DECISION

 

Amazon Technologies, Inc. v. Alex Walker / Probyte / Publishing Domains / Junaid Mansoor / Kristopher Ginn / Research in Progress / Salman Saad / Mavia Production / Technified Labs / jason smith / Alpha Design

Claim Number: FA2402002083668

 

PARTIES

Complainant is Amazon Technologies, Inc. ("Complainant"), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Alex Walker / Probyte / Publishing Domains / Junaid Mansoor / Kristopher Ginn / Research in Progress / Salman Saad / Mavia Production / Technified Labs / jason smith / Alpha Design ("Respondent"), Multiple Locations.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names listed in the Complaint issue are <amazonbookpublications.co>, <amazon-directpublisher.com>, <amazonkindleofficial.com>, <amazonpublishhub.com>, <amazonpublishersltd.com>, <amazonpublishingmaestro.com>, <amzpublishingmaster.com>, <kindledirectpublish.com>, <publishatamazon.com>, <publishonamazonnow.com> and <wepublishonamazon.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com, NameCheap, Inc. and GoDaddy.com, LLC.

 

For the reasons given below, the Panel finds that the only relevant domain names for this case are <amazonbookpublications.co>, <amazon-directpublisher.com>, <amazonkindleofficial.com>, <amazonpublishhub.com>, <kindledirectpublish.com>, publishonamazonnow.com> and <wepublishonamazon.com>.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 13, 2024; Forum received payment on February 13, 2024.

 

On February 14, 2024, PDR Ltd. d/b/a PublicDomainRegistry.com, NameCheap, Inc. and GoDaddy.com, LLC confirmed by e-mail to Forum that the <amazonbookpublications.co>, <amazon-directpublisher.com>, <amazonkindleofficial.com>, <amazonpublishhub.com>, <amazonpublishersltd.com>, <amazonpublishingmaestro.com>, <amzpublishingmaster.com>, <kindledirectpublish.com>, <publishatamazon.com>, <publishonamazonnow.com> and <wepublishonamazon.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com, NameCheap, Inc. and GoDaddy.com, LLC and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com, NameCheap, Inc. and GoDaddy.com, LLC have verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com, NameCheap, Inc. and GoDaddy.com, LLC registration agreements 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 15, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 2024 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@amazonbookpublications.co, postmaster@amazon-directpublisher.com, postmaster@amazonkindleofficial.com, postmaster@amazonpublishhub.com, postmaster@amazonpublishersltd.com, postmaster@amazonpublishingmaestro.com, postmaster@amzpublishingmaster.com, postmaster@kindledirectpublish.com, postmaster@publishatamazon.com, postmaster@publishonamazonnow.com and postmaster@wepublishonamazon.com. Also on February 15, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On March 7, 2024, 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.

 

RELIEF SOUGHT

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. In support of this allegation it states that:

a)       The named registrant for the domain names <amazonkindleofficial.com>, <amazonpublishhub.com>, <publishonamazonnow.com>, and <wepublishonamazon.com> is the same.

b)       The resolving websites for the domain names <amazonbookpublications.co>, <amazon-directpublisher.com>, <amazonkindleofficial.com>, <kindledirectpublish.com> display nearly identical graphical elements.

c)       Two of the other domain names have the same registrant, but not the same registrant as those of the domain names listed under (a) above.

d)       Several of the other domain names display common graphical elements, but not the same graphical elements as those displayed by the websites at the domain names listed under (b) above.

e)       Several of the other domain names display text, and/or a disclaimer, that is the same as text, and/or a disclaimer, displayed by some of the websites at the domain names listed under (a) and (b) above, but the websites listed under (a) and (b) above do not all display the same text and/or disclaimers.

f)       the nominal registrants of the domain names, respectively, <amazonbookpublications.co>; <amazonpublishingmaestro.com> and <publishatamazon.com>; and <amzpublishingmaster.com> have been found by prior Panels to have used multiple aliases for domain names targeting Complainant's trademarks

 

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."  

 

The Panel finds that the evidence presented to support allegations (a) and (b) above is sufficient to establish that those domain names were registered by the same domain name holder.

 

However, the Panel finds that the evidence presented to support allegations (c) through (f) above is not sufficient to find that those domain names were registered by the same person or entity that registered the domain names referred to under (a) and (b) above.

 

Under Forum's Supplemental Rule 4(c), the Panel must determine which domain names are commonly owned and elect which Respondent to proceed against, as a UDRP decision can proceed against only one Respondent. The Panel is then required to dismiss the Complaint in relation to the domain names not commonly owned by the chosen Respondent. 

