Amazon Technologies, Inc. v. Kurc Oksana
Claim Number: FA1804001780758
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Kurc Oksana (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <amazon.broker> and <amz.broker>, registered with Key-Systems, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 6, 2018; the Forum received payment on April 6, 2018.
On April 10, 2018, Key-Systems, LLC confirmed by e-mail to the Forum that the <amazon.broker> and <amz.broker> domain names are registered with Key-Systems, LLC and that Respondent is the current registrant of the names. Key-Systems, LLC has verified that Respondent is bound by the Key-Systems, 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 April 11, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 2018 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@amazon.broker, postmaster@amz.broker. Also on April 11, 2018, 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 3, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
LANGUAGE REQUEST
Complainant requests this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Registrar’s English language Registration Agreement (which is also available in Russian). It is established practice to consider UDRP Rules 10(b) and (c) when determining the language of the proceeding to ensure fairness and justice to both parties. Important factors are: WHOIS information which establishes Respondent is in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the English language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). The Panel may weigh the relative time and expense in enforcing the language agreement which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). In this case, Respondent was aware of this Proceeding (the commencement documents were also translated into Russian) and chose to offer the two disputed domain names for sale instead of participating in the proceeding.
Pursuant to UDRP Rule 11(a), Complainant has produced sufficient persuasive evidence Respondent is sufficiently conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides the balance of the Proceeding should be in English.
A. Complainant
LANGUAGE OF THE PROCEEDINGS
The Panel has discretion to determine the appropriate language of the proceedings on appointment. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Ed.
Complainant respectfully requests that the proceedings be conducted in English because Respondent has the ability to understand and communicate in English such that conducting these proceedings on English will not prejudice Respondent. Among other things: (a) Respondent’s review manipulation services specifically target Complainant’s English-language websites - amazon.com, amazon.ca, and amazon.co.uk; (b) the disputed domains incorporate the English words “Amazon” and “broker”; (c) Respondent’s logo also incorporates the English word “broker”; (d) Respondent employs screenshots of English-language reviews that are annotated in English; and (e) Respondent’s websites contain numerous English-language words and phrases including “login/sign up”, “forum”, “review”, “price”, “robots”, “search terms”, “standard”, and “I’m busy working on my blog posts. Watch this space!” See also Bittrex, Inc v. Bittrex Acc / qwdqwd, FA1803001774907 (Forum April 4, 2018) (“The Proceedings should continue in English as Respondent has facility with the English language and the choice of language in the registration agreement should not put an undue burden on the parties”); Thomson Reuters Global Resources Unlimited Company v. Xia Liang Hai, FA1802001773181 (Forum March 27, 2018) (“Complainant argues that Respondent is able to proceed in the English language because it registered a domain name comprised of Latin characters and features English language content on the resolving webpage. The Panel agrees and will conduct this proceeding in English”); Citigroup Inc. v. Jun, FA1708001742937 (Forum Aug. 28, 2017) (that “Respondent targeted English language marks (even though the resolving web pages are in Chinese) and did not respond to a notice of this proceeding which was in Chinese” constituted “sufficient persuasive evidence Respondent is conversant and sufficiently proficient in the English language”); and Chan Luu, LLC. v. Kim, FA1610001697833 (Forum Nov. 28, 2016) (finding that proceedings should be conducted in English where “Respondent’s disputed domain targets Complainant, a United States company and its mark, and the generic top-level domain (‘gTLD’) ‘.shop’ is an English word, and Respondent has failed to file any responsive pleadings”).
On the other hand, conducting these proceedings in a language other than English will cause Complainant to incur significant additional burden and delay to translate the Complaint and other documents. See SWX Swiss Exchange v. SWX Financial LTD, D2008-0400 (WIPO May 12, 2008) (in determining the language of the proceeding, “account should be taken of the risk that a strict and unbending application of paragraph 11 may result in delay, and considerable and unnecessary expenses of translating documents…”). Accordingly, Complainant submits that English is the most appropriate language for these proceedings.
TRADEMARK/SERVICE MARK INFORMATION
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.
In 1994, Amazon’s Founder Jeff Bezos developed an innovative plan to sell a wide selection of books over the Internet. Amazon opened its virtual doors in July 1995, offering online retail store services featuring books via the web site www.amazon.com. In its first four weeks of operation, the company shipped product to customers in all 50 states and in more than 45 other countries. On May 16, 1996, less than a year after its website launched, Amazon was featured on the front page of The Wall Street Journal. In recognition of Amazon’s success, in 1999—only five years after Amazon’s launch—Time Magazine named Mr. Bezos “Person of the Year.” The article described Amazon as the “company everyone wants to be like.”
