Amazon Technologies, Inc v. Alex / OctaLogo
Claim Number: FA2212002023898
Complainant is Amazon Technologies, Inc ("Complainant"), United States, represented by James F. Struthers of Richard Law Group, Inc., United States. Respondent is Alex / OctaLogo ("Respondent"), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amazonkindledirect.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to Forum electronically on December 13, 2022; Forum received payment on December 13, 2022.
On December 14, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by email to Forum that the <amazonkindledirect.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 14, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2023 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@amazonkindledirect.com. Also on December 14, 2022, the Written Notice of the Complaint, notifying Respondent of the email 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 15, 2022.
Additional Submissions from both parties were received on December 16, 2022.
On December 20, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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 and its predecessors in interest have used AMAZON and AMAZON.COM since 1995 in connection with online retail and related goods and services. Complainant has offered electronic reading devices and related services under the KINDLE mark since 2007. Complainant owns trademark registrations for AMAZON and KINDLE in the United States and other jurisdictions around the world, and for related design marks. Complainant asserts that both marks have become famous as a result of extensive use, advertising, media coverage, and commercial success, citing prior decisions under the Policy that have so found.
Respondent registered the disputed domain name <amazonkindledirect.com> via a privacy registration service in September 2022. The domain name is being used for a website that purports to offer ghost writing services for authors. Respondent is identified on the website only as "Amazon Kindle Direct" or "Amazon KDP." The masthead for the website displays a logo comprising the AMAZON and KINDLE marks in the same lettering and coloring as that used in Complainant's logos. The site also includes what Complainant describes as "counterfeit badges" that identify Respondent as an "AMAZONKINDLE PREMIER PARTNER." It does not include any disclaimers or other efforts to distinguish Respondent from Complainant. The website also promotes Barnes&Noble, which offers competing e-reader and e-bookstore services. Complainant notes that Respondent is the subject of at least one prior decision under the Policy that involved two other domain names targeting Complainant's AMAZON mark. See Amazon Technologies, Inc. v. Alex / OctaLogo, FA 2019219 (Forum Dec. 5, 2022) (ordering transfer of <amazonprohub.com> and <amazonmarketinghub.com>).
Complainant contends on the above grounds that the disputed domain name <amazonkindledirect.com> is confusingly similar to its AMAZON and KINDLE marks; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent denies using Complainant's name or "anything that is mainly related to them." Respondent states that it offers publishing, writing, editing, and marketing services to authors seeking to publish on Amazon and elsewhere, and ensures that they understand that Respondent is not directly associated with Complainant. Respondent states further that if it would consider surrendering the disputed domain name for compensation of "around $250k."
C. Additional Submissions
Complainant submitted an additional submission seeking to address new matters raised in the Response, and Respondent submitted an additional submission in response thereto.
Rule 12 vests the Panel with sole discretion to request further statements or documents from the parties. Ordinarily, additional submissions will be considered only to the extent that they reflect newly discovered evidence not reasonably available to the submitting party at the time of its original submission, or rebut arguments by the opposing party that the submitting party could not reasonably have anticipated. See, e.g., Parchment LLC v. Jim Lovelle / Parchment Transcript LLC, FA 2009654 (Forum Sept. 1, 2022). The Panel finds it unnecessary to consider the additional submissions in this case, and thus relies solely on the parties' initial submissions.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was 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.
The disputed domain name <amazonkindledirect.com> incorporates Complainant's registered AMAZON and KINDLE trademarks, adding the generic term "direct" and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's marks. See, e.g., Amazon Technologies, Inc. v. Alex / OctaLogo, FA 2019219, supra (finding <amazonprohub.com> and <amazonmarketinghub.com> confusingly similar to AMAZON); Amazon Technologies, Inc. v. Rajneesh Kumar / Raj Bansal / Infowiz / Usremo Support / Domain Admin / Whois Privacy Corp., FA 1685194 (Forum Sept. 3, 2016) (finding <kindlesupportamazon.com> confusingly similar to KINDLE and AMAZON); Amazon Technologies, Inc. v. Zhen Sheng Dai / Rijin Doujin / Leo Chen, FA 1982342 (Forum Feb. 24, 2022) (finding <blinkdirect.shop> confusingly similar to BLINK). The Panel considers the disputed domain name to be confusingly similar to marks in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered marks without authorization. It is being used for a website that uses Complainant's marks to promote services that compete with or are related to those offered by Complainant. Respondent's use of the marks far exceeds what is permitted by nominative fair use, to such an extent that the infringement is clear; this is not a legitimate dispute over trademark rights. See Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (setting forth test for fair use of a mark by a provider of related services); compare AB Electrolux v. Domain Admin / Whois Privacy Corp., D2019-0313 (WIPO Mar. 19, 2019) (finding lack of rights or legitimate interests where services were offered in manner suggesting affiliation with mark owner) with Fluke Corp. v. Erwin Bryson / fixmyfluke / Nelson Bryson, FA 1988399 (Forum July 6, 2022) (finding rights or legitimate interests where website offered services related only to complainant's products and accurately disclosed lack of relationship with complainant). See also Amazon Technologies, Inc. v. Alex / OctaLogo, FA 2019219, supra (finding lack of rights or legitimate interests in nearly identical circumstances). The Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "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 [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service to register a domain name incorporating two of Complainant's famous marks, and is using the domain name for a misleading website that attempts to pass off as Complainant to promote competing and related services. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Amazon Technologies, Inc. v. Alex / OctaLogo, FA 2019219, supra (finding bad faith registration and use of AMAZON mark by same Respondent in nearly identical circumstances). Bad faith is also suggested by Respondent's request for compensation of "around $250k," an amount that likely exceeds Respondent's out-of-pocket costs directly related to the domain name by more than $249,900. The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amazonkindledirect.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: December 22, 2022
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