Amazon Technologies, Inc. v. HUANRAN LEE
Claim Number: FA1612001708538
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is HUANRAN LEE (“Respondent”), Peoples Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amazonbegin.com>, registered with Name.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
David L. Kreider as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 19, 2016; the Forum received payment on December 19, 2016.
On December 20, 2016, Name.com, Inc. confirmed by e-mail to the Forum that the <amazonbegin.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 December 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2017 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@amazonbegin.com. Also on December 21, 2016, 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.
A timely Response was received and determined to be complete on December 21, 2016.
On December 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David L. Kreider 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that as a result of Amazon’s extensive advertising and use of the AMAZON Mark, the AMAZON Mark has become famous and is consistently ranked as one of the most well-known and recognizable brands globally.
Prior ICANN panelists have found that the AMAZON Mark is well known and famous. See e.g., Amazon Technologies, Inc. v. SUPPORT SACHIKO, FA1609001692084 (Nat. Arb. Forum Oct. 15, 2016) (“Complainant has rights in its famous AMAZON.COM mark through registration with the USPTO”); Amazon Technologies, Inc. v. Mulama / Jay Media, FA1605001675807 (Nat. Arb. Forum June 16, 2016) (“The [AMAZON] mark is famous”); Amazon Technologies, Inc. v. Abayomi, FA1507001630068 (Aug. 25, 2015) (“…Respondent must have known of the fame of Complainant and its [AMAZON] mark…”); Amazon Technologies, Inc. v. Null, FA 1488185 (Nat. Arb. Forum Apr. 17, 2013) (finding that AMAZON is “one of the most famous marks and business names in the world”); Amazon.com, Inc. v. Digital Systems c/o Daniels, FA 871120 (Nat. Arb. Forum Jan, 29, 2007) (“There is no doubt that AMAZON.COM is a very famous mark”); Amazon.com, Inc. v. .. c/o Banks, FA 785586 (Nat. Arb. Forum Oct. 11, 2006) (“Amazon is thus a very famous brand name”); Amazon.com, Inc. v. Shafir, FA 196119 (Nat Arb. Forum Nov. 10, 2003) (referencing “the fame and goodwill surrounding Complainant’s famous mark”); Amazon.com, Inc. v. Whois Privacy Inc., FA 536281 (Nat. Arb. Forum Sept. 26, 2005) (finding that Amazon “is well-known as an Internet retailer throughout the world”); Amazon.com, Inc. v. J J Domains, FA 514939 (Nat. Arb. Forum Sep. 2, 2005) (“Amazon.com is one of the world's best-known Internet retailers”); and Amazon.com, Inc. v. Dinoia c/o SZK.com, FA 536549 (Nat. Arb. Forum Sept. 26. 2005) (recognizing Complainant’s “long-standing and substantial use of the mark in its worldwide marketing efforts”).
The AMAZON Mark is registered around the world, including in the United States. “If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights”; “[t]he location of the trademark … and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Ed. See also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (“it is sufficient that the complainant can demonstrate a mark in some jurisdiction”). Complainant’s registrations were applied for and issued long before Respondent registered the disputed domain name. Amazon's registrations for the AMAZON Mark are prima facie evidence of validity, and establish Complainant's rights for purposes of the Policy.
In addition to the AMAZON Mark, Amazon has long used highly distinctive logos comprising a smile beneath “amazon” or the letter “a” (the “Amazon Logos”).
A. CONFUSINGLY SIMILAR DOMAIN NAME (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶ 4(a)(i)):
The disputed domain name is confusingly similar to the famous, registered AMAZON Mark.
The disputed domain name wholly incorporates the AMAZON and AMAZON.COM trademarks, adding only the generic term “begin” and in the case of AMAZON, the TLD .com.
These changes are not sufficient to distinguish the disputed domain name from Complainant’s well-known marks. See American Express Co. v. MustNeed.com, FA0404000257901 (Nat. Arb. Forum June 7, 2004) (“The mere addition of a generic or descriptive word to a registered mark does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i)”); Amazon.com, Inc. v. Hosting Provider Service, FA0307000167927 (Nat Abr. Forum Aug. 20, 2003) (finding <amazonpills.com> confusingly similar to AMAZON and noting, “addition of [the] generic term [pills] does not sufficiently distinguish Respondent’s domain name from Complainant’s mark because the mark remains the dominant element of the domain name”).