Since 1995, Amazon has continuously used the AMAZON and AMAZON.COM trademarks (together, the “AMAZON Mark”) in connection with its products and services. Today, Amazon is one of the world’s largest online retailers, offering products and services to more than 100 countries around the globe. Amazon has expanded its retail offerings beyond books to a broad range of other products and services, including: Amazon Video; Amazon Music; AppStore for Android; Prime Photos and Prints; Fire Tablets; Fire TV; Echo & Alexa; AmazonFresh; Audible Audio Books; Movies, Music, Games; Electronics and Computers, Home, Garden & Tools; Beauty, Health & Grocery; Toys, Kids & Baby; Clothing, Shoes & Jewelry; Handmade, Sports & Outdoors; and Automotive & Industrial; Home Services; and Credit & Payment Products. Amazon offers products and services through amazon.com, as well as country specific sites for Australia, Brazil, Canada, China, France, Germany, India, Italy, Japan, Mexico, the Netherlands, Spain, and the United Kingdom.
Amazon.com is the 5th most-viewed website in the United States, the 11th most-viewed website globally, and the No. 1 most-viewed shopping website, according to public statistics offered by Internet site ranking company Alexa Internet, Inc., an Amazon company.
As of 2014, Amazon had more than 244 million active customer accounts, which are unique email addresses that have placed an order within the prior 12 months. Revenues for Amazon’s fiscal 2016 were more than $130 billion. Amazon’s worldwide expenditures on advertising and other promotional costs for 2016 were $5.0 billion. For the years 2015, 2014 and 2013 advertising costs were $3.8 billion, $3.3 billion, and $2.4 billion respectively.
More than 28 million users have “liked” and more than 27 million users follow Amazon’s Facebook page. Amazon has more than 2.7 million followers on Twitter.
The AMAZON Mark has appeared in print ads in more than 100 publications, including half- and full-page ads in USA Today, The Wall Street Journal, The New York Times, The Boston Globe, The Chicago Tribune, The Washington Post, The Dallas Morning News, The Los Angeles Times, The San Francisco Chronicle, and more. Moreover, Amazon products have been advertised using the AMAZON Mark in prominent national magazines, such as The Economist, Forbes, Fortune, Bloomberg Business Week, Money, The New Yorker, Newsweek, People, Time, Vanity Fair, Rolling Stone, Entertainment Weekly, Playboy, Esquire, Good Housekeeping, and Sports Illustrated, with combined monthly circulations in the tens of millions. Furthermore, for more than a decade, the AMAZON Mark has been promoted on the radio and on national network, cable, and local television, including during popular primetime network and cable television programs such as The Today Show, Good Morning America, The Office, Law & Order, Mad Men, Glee, Larry King Live, CSI, NCIS, The Simpsons, Family Guy, Saturday Night Live, The Daily Show, and Sports Center, and on major cable stations, such as CNN, Fox News, ESPN, Bravo, Comedy Central, AMC, VH1, and E!. Television and radio ads for the AMAZON Mark air frequently on stations with high audience ratings, and have run in the nation’s top markets, including New York, Los Angeles, Chicago, Boston, and San Francisco. Many of Amazon’s ads air for a period of several weeks or more, exposing millions of consumers to the AMAZON Mark.
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.