 

Accordingly, the Panel will rule only on the domain names <amazonbookpublications.co>, <amazon-directpublisher.com>, <amazonkindleofficial.com>, <amazonpublishhub.com>, <kindledirectpublish.com>, <publishonamazonnow.com> and <wepublishonamazon.com>, and it will dismiss, without prejudice, the complaint regarding the domain names <amazonpublishersltd.com>, <amazonpublishingmaestro.com>, <amzpublishingmaster.com>,  <publishatamazon.com>,. See Brian Renner v. Contactprivacy.com, FA 1335211 (Forum Aug. 26, 2010); see also Amazon Technologies, Inc. v. M M / shanwang chen / feifei lin / HUA ZHANG / L H / Eddie Nash / Heather Brooker, FA 1973471 (Forum Dec. 17, 2021).

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that it is a leading online retailer offering products and services in more than 100 countries around the world. In 1994, Complainant's 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 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, Complainant was featured on the front page of The Wall Street Journal. In recognition of Complainant's, in 1999—only five years after its launch—Time Magazine named Mr. Bezos "Person of the Year." The article described Complainant as the "company everyone wants to be like". Complainant's services include Amazon Publishing which launched in 2009 and publishes fiction, nonfiction, and children's books by emerging, bestselling, and critically acclaimed authors in digital, print, and audio formats. Complainant also offers Kindle electronic reading devices, which launched in 2007 and which Oprah Winfrey lauded as her "new favorite thing"; the Kindle Store featuring millions of e-book titles; and Kindle Direct Publishing (KDP), which allows authors to self-publish e-books and paperbacks and reach millions of readers on Amazon. Complainant's website is the 4th most-viewed website in the United States and the 8th most-viewed website globally, according to public statistics offered by Internet site ranking company SimilarWeb. More than 30 million users have "liked" and more than 30 million users follow Complainant's Facebook page. Complainant has more than 6 million followers on Twitter. Complainant has more than 300 million active customer accounts. Complainant has rights in the AMAZON and KINDLE marks through their registration in the United States in, respectively, 1997 and 2009. The marks are registered elsewhere around the world and they are famous.

 

Complainant alleges that the disputed domain names are identical or confusingly similar to its AMAZON or KINDLE marks as each domain name incorporates one of the marks in its entirety, merely adding generic/descriptive terms, and/or a hyphen, and a generic top-level domain ("gTLD") or a country-code top-level domain ("ccTLD").

 

According to Complainant, Respondent has no rights or legitimate interests in the disputed domain names as Complainant has not authorized Respondent to use its marks and Respondent is not commonly known by the disputed domain names. 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. Instead, Respondent uses five of the disputed domain names with the intent to divert internet users by creating the false impression of affiliation with Complainant to offer products or services that compete with those of Complainant. Two of the disputed domain names are not being used.

 

Further, says Complainant, Respondent registered and is using the disputed domain names in bad faith. Respondent uses five of the disputed domain names to attempt to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant by using Complainant's marks and referring to services offered by Complainant under that mark. Respondent also uses those five disputed domain names to promote products and services that directly compete with Complainant. Two of the disputed domain names are not being used. Respondent had actual knowledge of Complainant's rights its marks.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has registered trademarks for the marks AMAZON and KINDLE and uses and uses them to market its online retail business, which includes providing publishing services. The marks were registered in, respectively, 1997 and 2009 and they are famous.

 

Complainant has not licensed or otherwise authorized Respondent to use its marks.

 

The disputed domain names were registered in 2023.

 

Five of the resolving websites offers products and services that compete with those of Complainant; two of the disputed domain names are not being used; one of the resolving websites displays Complainant's mark and distinctive logo; some of the resolving websites display disclaimers.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

The disputed domain names each incorporate one of Complainant's AMAZON or KINDLE marks in its entirety, merely adding generic/descriptive terms, and/or hyphen, and a generic top-level domain ("gTLD") or a country-code top-level domain ("ccTLD"). Under Policy ¶ 4(a)(i), adding a gTLD and/or generic terms and/or hyphens is generally insufficient in differentiating a disputed domain name from the mark it incorporates. 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 Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word "advisors" and the gTLD ".com" did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also Rockwell Automation v. Zhao Ke, FA 1760051 (Forum Jan. 2, 2018) ("The disputed domain name <rockwellautomation.co> corresponds to Complainant's registered ROCKWELL AUTOMATION mark, with the space omitted and the ".co" top-level domain appended thereto. These alterations do not distinguish the domain name from Complainant's mark for purposes of the Policy."). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant's marks under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has not licensed or otherwise authorized Respondent to use its marks. 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 name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Here, the WHOIS information for the disputed domain names lists the registrants as "Alex Walker, Probyte / Kristopher Ginn, Research in Progress / Salman Saad / jason smith, Alpha Design". Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).