Accordingly, Paragraph 4(a)(i) of the UDRP, requiring that the domain name(s) at issue be "identical or confusingly similar to a trademark or service mark in which the Complainant has rights" is satisfied.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
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; and Respondent has never been legitimately known as or referred to as AMAZON or any variation thereof. As a result, Respondent does not have a legitimate interest in the disputed domain name, as legitimate interests are defined in Paragraphs 4(c)(i)-(iii) of the UDRP.
WHOIS identifies Respondent as HUANRAN LEE. Respondent is not commonly known by Complainant’s AMAZON Mark. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s AMAZON Mark. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. See Broadcom Corp. v. Ibecom PLC, FA FA0411000361190 (Nat. Arb. 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); and Tercent Inc. v. Yi, FA0301000139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply).
The disputed domain name <amazonbegin.com> resolves to an online retail business that prominently features Complainant’s Amazon Logos, graphics and derivatives thereof. Respondent’s adoption of Complainant’s name, graphics and logos to promote Respondent’s online retail business is calculated and likely to confuse and mislead the public as to Respondent’s relationship with Complainant and constitutes passing off. This is not a fair, nominative or otherwise legitimate use. See Microsoft Corp. v. lijiuliang, FA0912001300266 (Nat. Arb. Forum Feb. 11, 2010) (“Respondent’s attempt to pass itself off as Complainant by imitating Complainant’s official website … is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”); Amazon Technologies, Inc. v. Naguib / Mubarklovers, FA1608001688949 (Nat. Arb. Forum Sept. 16, 2016) (“the record reveals that Respondent employs on its resolving website a black and orange color scheme and a smile logo, which mimics Complainant’s logo, in an attempt to pass itself off as Complainant[;] … [t]his further demonstrates that Respondent is not using the contested domain name in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use”).
Moreover, Respondent’s use of a domain name confusingly similar to the AMAZON Mark to promote competing/alternative online retail businesses is not a bona fide or otherwise legitimate use. See Marvin Lumber and Cedar Company v. Chan, FA1205001442493 (Nat. Arb. Forum June 7, 2012) (finding that “sell[ing] products and services in direct competition with those that Complainant offers” is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); Amazon Technologies, Inc. v. Lin, FA1301001480702 (Nat. Arb. 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)”); Amazon Technologies, Inc. v. Naguib / Mubarklovers, FA1608001688949 (Nat. Arb. Forum Sept. 16, 2016) (finding that use of <amazonarabmarket.com> for an online retail store was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Furthermore, Respondent’s web site solicits customer’s usernames and passwords using Complainant’s Amazon Logos. Respondent’s use of Amazon Logos to solicit usernames and passwords is likely and appears calculated to cause customers to unintentionally disclose their sensitive Amazon.com account information to Respondent. This is not a bona fide or legitimate use. See Google Inc. v. FORTIS INFOTECH / ASIF, FA1210001469446 (Nat. arb. Forum Dec. 12, 2012) (“fraudulently acquiring personal information of Internet users is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii)”).
For the above reasons, Respondent has no rights or legitimate interests in the disputed domain name.
C. REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
Respondent registered the disputed domain name in bad faith.