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Source |
Amazon Ranking |
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2018 Brand Finance Global 500 |
#1 |
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2017 Brandz Global Top 100 Brands |
#4 |
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2017 Interbrand Best Global Brands |
#5 |
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2017 Forbes The World’s Most Valuable Brands |
#6 |
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2016 Interbrand Best Global Brands |
#8 |
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2016 Brand Finance Global 500 |
#4 |
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2016 BrandZ Top 100 Most Valuable Global Brands |
#7 |
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2015 Interbrand Best Global Brands |
#10 |
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2014 Interbrand Best Global Brands |
#15 |
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2013 Interbrand Best Global Brands |
#19 |
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2012 Interbrand Best Global Brands |
#20 |
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2011 Brand Finance Global 100, September Update |
#22 |
Prior ICANN panelists have found that the AMAZON Mark is well-known and famous. See e.g., Amazon Technologies, Inc. v. Zhang Biao Cao, FA1711001758917 (Forum December 20, 2017) (“the AMAZON Mark is one of the most famous marks and business names in the world”); Amazon Technologies, Inc. v. S3 Domains, FA1703001724707 (Forum May 14, 2017) (finding that the AMAZON trademark is well-known); Amazon Technologies, Inc. v. SUPPORT SACHIKO, FA1609001692084 (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 (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 (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 (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 (Forum Oct. 11, 2006) (“Amazon is thus a very famous brand name”); Amazon.com, Inc. v. Shafir, FA 196119 (Forum Nov. 10, 2003) (referencing “the fame and goodwill surrounding Complainant’s famous mark”); Amazon.com, Inc. v. Whois Privacy Inc., FA 536281 (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 (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 (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. Amazon's registrations are prima facie evidence of validity and establish Complainant's rights for purposes of the Policy. See, e.g., Janus Int'l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity”) (emphasis in original) and Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (“Registration … with the USPTO establishes Complainant's rights in the mark.”). “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.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Ed. See also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Forum Apr. 23, 2007) (“it is sufficient that the complainant can demonstrate a mark in some jurisdiction”).
Amazon uses the logo shown below (the “Amazon Logo”) to conduct its business, and has long used a distinctive black and orange color scheme for its logos and graphics.
ICANN Rule 3(b)(viii).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
A. CONFUSINGLY SIMILAR DOMAIN NAME (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶4(a)(i)):
The disputed domain names are confusingly similar to Complainant’s well-known AMAZON trademark.
The disputed domain name <amazon.broker> is identical to the AMAZON trademark but for addition of the new gTLD .broker which is irrelevant under the Policy and fails to distinguish the disputed domain. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Ed. (“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. The practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to ‘new gTLDs’)”) (emphasis added); Dell Inc. v. Protection of Private Person / Privacy Protection, FA1606001681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs); Victoria's Secret Stores Brand Management, Inc. v. Jarred Magna, FA1404001552960 (Forum May 8, 2014) (finding that the TLD, “.clothing” could be disregarded for the purposes of comparison under paragraph 4(a)(i) of the Policy); and Abbott Labs v. Whois Svc., FA0903001254682 (Forum May 14, 2009) (“the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”).
The disputed domain name <amz.broker> abbreviates Complainant’s AMAZON trademark to AMZ, by removing the interior vowels and the letter “n”, and adds the new gTLD .broker. The new gTLD .broker can be disregarded as set forth above, and merely abbreviating AMAZON to AMZ does not avoid confusing similarity under the Policy. See e.g. Capital One Financial Corp. v. YongHoon Lee / SoftTech, FA1404001555170 (Forum May 20, 2014) (“abbreviating a complainant’s mark in a disputed domain name does not sufficiently distinguish the disputed domain name from the trademark”); Wells Fargo & Company v. ARMA Bilisim Reklam Tur. Ins. San. Tic. Ltd. Sti., FA1007001336599 (Forum Aug. 23, 2010) (finding that removing vowels from WELLS FARGO to form <wlsfrg.com> failed to distinguish the domain name); E&H Distributing, LLC v. AAA Waranty, FA1001001304769 (Forum March 16, 2010) (abbreviating “food” to “f” failed to distinguish <usfservice.com> from U.S. FOODSERVICE); Amazon Technologies, Inc. v. Domain Admin / LPS Ltd., FA1801001769456 (Forum March 21, 2018) (“Respondent’s <amazo.com> domain name is confusingly similar to the AMAZON mark, as the name consists entirely of the mark—less the letter ‘n’—and the ‘.com’ gTLD”); and Bed Bath & Beyond Proc. Co. Inc. v. Webb, FA1306001507603 (Forum July 28, 2013) (“the at-issue domain names are nothing less than intentional misspellings of Complainant’s trademark and are not materially distinguishable therefrom for the purposes of Policy ¶4(a)(i)”).
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 names in connection with a bona fide offering of goods or services; Respondent is not making a noncommercial fair use of the disputed domain names; 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 names, as legitimate interests are defined in Paragraphs 4(c)(i)-(iii) of the UDRP.
WHOIS identifies Respondent as Kurc Oksana. Respondent is not commonly known by AMAZON or any variations thereof. 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 (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 (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).
Respondent uses the disputed domain names to offer a service in which businesses can pay for purported consumer reviews of their own products sold on Complainant’s websites.
