DECISION

 

Amazon Technologies, Inc. v. Rajneesh kumar / raj bansal / infowiz / usremo support  / Domain Admin / Whois Privacy Corp.

Claim Number: FA1607001685194

PARTIES

Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA.  Respondent is Rajneesh kumar / raj bansal / infowiz / usremo support  / Domain Admin / Whois Privacy Corp. (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <kindletechnicalsupport.com>, <kindlecomsupport.com>, <kindlesupportamazon.com>, <amazontapsetup.com>, <amazontapsupport.com>, <echodotsetup.com>, <echodotamazon.com>, and <amazondevicesupport.com>, registered with GoDaddy.com, LLC and <kindlesupporthelp.com>, registered with Internet Domain Service BS Corp.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 25, 2016; the Forum received payment on July 25, 2016.

 

On July 26, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the, <kindletechnicalsupport.com>, <kindlecomsupport.com>, <kindlesupportamazon.com>, <amazontapsetup.com>, <amazontapsupport.com>, <echodotsetup.com>, <echodotamazon.com>, and <amazondevicesupport.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 July 26, 2016 Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <kindlesupporthelp.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name.  Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.

 

On July 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 2016 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@kindlesupporthelp.com, postmaster@kindletechnicalsupport.com, postmaster@kindlecomsupport.com, postmaster@kindlesupportamazon.com, postmaster@amazontapsetup.com, postmaster@amazontapsupport.com, postmaster@echodotsetup.com, postmaster@echodotamazon.com, and postmaster@amazondevicesupport.com.  Also on July 26, 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.

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On August 24, 2016, 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 a formal response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts trademark rights in AMAZON, AMAZON ECHO, and KINDLE by reason of national trademark registration and common law rights in the ECHO DOT and AMAZON TAP by reason of use and reputation.

 

Complainant submits that the disputed domain names are confusingly similar to one or more of the trademarks in which Complainant asserts rights because each domain contains one or more of the trademarks in combination with non-distinctive matter being the  top-level domain (“gTLD”) “.com” and descriptive terms being one or more of “com”, “device”, “support”, “help”, “technical” and “setup.”

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names and alleges that Respondent registered and used the disputed domain names in bad faith.  In particular, the disputed domain name, <kindlesupporthelp.com> is used to pass itself off as Complainant while attempting to deliver malware to Internet users, the <kindlecomsupport.com> and <kindlesupportamazon.com> domain names resolve to websites containing construction notices that attempt to deliver malware, the <kindletechnicalsupport.com>, <amazontapsetup.com>, <amazontapsupport.com>, <echodotamazon.com> and <amazondevicesupport.com> domain names resolve to inactive websites, and the <echodotsetup.com> domain name is used to host a news and review website which purports to redirect Internet users to Complainant’s website, but instead redirects back to the same website.

 

B. Respondent

Respondent failed to submit a formal Response in this proceeding.

 

 

Preliminary Issue #1: Multiple Respondents

Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”

 

Complainant has alleged that the holders of the domain names are controlled by one person who uses various aliases.  In support thereof, Complainant gives detailed reasons[i] which, in this instance, do not require examination since the Forum has received two separate emails from Respondent, one stating “We are willing to transfer all the domains to amazon and agree to the complaint” and the other, “We are ready to transfer all the sites to amazon willingly.”

 

The Panel therefore allows this single Administrative Proceeding to continue against all of the disputed domain names.

                                          

Preliminary Issue #2: Consent to Transfer

As stated, the Forum received emails from Respondent stating its willingness to transfer the domains to Complainant. 

 

Panel notes that Complainant has not reacted to that offer from which it can be reasoned that it has a preference for a Decision by the Panel.  Panel has determined in this case to apply the Policy.[ii]  

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.    Complainant is an online retailer and the owner of the following trademark registrations with the United States Patent & Trademark Office (“USPTO”): Reg. No 2,832,943, registered Apr. 13, 2004 for AMAZON; Reg. No. 4,760,325, registered June 23, 2015 for AMAZON ECHO; Reg. No. 3,694,267, registered Oct. 6, 2009 for KINDLE).

2.    the disputed domain names were registered in the following dates:

<kindlesupporthelp.com> on February 13, 2014;

<kindletechnicalsupport.com>         on March 11, 2014;

<kindlesupportamazon.com> & <kindlecomsupport.com> both on October 2, 2014; and

<echodotsetup.com>, <echodotamazon.com>, <amazontapsupport.com>, <amazontapsetup.com> & <amazondevicesupport.com>        all on March 3, 2016.

3.    the resolution of the disputed domain names is as described earlier; and

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.

 

DISCUSSION

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. 

 

Identical and/or Confusingly Similar

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.  It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[iii]  Complainant therefore has rights in AMAZON, AMAZON ECHO and KINDLE through their registration with the USPTO.

