Amazon Technologies, Inc. v. Jonathan Riley / Alex Yum / Lotta Ek
Claim Number: FA2302002030386
Complainant is Amazon Technologies, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Jonathan Riley / Alex Yum / Lotta Ek (“Respondent”), represented by Harold Haslett, South Africa.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bitcoinprimeapp.com>, <bitcoinprimeapp.cyou>, and <bitcoins-prime.com>, registered with MainReg Inc. and NameCheap, Inc..
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on February 2, 2023; Forum received payment on February 2, 2023.
On February 3, 2023 and February 6, 2023, MainReg Inc. and NameCheap, Inc. confirmed by e-mail to Forum that the <bitcoinprimeapp.com>, <bitcoinprimeapp.cyou>, and <bitcoins-prime.com> domain names are registered with MainReg Inc. and NameCheap, Inc. and that Respondent is the current registrant of the names. MainReg Inc. and NameCheap, Inc. has verified that Respondent is bound by the MainReg Inc. and NameCheap, 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 February 7, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2023 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@bitcoinprimeapp.com, postmaster@bitcoinprimeapp.cyou, and postmaster@bitcoins-prime.com. Also on February 7, 2023, 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 February 23, 2023.
On February 27, 2023 an Additional Submission was received from Complainant.
On February 28, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, 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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. 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.”
Respondent admits that the <bitcoinprimeapp.com> and <bitcoinprimeapp.cyou> domain names are under comment control, but alleges that the <bitcoins-prime.com> domain name is not under its control. The resolving websites of all three disputed domain names display identical logos and the same text under the heading “Features of the Bitcoin Prime App”. The Panel notes that, after the instant complaint was filed, Respondent changed the logos on the <bitcoinprimeapp.com> and <bitcoinprimeapp.cyou> websites, whereas the logo was not changed on the <bitcoins-prime.com> website.
The Panel finds that it is highly unlikely that two unrelated parties would create web pages with identical logos and the same text. On the balance of probabilities, the Panel is not convinced that the failure to change the logo on <bitcoins-prime.com> website demonstrates that it is not controlled by Respondent. Thus the Panel finds, on the balance of probabilities, that the three disputed domain names were registered by the same domain name holder. See The Valspar Corporation v. Zhou Zhiliang / zhouzhiliang / Zhiliang Zhou / Eric Chow / Visspa Ltd., FA100800133934 (Forum Sept. 28, 2010); see also BBY Solutions, Inc. v. White Apple / Dev Kumar, FA1805001787251 (Forum June 20, 2018).
Consequently, the Panel will rule on all three contested domain names, and the three registrants are collectively referred to as “Respondent”.
A. Complainant
Complainant states that, in 1994, its Founder Jeff Bezos developed an innovative plan to sell a wide selection of books over the Internet. Complainant opened its virtual doors in July 1995, offering retail store services featuring books via the web site <www.amazon.com>. Today, Complainant is a leading retailer offering a wide variety of products and services. Complainant’s services include Amazon Coins, a virtual currency, and Amazon credit card and payment services. More than 200 million customers or Complainant subscribe to Prime, a service launched in 2005 through which customers pay an annual membership fee to receive free same-day, one-day, or two-day shipping on millions of products sold by Complainant or third-party sellers through <amazon.com>, along with other benefits, which include unlimited access to award-winning movies and TV episodes with Prime Video, ad-free music and podcast streaming, unlimited access to more than a thousand books and magazines with Prime Reading, free in-game content and games with Prime Gaming, and more. Complainant’s Prime Rewards Visa Card offers Prime members 5% cash back on Amazon and Whole Foods Market purchases. Prime members also enjoy exclusive deals on Prime Day, an annual global shopping event launched in 2015. Prime members purchased more than 300 million items during Prime Day 2022, saving over $1.7 billion. Prime membership is prominently and continuously promoted on the landing page for <amazon.com>, which is the 4th most viewed website in the United States and the 9th most viewed website globally according to public statistics offered by Internet site ranking company Similarweb. Prime services are also prominently featured in stories about Complainant and its founder, Mr. Bezos, such as the cover story of the July 22, 2016, issue of Newsweek magazine featuring the headline, “The Prime of Jeff Bezos”. The PRIME trademark has also appeared in print ads in numerous marquee publications, as well as in unsolicited coverage in major newspapers and magazines such as The Atlanta Journal-Constitution, The Boston Globe, Business Insider, Chicago Tribune, The Dallas Morning News, The Denver Post, Forbes, Fortune, Good Housekeeping, Houston Chronicle, The Los Angeles Times, New York Post, The New York Times, San Francisco Chronicle, The Seattle Times, Star Tribune, Time, USA Today, The Wall Street Journal, The Washington Post, and Wired. Furthermore, the PRIME trademark has been promoted on the radio and on national network, cable, and local television, including during popular broadcast network and cable television programs in the nation’s top markets and during televised events garnering top audience ratings, such as the NFL’s Super Bowl event. In addition, Complainant’s Prime services are so familiar to the public that the PRIME trademark has appeared in dialogue on numerous popular entertainment shows, such as HBO’s Silicon Valley, CBS’s The Late Show with Stephen Colbert, and NBC’s The Tonight Show Starring Jimmy Fallon, as well appearing in unsolicited news stories on national televised news programs such as 60 Minutes and Today. The Prime Video mobile app is ranked #8 in entertainment on Apple’s app store and has more than 500 million downloads on Google Play. Complainant has rights in the PRIME mark through its registration of the mark in the United States in 2017.
