of Complainant’s products in direct competition with the Complainant’s products. Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See 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).”). See also See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.”).
The Panel finds Complainant has satisfied Policy ¶ 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 <blink-camera.shop>, <blink-camera.store>, <blink-clearance.store>, <blink-deals.shop>, <blink-outlet.shop>, <blink-usa.sale>, <blinkusa.store>, <blink-usa.store>, and <blink-wholesale.store> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: November 3, 2021
[i] Complainant submits that the domain names <blink-camera.shop> and <blink-outlet.shop> have resolved to a VICIdial agent login screen and submits that such use is in connection with a phishing scheme. The Panel notes that those domain names are presently inactive. To the extent that the relevant domain names had resolved to such a login screen the Panel is unpersuaded that any such prior use must have been in connection with a phishing scheme but accepts that no rights or legitimate interests arise from such use and considers on the balance of probabilities that those domain names were, like the remaining Inactive Domain Names, being held pending use in a similar manner to the Active Domain Names.
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