At the time Respondent registered the disputed domain name, Complainant was the No. 1 most-viewed shopping website on the web and Complainant’s AMAZON Mark was famous. Since the disputed domain name contains the AMAZON and AMAZON.COM trademarks in their entireties, since Respondent adopted <amazonbegin.com> for an online retail promotional business, and since Respondent has saturated its website with Complainant’s Amazon Logos and graphics, 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 with regard to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that “[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse”); Amazon Technologies, Inc. v. Souders, FA1503001610740 (Nat. Arb. Forum April 21, 2015) (finding it inconceivable that Respondent was not familiar with Complainant’s AMAZON mark and that “actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii)); Amazon.com, Inc. v. Korotkov, D2002-0516 (WIPO Aug. 13, 2002) (determining that the complainant’s AMAZON mark was so well-known that it was “inconceivable respondent was unaware of the trademark, its connotations and its commercial attractiveness”);
Furthermore, by incorporating the well known AMAZON and AMAZON.COM trademarks into the disputed domain name, and by using the AMAZON mark and Complainant’s logos and graphics to promote its services, Respondent creates the false impression that its services are offered or endorsed by Complainant. “This is precisely the sort of conduct that falls under [UDRP] Policy ¶ 4(b)(iv) and thus evidences Respondent’s bad faith registration and use of the disputed domain names.” MetroPCS, Inc. v. Robertson, FA0609000809749 (Nat. Arb. Forum Nov. 13, 2006) (finding bad faith where the respondent’s web site gave the false impression of being affiliated with the complainant). See also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“the use of the logo on the web site to which wwfauction.com is redirected supports the conclusion that wwfauction.com is likely to confuse, and thus is being used in bad faith”); Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to mislead Internet users by implying that the respondent was affiliated with the complainant); MidFirst Bank v. Smith, FA0907001274302 (Nat. Arb. Forum August 31, 2009) (use of the disputed domain name to pass oneself off as the Complainant constitutes bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv)); Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that respondent’s use of the disputed domain name misrepresent itself as a complainant supported a finding of bad faith); and Microsoft Corp. v. Pennisi, FA0908001280894 (Nat. Arb. Forum Sep. 29, 2009) (finding bad faith due in part to Respondent’s “repeated use of Complainant’s logo”).
Furthermore, by promoting its online retail business using Complainant’s AMAZON Mark, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s marks, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (Nat. Arb. 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)”). See also Microsoft Corp. v. Lafont, FA1009001349611 (Nov. 9, 2009) (“intentional appropriation of Complainant’s mark to mislead Internet users and subsequently profit from them reveals bad faith registration and use under Policy ¶ 4(b)(iv)”); and Crocs, Inc. v. Chustz, FA0706001002536 (Nat. Arb. Forum July 24, 2007) (finding bad faith where Respondent’s use of Complainant’s mark in its domain was “capitalizing on the illusion of direct affiliation with Complainant’s business and goodwill”).
Moreover, promoting competing/alternative online retail businesses using the AMAZON Mark diverts and disrupts Complainant’s business and falls under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA0608000768859 (Nat. Arb. Forum Sep. 21, 2006) (use of disputed domain name to operate a competing website constitutes bad faith according to Policy ¶ 4(b)(iii)); Microsoft Corp. v. Lorge, FA1103001380106 (Nat. Arb. Forum April 25, 2011) (featuring of Complainant’s competitors may cause some Internet users to purchase products from a competitor instead of from the Complainant which disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii)).
To the extent Respondent is attempting to phish usernames and passwords, or to defraud consumers by falsely claiming to offer 99% cash back on purchases, this is further evidence of bad faith. See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use where it fraudulently attempted to acquire the personal and financial information of Internet users through the use of a domain name confusingly similar to a competing mark); Kaiser Foundation Health Plan, Inc. v. Hines, FA1508001632754 (Nat. Arb. Forum Sept. 18, 2015) (“Respondent’s use of the <kaiserpermanentegroup.com> domain name to engage in a phishing scheme is in itself evidence of Respondent’s bad faith”); Morgan Stanley v. Zhang Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Nat. Arb. Forum Feb 16, 2015) (“Respondent’s use of the disputed domain name in furtherance of a phishing scheme constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii)”); and Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (use of the disputed domain name for fraudulent purposes constituted bad faith).
Finally, Respondent’s website indicates that Respondent is located at 2225 Colonial Ave, Bronx, NY, even though WHOIS indicates that Respondent is located in China. In addition, 2225 Colonial Ave, Bronx, NY is an invalid address. Providing false or inadequate contact information is further evidence of bad faith. See Cactus Restaurants Ltd. v. Web Master, FA0604000671297 (Nat. Arb. Forum May 23, 2006) (inferring bad faith from, inter alia, inadequate or inoperative contact details).