The service is promoted using a black and orange color scheme and a confusingly similar derivative of Complainant’s Amazon Logo:
Respondent’s service helps unscrupulous Sellers manipulate Amazon product rankings by purchasing favorable product “reviews” and posting them alongside reviews authored by legitimate consumers. Consumers considering purchases of the associated products would likely be deceived into thinking that these “reviews” were posted by other consumers who were not compensated for the comments in the review. This deceptive behavior, in which sellers are permitted to control their own reviews or inflate their rankings, violates U.S. federal and state laws intended to protect consumers. Without limitation, the public dissemination of false consumer reviews designed to deceive consumers using Amazon.com violates both the U.S. Federal Trade Commission Act as well as similar U.S. state laws, including but not limited to the Washington Consumer Protection Act, R.C.W. Ch. 19.86 et seq. See Federal Trade Commission Act, § 5; Wash. Rev. Code § 19.86.020. Under these circumstances, Respondent’s business cannot constitute a legitimate or bona fide use. See Amazon Technologies, Inc. v. Moore, FA1603001666264 (Forum Apr. 25, 2016) (finding that selling reviews using the domain <buyamazonreviews.com>, in violation of Amazon user agreements and state and federal law intended to protect customers from false and misleading product data, was not a bona fide offering of goods or services or any legitimate noncommercial or fair use per Policy ¶¶4(c)(i) or (iii)).
Paid authoring of deceptive reviews is also expressly prohibited by Amazon’s Community Guidelines which state that “[a]ny attempt to manipulate Community content or features, including by contributing false, misleading, or inauthentic content, is strictly prohibited” and specifically disallow “[c]reating, modifying, or posting content in exchange for compensation of any kind (including free or discounted products, refunds, or reimbursements) or on behalf of anyone else” and “offering compensation or requesting compensation (including free or discounted products) in exchange for creating, modifying, or posting content.” All Amazon sellers who sell on Amazon’s websites are subject to this prohibition, having accepted the terms of the Amazon Services Business Solutions Agreement which incorporates program policies such as the Community Guidelines by reference.
Respondent’s use of the disputed domain name to facilitate violation of Amazon’s Community Guidelines cannot be a bona fide offering of good and services. See e.g., Amazon Technologies, Inc. v. Mulama, FA1605001675807 (Forum June 16, 2016) (finding no bona fide use where “[t]he disputed domain name has been used by Respondent to run a competing business which offers vendors on <amazon.com> fraudulent positive reviews of their products in an attempt to promote their sales in violation of the Amazon user agreement”); Photobucket.com, Inc. v. Vindo Int’l Ltd., D2012-0036 (WIPO Mar. 3, 2012) (finding no bona fide offering of goods or services where the only function of the Respondent’s software offering was to allow, by technical means, the Complainant’s users to create multiple accounts in violation of Complainant’s Terms of Use); Jagex Limited v. Hao Chen, et al, D2011-0958 (WIPO Aug. 9, 2011) (“It is not a legitimate interest to use the Complainant’s trade marks to facilitate the sale of virtual goods and virtual currency used in the Complainant’s online game in a way that is contrary to the terms and conditions of use for that game”).
In short, using the AMAZON trademark to promote a service that is calculated and likely to deceive Amazon customers is not a bona fide or legitimate use. See Yahoo! Inc. v. sumit kalra / mam solution / mam solutions, FA1512001650447 (Forum Dec. 31, 2015) (finding no legitimate or bona fide use for <yahootechnicalhelp.org> where its “sole apparent use has been in connection with a fraudulent scheme aimed at Complainant's customers”).
Furthermore, Respondent’s gratuitous use of Complainant’s color scheme and imitation of the Amazon Logo are calculated and likely to confuse and mislead the public and constitute passing off. This is not a fair, nominative or otherwise legitimate use. See Microsoft Corp. v. lijiuliang, FA0912001300266 (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)”); Microsoft Corp. and Skype v. M-Style / Morgun, FA1303001491620 (Forum May 10, 2013) (“Respondent’s decision to make heavy usage of the SKYPE mark in promoting its domain name’s web content illustrates neither a Policy ¶4(c)(i) bona fide offering of goods and services, nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use”); Mulberry Co. (Design) Ltd. v. Chen, D2010-1718 (WIPO Nov. 26, 2010) (“[The] disputed domain names are being used by the Respondent for websites which falsely appear to be affiliated, connected or associated with the Complainant. In this Panel’s view, such use and purpose of the disputed domain names without the authorization of the trade mark owner shows that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names or a bona fide offering of goods and services.”); and Microsoft Corp. v. Lafont, FA1009001349611 (Forum Nov. 9, 2010) (finding that the Respondent’s use of Complainant’s MSN mark and logo showed a lack of rights and legitimate interests according to Policy ¶4(a)(ii)).