Complainant alleges that the disputed domain names are identical or confusingly similar to its PRIME mark as they incorporate the mark in its entirety and merely add the descriptive terms “bitcoin” or “bitcoins”, “app”, or hyphen and the “.com” or “.cyou” gTLD. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Respondent been authorized by Complainant to use its PRIME mark. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services. Instead, Respondent passes off as Complainant to purport to offer unrelated goods and services: the resolving websites display or displayed a logo that is confusingly similar to Complainant’s distinctive logo. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent’s website displays or displayed confusingly similar logos in order to create a false impression that they are endorsed by or associated with Complainant, and this in order to entice users to invest in bitcoin scheme for commercial gain. Respondent’s use of privacy shields can evince bad faith registration. Respondent had actual knowledge of Complainant’s rights in the PRIME mark prior to registering the disputed domain names as evidenced by Respondent’s use of the mark in addition to Respondent’s resolving websites using logos that are confusingly similar to Complainant’s distinctive logo. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent (who replies only with respect to the <bitcoinprimeapp.com> and <bitcoinprimeapp.cyou> domain names) alleges that the disputed domain names are not confusingly similar to Complainant’s mark because the word “prime” is a generic term used commonly not in connection with Complainant.
According to Respondent, it has a legitimate interest in the disputed domain names and is using them in connection with a bona fide offering of goods or services, namely provision of bitcoin-related services. Upon receipt of the instant Complaint, Respondent swiftly removed all logos referred to in the Complaint and will not use such logos in any other way. In addition, the accusation that Respondent is running a fraudulent scheme is misleading and totally unfounded.
Further, says Respondent, it registered and is using the disputed domain names in good faith. It had no intention of appearing to be associated with Complainant and any use of logos similar to Complainant’s mark was an honest mistake. The logos are no longer relevant as they have been removed from the resolving websites and will not be used again.
C. Additional Submissions
In its Additional Submission, Complainant rebuts Respondent’s arguments and maintains its position.
Complainant owns the mark PRIME and uses to offer a variety of online services.
Complainant’s rights in its mark date back to at least 2017.
The <bitcoinprimeapp.com> domain name was registered in 2020; the other two disputed domain names were registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving websites display or displayed a logo which is confusingly similar to Complainant’s distinctive logo, and purported to offer goods and services not related to Complainant.
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 names incorporate Complainant’s PRIME mark in its entirety and merely add the descriptive terms “bitcoin” or “bitcoins”, “app”, or hyphen and the “.com” or “.cyou” gTLD. The addition of descriptive/generic terms, punctuation and a gTLD fail to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”).
The Panel notes that Respondent alleges that the disputed domain names are not confusingly similar to Complainant’s mark because the word “prime” is a generic word used commonly not in connection with Complainant. However, as Complainant aptly points out, such arguments have been consistently rejected under the analysis of the first element of the Policy. See Amazon Technologies, Inc. v. Adam Grunwerg / Finixio Limited, FA2012001924577 (Forum Feb. 9, 2021) where, in addressing the registrant’s assertion that PRIME in <bitcoinprime.net> was generic, the Panel held that “the term PRIME is protected by relevant trademark registrations, the details of which have been submitted by Complainant, a fact which per se confirms the distinguishing ability of the term PRIME.”); see also L.F.P., Inc. v. Movie Name Co., FA0307000167965 (Forum Aug. 4, 2003) (“Respondent has failed to refute the presumption that the HUSTLER mark is inherently distinctive in light of Complainant’s registration of that trademark with the U.S. Patent and Trademark Office. Generic marks are denied that status under U.S. law.”) (citations omitted); see also Yahoo! Inc. v. Hangzhou Hi2000, FA0301000141825 (Forum Feb. 26, 2003) (holding the respondent’s “assertions that the Complainant’s famous mark is a generic word are untenable” in view of the complainant’s evidence of ownership, registration, and notoriety of the YAHOO! Mark).
Further, according to 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”): “In specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation, … may support a finding of confusing similarity.”
Here, Complainant presents evidence showing that the resolving websites contain elements likely intended to make consumers believe that Respondent’s site is somehow affiliated with Complainant. This supports the side-by-side comparison above.
For all the above reasons, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its PRIME mark. Respondent is not commonly known by the disputed domain names: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is 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). Here, the WHOIS information for the disputed domain names lists the registrants as “Jonathan Riley”, “Alex Yum” and “Lotta Ek”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
The resolving websites promote a purported bitcoin trading app which requires “a minimum deposit of $250 to start trading financial assets”. Prior to the filing of the instant Complaint, all three resolving websites displayed a logo which is similar to Complainant’s distinctive logo.