Based on the foregoing, Respondent has registered the disputed domain name in bad faith.
B. Respondent
Noting that it Registered the disputed domain name just one month before the Complaint was filed, on November 23, 2016, the Respondent asserts in its Response that the website to which the disputed domain name <amazonbegin.com> resolves is still in a testing process and that the Respondent had complied with the Complainant’s demands by deleting the “AMAZON” logo from its website. The Respondent asserts that its website is for the promotion and display of products only, and does not involve any transactions.
Complainant, Amazon Technologies, Inc., is one of the world’s largest online retailers, offering products and services to more than 100 countries around the world. Complainant has rights in its famous AMAZON.COM mark through registration with the USPTO (e.g., Reg. No. 2,559,936, registered Apr. 9, 2002). Respondent’s <amazonbegin.com> domain name is confusingly similar under Policy ¶ 4(a)(i).
Respondent, HUANRAN LEE, registered the <amazonbegin.com> domain name on November 23, 2016.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent to use its AMAZON.COM mark. Respondent is not commonly known as <amazonbegin.com>.
Respondent’s use of the domain name does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed domain name. Moreover, Respondent’s assertions that its website is for the promotion and display of products only, and does not involve any transactions with public Internet users, are contradicted by the Respondent’s own evidence showing that the prices and availability in stock of a wide variety of merchandise is prominently displayed on Respondent’s website, along with call-to-action buttons bearing Complainant’s logo and the words “Shop Now”.
Respondent registered and is using the disputed domain name in bad faith. Respondent had actual notice of Complainant’s rights in the AMAZON.COM mark, yet sought nonetheless to pass itself off as Complainant in an attempt to attract Internet users to its website for commercial gain.
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.
Complainant has rights in its famous AMAZON.COM mark under Policy ¶ 4(a)(i) based on registration with the USPTO. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . .”).
Respondent’s <amazonbegin.com> domain name is confusingly similar to its AMAZON.COM mark under Policy ¶ 4(a)(i). Respondent has merely added the generic term “begin” within the fully incorporated AMAZON.COM mark.
Respondent has no rights or legitimate interests in the <amazonbegin.com> domain name. Complainant has not authorized Respondent to use its AMAZON.COM mark. Respondent is not commonly known by the domain name.
Respondent is not using the <amazonbegin.com> domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The disputed domain name <amazonbegin.com> resolves to an online retail business that features Complainant’s Amazon Logos, graphics, black and orange color scheme, and derivatives thereof. Respondent’s adoption of Complainant’s name, graphics and logos to promote Respondent’s online retail business is calculated and likely to confuse and mislead the public as to Respondent’s relationship with Complainant. This is not a fair, nominative or otherwise legitimate use. See, Amazon Technologies, Inc. v. Naguib / Mubarklovers, FA1608001688949 (Nat. Arb. Forum Sept. 16, 2016) (“the record reveals that Respondent employs on its resolving website a black and orange color scheme and a smile logo, which mimics Complainant’s logo, in an attempt to pass itself off as Complainant[;] … [t]his further demonstrates that Respondent is not using the contested domain name in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use”).
The evidence shows that Respondent targeted Complainant’s famous AMAZON Mark and has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s marks. This conduct of diversion shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
By promoting competing/alternative online retail businesses using the AMAZON Mark, Respondent seeks to divert and disrupt Complainant’s business and falls under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA0608000768859 (Nat. Arb. Forum Sep. 21, 2006) (use of disputed domain name to operate a competing website constitutes bad faith according to Policy ¶ 4(b)(iii)); Microsoft Corp. v. Lorge, FA1103001380106 (Nat. Arb. Forum April 25, 2011) (featuring of Complainant’s competitors may cause some Internet users to purchase products from a competitor instead of from the Complainant which disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(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 <amazonbegin.com> domain name be TRANSFERRED from Respondent to Complainant.
David L. Kreider, Panelist
Dated: December 28, 2016
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