For the above reasons, the Respondent has no rights or legitimate interests in the disputed domain names.
C. REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
Respondent registered the disputed domain names in bad faith.
At the time Respondent registered the disputed domain names, Complainant’s AMAZON Mark was famous and well-known to countless consumers. Since Respondent displays a confusingly similar derivative of Complainant’s Amazon Logo at each of the resolving websites, and since Respondent’s paid fake review services target Complainant’s retail web sites, it is clear that Respondent registered the disputed domain names 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 names 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 (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”); Perot Sys. Corp. v. Perot.net, FA0007000095312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question was “obviously connected” with the complainant’s well-known marks); Skype v. Caruso, FA 1431445 (Forum May 4, 2012) (“Respondent’s actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name further evidences Respondent’s bad faith under Policy ¶4(a)(iii)”); Twitter, Inc. v. accueil des solutions inc, D2013-0062 (WIPO April 1, 2013) (“where a domain name is so obviously connected with a well-known product or service, its very use by someone with no connection with the product may suggest opportunistic bad faith”) (emphasis added, citations omitted); and Twitter, Inc. v. Accueil des Solutions, Inc, Case No. D2014-0645 (WIPO June 15, 2014) (“The Panel finds that, taking into account the significant reputation associated with the Trade Mark, there is no conceivable legitimate use of the Disputed Domain Name by the Respondent”).
Furthermore, Respondent is using the disputed domain names to promote services that deceive Complainant’s users by artificially inflating product rankings which disrupts Complainant’s business and is further evidence of bad faith. See Amazon Technologies, Inc. v. Moore, FA1603001666264 (Forum Apr. 25, 2016) (finding bad faith where “the resolving webpage offers fraudulent reviews for products listed on Complainant’s webpage and … Complainant’s business under the AMAZON trademark is in part predicated upon customers being able to give and receive product feedback”); and Amazon Technologies, Inc. v. Mulama, FA1605001675807 (Forum June 16, 2016) (“…using the disputed domain name to resolve to a web site that offers fraudulent reviews for products listed on Complainant’s webpage … disrupts Complainant’s business … because that business is partly based on customers’ ability to engage in truthful feedback”).
Bad faith also arises from the fact that Respondent’s activities violate United States federal and state laws intended to protect consumers. Specifically, the public dissemination of false consumer reviews designed to deceive consumers using Amazon.com is contrary to both the U.S. Federal Trade Commission Act as well as similar U.S. state laws, including, but not limited to, the Washington Consumer Protection Act, R.C.W. Ch. 19.86 et seq. See Federal Trade Commission Act, § 5; Wash. Rev. Code § 19.86.020; Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (use of the disputed domain name for fraudulent purposes constituted bad faith); and 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)”).
Respondent’s use of the disputed domain names to offer services that facilitate violation of Complainant’s terms of service is further evidence of bad faith. See Photobucket.com, Inc. v. Vindo International Ltd., D2012-0036 (WIPO Mar. 3, 2012) (transferring domain name where the only function of the Respondent’s software offering is to allow, by technical means, the Complainant’s users to create multiple accounts in violation of Complainant’s Terms of Use); and Jagex Limited v. Hao Chen, et al, D2011-0958 (WIPO Aug. 9, 2011) (finding that operating a business contrary to the terms of conditions of Complainant’s business to which Respondents are subject constitutes evidence of bad faith registration and use of the domain name).
Furthermore, by using Complainant’s Amazon Mark and a facsimile of Complainant’s Amazon Logo to identify itself and promote its fake review business, 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 (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 (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”).
Furthermore, Respondent’s gratuitous imitation of Complainant’s Amazon Logo creates the false impression of a website that originates with or is endorsed by Complainant. “This is precisely the sort of conduct that falls under Policy ¶4(b)(iv) and thus evidences Respondent’s bad faith registration and use of the disputed domain names.” MetroPCS, Inc. v. Robertson, FA0609000809749 (Forum Nov. 13, 2006) (finding bad faith where the respondent’s web site offered high speed internet services while giving the false impression of being affiliated with the complainant); Microsoft Corp. v. Pennisi, FA0908001280894 (Forum Sep. 29, 2009) (finding bad faith due in part to Respondent’s “repeated use of Complainant’s logo”); Tower Labs. Ltd. v. Seltzer, FA0609000791325 (Forum Oct. 16, 2006) (displaying a logo similar to the complainant’s was likely to confuse the public as to the source of the material exhibited at the respondent’s website); and 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”).