 

Complainant asserts common law rights in the ECHO DOT and AMAZON TAP marks.  It states that:

 

“In 2014, Amazon introduced the Echo, a groundbreaking voice-controlled device consumers can ask for information, music, news, and weather from across the room and get results or answers instantly.  See http://www.amazon.com/echo and Exhibit H.  The Echo was reported to be the best-selling product over $100 on Amazon on Black Friday, 2015.  Id.  Amazon offers free help and setup assistance for its Echo devices, including via the official URL amazon.com/echosetup.  Id.  On March 3, 2016 Amazon announced additional voice controlled devices in this series – the Echo Dot and Amazon Tap.  See Exhibit I.  Amazon’s launch of these devices has been accompanied by extraordinary global press coverage and consumer recognition.  Id.  For example, Amazon Tap is the #1 Best Seller on Amazon in the Compact Radios and Stereos category.  Id.  Amazon’s use and promotion of the distinctive ECHO DOT and AMAZON TAP trademarks gives rise to common law rights and secondary meaning under applicable law.” 

 

Exhibit I to the Complaint contains a Press Release by Complainant dated March 3, 2016 which reads in part: “Amazon Introduces Echo Dot and Amazon

Tap, Two New Alexa-Enabled Devices - Amazon today announced two

new Alexa-enabled devices: Echo Dot and Amazon Tap.”  Otherwise, Exhibit I contains various “Google” screenshots where from the summary information to the links it would seem that products sold under those trademarks are either advertised or reviewed.  There is nothing in Exhibit I whatsoever in the nature of proof of either “extraordinary global press coverage” or “consumer recognition”.[iv]  

 

In short, there is no evidence of secondary meaning or of common law rights and Panel finds that Complainant has not proven trademark rights in either ECHO DOT and AMAZON TAP, notwithstanding the transparently opportunistic registration of the disputed domain names <echodotsetup.com>, <echodotamazon.com>, <amazontapsupport.com> and <amazontapsetup.com> on the March 3, 2016 launch date.

 

For the purposes of comparison the gTLD can be disregarded since it is of no source of distinguishing value.   Stripped of the gTLD, the resultant terms can be usefully separated into three categories:

(1)

kindlecomsupport

kindlesupporthelp

kindletechnicalsupport

kindlesupportamazon

 

(2)

amazontapsupport

amazontapsetup

amazondevicesupport

echodotamazon

 

(3)

echodotsetup

 

Re (1), the trademark KINDLE is the dominant and distinctive part of the composite term in each case, the added words being descriptive and in one case further combining Complainant’s AMAZON trademark, thus compounding the confusion.

 

Re (2), the trademark AMAZON is the dominant and distinctive part of the composite term in each case.  The added words are in all but one case descriptive.  The word “echo” is not generic and might in some instances be capable of adding distinctiveness to other words but here Panel finds on balance that the trademark AMAZON dominates the expression “echodotamazon” and so the composite term is confusing similar to the trademark.

 

Accordingly, Panel finds the domain names corresponding to the terms in groups (1) and (2) above to be confusingly similar to a relevant trademark.[v]   Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy with respect to these domain names.

 

Re (3), the term “echodotsetup” is not confusingly similar to any trademark in which Complainant has shown rights.  The Complaint therefore fails as against this disputed domain name without further analysis.[vi]

 

Rights or Legitimate Interests

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 trade mark 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.[vii]

 

The publicly available WHOIS information does not provide any 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.  Complainant has not authorized Respondent to use its trademarks or to register any domain name incorporating its trademarks.  Further, there is no bona fide offering of goods or services or legitimate noncommercial or fair use of the domain names for the following reasons:

 

·         the <kindlesupporthelp.com> domain name resolves to a website used to compete with and pass itself off as Complainant, at the same time attempting to deliver malware to Internet users;[viii]

·         the <kindlecomsupport.com> and <kindlesupportamazon.com> domain names resolve to websites containing construction notices that attempt to deliver malware;

·         the <kindletechnicalsupport.com>, <amazontapsetup.com>, <amazontapsupport.com>, <echodotamazon.com> and <amazondevicesupport.com> domain names are not in use.

 

Panel finds that Complainant has established a prima facie case[ix] and so the onus shifts to Respondent to establish a legitimate interest in the domain names.  In the absence of a Response, the prima facie case against Respondent 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.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and that they are being 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.’

 

Panel finds that Respondent’s conduct falls under paragraph 4(b)(ii) above. The registration of multiple domain names combining the trademark(s) of another with various generic and descriptive terms constitutes a pattern of (bad faith) conduct.[x]  The domain names prevent Complainant from reflecting the trademarks in those domain names.  There further evidence is that the likely controlling person behind all of the domain names, Mr Kumar, has already engaged in such a pattern of bad faith registration and use of domain names as shown by the decision in Amazon Technologies, Inc. v. Kumar, FA1602001659580 (Forum Mar. 3, 2016) involving the name <amazonechohelp.com>.[xi]  Paragraph 4(b)(ii) is satisfied. 

 

Panel finds registration and use in bad faith in respect of the disputed domain names.  Complainant has therefore established the third and final element of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED in respect of the <kindlesupporthelp.com>, <kindletechnicalsupport.com>, <kindlecomsupport.com>, <kindlesupportamazon.com>, <amazontapsetup.com>, <amazontapsupport.com>, <echodotamazon.com>  and <amazondevicesupport.com> domain names and it is ORDERED that those domain names be TRANSFERRED from Respondent to Complainant.

 

Having failed to establish one of the three elements required under the ICANN Policy in respect of the <echodotsetup.com> domain name, the Panel concludes that relief shall be DENIED in respect of that domain name and it is ORDERED that it REMAIN with Respondent.

 

 

Debrett G. Lyons, Panelist

Dated:  September 3, 2016