 

Two of the disputed domain names are not being used. This does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) ("both Domain Names resolve to a web site that shows the words, 'Not Found, The requested URL / was not found on this server.' Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii)."). Therefore the Panel finds that Respondent fails to use those two disputed domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

Respondent uses five of the disputed domain names to offer competing goods or services. Use of a disputed domain name that incorporates a well-known mark to offer competing services is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) ("use of a domain to sell products and/or services that compete directly with a complainant's business does not constitute 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)."). Therefore, the Panel finds that Respondent does not use those five 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).

 

Some of the resolving websites display a disclaimer. According to paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): "where the overall circumstances of a case point to the respondent's bad faith, the mere existence of a disclaimer cannot cure such bad faith". Further, paragraph 2.15 of the WIPO Overview states: "to support a claim to rights or legitimate interests under the UDRP, the use of a disputed domain name must in any event not be abusive of third-party trademark rights." For the reasons given below, the Panel finds that Respondent's use of the disputed domain names is abusive of Complainant's trademark rights; the Panel also finds bad faith registration and use. Consequently, the mere existence of the disclaimer does not establish that Respondent has rights or legitimate interests in the disputed domain names.

 

For all the above reasons, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.

 

Registration and Use in Bad Faith

Respondent (who did not reply to Complainant's contentions) has not presented any plausible explanation for its use of Complainant's mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent's failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.

 

Indeed, as already noted, five of the resolving websites offers products and services that compete with those of Complainant. Past panels have found bad faith pursuant to Policy ¶ 4(b)(iii) where a respondent appropriates a complainant's mark to divert the complainant's customers to the respondent's competing business. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent's competing website); see also Univ. of Texas Sys. v. Smith, FA 1195696 (Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant's competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) ("Respondent is appropriating Complainant's mark to divert Complainant's customers to Respondent's competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii)."). Thus the Panel finds bad faith registration and user per Policy ¶ 4(b)(iii).

 

Further, Respondent registered the disputed domain names with actual knowledge of Complainant's mark: one of the resolving websites displays Complainant's mark and logo, and some of the resolving websites display disclaimers that refer to Complainant. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant's rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("The Panel notes that although the UDRP does not recognize 'constructive notice' as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it."); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to Respondent's registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).

 

In addition, Respondent displays a pattern of bad faith registration of disputed domain names containing Complainant's marks. Registration of multiple domain names containing a complainant's mark can substantiate an argument that a respondent registered and uses a disputed domain name in bad faith per Policy ¶ 4(b)(ii). See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (finding that registration of several infringing domain names in a case satisfies the burden imposed by the Policy ¶ 4(b)(ii)). Thus the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(ii).

 

Two of the disputed domain names are not being used. According to paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): "From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or "coming soon" page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put."

 

In the present case, Complainant's trademarks are well known. It is difficult to envisage any use of the disputed domain names that would not violate the Policy, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) ("Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy"); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant's well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int'l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) ("The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith.").

 

There has been no response to the Complaint, Respondent used some of the disputed domain names to compete with Complainant, Respondent has engaged in a pattern of bad faith registration and use of domain names, and Respondent knew of Complainant's mark. Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).

 

DECISION

The Panel dismisses, without prejudice, the Complaint against the <amazonpublishersltd.com>, <amazonpublishingmaestro.com>, <amzpublishingmaster.com>, and <publishatamazon.com> domain names.

 

Having established all three elements required under the ICANN Policy for the domain names <amazonbookpublications.co>, <amazon-directpublisher.com>, <amazonkindleofficial.com>, <amazonpublishhub.com>, <kindledirectpublish.com>, <publishonamazonnow.com> and <wepublishonamazon.com>, the Panel concludes that relief shall be GRANTED for those domain names.

 

Accordingly, it is Ordered that the <amazonbookpublications.co>, <amazon-directpublisher.com>, <amazonkindleofficial.com>, <amazonpublishhub.com>, <kindledirectpublish.com>, <publishonamazonnow.com> and <wepublishonamazon.com> domain names be TRANSFERRED from Respondent to Complainant and that the, <amazonpublishersltd.com>, <amazonpublishingmaestro.com>, <amzpublishingmaster.com>, and <publishatamazon.com> domain names REMAIN WITH Respondent.

 

 

 

Richard Hill, Panelist

Dated: March 7, 2024