Based on the foregoing, Respondent has registered the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, Respondent suggested by email Complainant should purchase the disputed domain names from Respondent.
(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.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 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.”).
Complainant claims rights in the AMAZON mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”). Registration with a governmental trademark agency, such as the USPTO, is sufficient to prove Policy ¶4(a)(i) rights in a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provided copies of its USPTO registrations for the AMAZON mark (e.g., Reg. No. 2,832,943, registered Apr. 13, 2004). Complainant has sufficiently demonstrated its rights in the AMAZON mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <amazon.broker> and <amz.broker> domain names are confusingly similar to Complainant’s AMAZON mark because Respondent abbreviates the mark and adds a gTLD. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. <amazon.broker> contains Complainant’s mark in its entirety and consists solely of Complainant’s mark (making it identical to Complainant’s mark). <amz.broker> is a recognizable abbreviation of Complainant’s mark (and the web site contains several elements of Complainant’s logo). <amz.broker> is a confusingly similar to Complainant’s mark under Policy ¶4(a)(i). Such minor differences do not adequately distinguish either disputed domain name from Complainant’s mark under Policy ¶4(a)(i). See Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Universal Nutrition, FA 1510186 (Forum Aug. 28, 2013) (concluding that the “<uniprotein.com> domain name is, as alleged in the Complaint, an amalgamation of a common abbreviation of Complainant’s UNIVERSAL trademark and the term ‘protein,’ which describes an aspect of Complainant’s business, plus the generic Top Level Domain (‘gTLD’) ‘.com.’”); see also Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). Respondent’s disputed domain names are identical or confusingly similar to Complainant’s AMAZON mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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”).
Complainant claims Respondent has no rights or legitimate interests in the <amazon.broker> and <amz.broker> domain names because Respondent is not authorized to use Complainant’s AMAZON mark. Complainant also claims Respondent is not commonly known by the disputed domain names. Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain names. 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). The relevant WHOIS information w identifies Respondent as “Kurc Oksana.” There is no obvious relationship between Respondent’s name and the disputed domain names. The Panel must conclude Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii).
Complainant claims Respondent does not use the <amazon.broker> and <amz.broker> domain names in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent attempts to pass itself off as Complainant. Passing off as a complainant for commercial gain does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). The disputed domain names replicate the color scheme at Complainant’s website and feature a derivative of Complainant’s mark. The websites claim to allow users to improperly improve their Amazon user reviews. Respondent attempts to pass itself off as Complainant to sell its consumer review service (where businesses pay Respondent to increase the number of reviews for their products, in violation of Complainant’s polices). Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the <amazon.broker> and <amz.broker> domain names in bad faith. Respondent disrupts Complainant’s business by diverting business users to the disputed domain names which offer consumer review services for businesses that sell goods at Complainant’s website. Passing off as a complainant to attract users to a disputed domain name constitutes bad faith under Policy ¶4(b)(iii) and (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶4(b)(iii)); see also 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.”). Respondent’s services violate Complainant’s terms of service. Respondent’s passing off as Complainant to sell Respondent’s consumer review service demonstrates bad faith under Policy ¶4(b)(iii) and (iv).
Complainant claims Respondent had actual knowledge of Complainant’s rights in the AMAZON mark when Respondent registered the <amazon.broker> and <amz.broker> domain names. Respondent’s use of the disputed domain names to create false reviews clearly indicates Respondent knew about Complainant’s mark and website (and its inner workings). Respondent registered the disputed domain names with actual knowledge of Complainant’s mark and website. Respondent had actual knowledge of Complainant’s rights in the AMAZON mark at the time of registration and used the domain names in bad faith under Policy ¶4(a)(iii).
Finally, Respondent offered to sell the domain names to the administering body for this Proceeding (and the Panel will infer to the Complainant as well, especially since Complainant gets copy of such communications). No price was mentioned, but it seems likely Respondent wanted something beyond Respondent’s out of pocket costs. This constitutes bad faith registration and use under Policy ¶4(b)(i), which provides in relevant part that bad faith will be found when there are “circumstances indicating … [Respondent has] registered … the domain name primarily for the purpose of selling … to the complainant … for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name…”
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <amazon.broker> and <amz.broker> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, May 9, 2018
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