Subsequent to the filing of the instant Complaint, the “PRIME” portion of the logo was removed from the <bitcoinprimeapp.com> and <bitcoinprimeapp.cyou> websites, whereas it was not changed on the <bitcoins-prime.com> web site. As noted above, the Panel is not convinced that the <bitcoins-prime.com> domain name is controlled by a separate entity.
Further, as Complainant aptly points out, prior panels have refused to find good faith use and legitimate interest following changes to respondents’ websites made after a complaint was filed. See MB Financial Bank, N.A. v. MBBANK, FA0602000644517 (Forum April 4, 2006) (finding bad faith and no legitimate interest after noting “that the proper record for review of this dispute should be based on the website and Domain Name as it existed on the date the Complaint was filed, not on the post hoc website that the Respondent created after the fact [without explanation]”); see also InfoSpace, Inc. v. Sunwave Communications c/o Donna McCole, FA0309000198015 (Forum Nov. 10, 2003) (finding that respondent’s alteration of a website following commencement of the UDRP was “contrived to prevent Complainant from succeeding, not to make a legitimate noncommercial or fair use of the domain name pursuant to Policy paragraph 4(c)(iii)”); see also American Airlines v. James Manley d/b/a Webtoast Internet Services, Inc., FA1006001330044 (Forum July 27, 2010) (“This panel’s proper focus is on the <americanway.com> website that was contemporary with the filing of the Complaint. That website does not show Respondent to be making a bona fide offering or [sic] goods or services or fair use of its domain name.”).
The Panel finds, on the balance of probabilities, that Respondent’s use of a logo that is confusingly similar to Complainant’s distinctive logo was likely to confuse and mislead users, and that the subsequent changes to two of the resolving websites cannot lead to a different conclusion. A general intent to divert internet users to a disputed domain name in order to mislead and confuse users may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is 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).”); see also Amazon Technologies, Inc. v. master / masterforwarder, FA2001001880203 (Forum Feb. 21, 2020) (finding no rights or legitimate interests in <amazon-mining.com> where the registrant adopted Complainant’s identity, trademark and logo to promote Respondent’s purported data centers and cloud cryptocurrency mining services); see also Amazon Technologies, Inc. v. HAIGH / AMAZON LTD, FA2008001907569 (Forum Sept. 11, 2020) (“The resolving website promotes data centers and cryptocurrency mining services which are unrelated to Complainant’s business. Use of a disputed domain name to display a complainant’s mark and offer services unrelated to its business is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii)”.). The Panel therefore finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
The Panel notes that Respondent denies running a fraudulent scheme. Complainant did not explicitly allege – much less provide evidence to show – that the resolving websites were used in furtherance of fraudulent or phishing schemes. Complainant did, however, imply such an allegation by citing UDRP precedents that referred to fraudulent schemes, and this no doubt motivated Respondent to deny the allegation. Since there is no evidence in the record regarding use of the resolving websites in furtherance of fraudulent schemes, the Panel will not further discuss that allegation.
Despite Respondent’s denials, the Panel finds, on the balance of probabilities, that Respondent registered and uses the disputed domain names to create a false impression of an affiliation or endorsement by Complainant. Registration of a confusingly similar domain name with the intent to benefit commercially from the goodwill association to a complainant may be evidence of bad faith registration under Policy ¶ 4(b)(iv). See Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”); see also Amazon Technologies, Inc. v. Adam Grunwerg / Finixio Limited, FA2012001924577 (Forum Feb. 9, 2021) (“Respondent’s subsequent use of the domain name in dispute <bitcoinprime.net> as a website clearly demonstrate his attempts to pass off as Complainant and mislead consumers/online visitors and divert them to its own commercial ventures for its own commercial gain.”); see also MetroPCS, Inc. v. Robertson, FA0609000809749 (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) (“use of the [complainant’s] logo on the web site to which [the disputed domain] is redirected supports the conclusion that [the disputed domain] is likely to confuse, and thus is being used in bad faith”); see also Microsoft Corp. v. Pennisi, FA0908001280894 (Forum Sept. 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). Thus the Panel finds bad faith registration and use per Policy ¶ 4(b)(iv).
According to paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), a Panel may conduct limited factual research regarding disputed domain names:
Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.
This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.
On the basis of public records, it appears that the WHOIS for the <bitcoinprimeapp.com> domain name is false: the listed address does not exist. This can indicate bad faith registration and use. See Video Direct Distribs. Inc. v. Video Direct, Inc., FA 94724 (Forum June 5, 2000) (finding that the respondent acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name). Accordingly, the Panel finds bad faith registration and use on this ground also.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bitcoinprimeapp.com>, <bitcoinprimeapp.cyou>, and <bitcoins-prime.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: February 28, 2023
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