The Complainant is A, Inc. and Amazon Technologies, Inc. of Seattle, Washington, United States of America (referred to collectively herein as the “Complainant”) represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondent is Paul James of Grandville, Michigan, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2014. On October 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 23, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2014.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on December 10, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainants are related corporate entities in a very large e-retailing group serving customers through numerous retail websites including “www.a”. Financial statements attached to the Complaint show recent reported quarterly net sales of USD 19.34 billion for the Complainant Group. The Complainant A, Inc. is the publicly quoted parent company of the group; hte Complainant Amazon Technologies, Inc. is described in the Complaint as an affiliate of, and intellectual property holding company for, A Inc. Among the Complainant’s products are e-readers sold under the KINDLE trademark, and electronic tablets, phones, and other products sold with the designation FIRE and permutations thereof, such as Fire HD 6 and Kindle Fire HDX.
The Complaint and its annexes reveal that the Complainants are the owners of more than 60 trademark registrations worldwide for trademarks that contain the word “fire”, the earliest of these registrations is October 10, 2011. The Complainant has also registered the domain name in connection the sale of its goods and services. In addition, the Complainant has registered in excess of 60 trademarks that consist of or contain “kindle”, the earliest of which appears to be Swiss trademark No. 54620, registered in January 2007; there are at least two United States trademarks for KINDLE, one from November 2007. The Complainant is the registrant of the domain name , which was created in April 1996 and is used in connection with the Complainant’s sale of e-books and other products.
Five of the domain names that contain the FIRE trademark were registered on November 18, 2011 and one on September 27, 2011. The disputed domain names that contain the KINDLE trademark were registered between November 2007 and September 2012 The case file contains little information concerning the Respondent, who has defaulted in this proceeding. 5. Parties’ Contentions A. Complainant
The Complainant alleges, notably, that both its KINDLE and its FIRE trademark are identified and associated with its widely known and used “Amazon” ebusiness and products, including phones, tablets, and ereaders. The Complainant cites prior cases under the Policy that have found that the Complainant has rights in both trademarks and ordered the transfer of domain names such as and . See, A. Inc., Amazon Technologies, Inc., Goodreads Inc. v. Shi Lei Shilei, WIPO Case No. D2014-1093. The Complainant points out that each of the twelve domain names disputed here contains the FIRE or KINDLE trademark in its entirety, and that the descriptive terms used in such disputed domain names are generic and therefore do not diminish the confusing similarity between the disputed domain names and the Complainant’s trademarks, and in some cases may exacerbate it.
The Complainant alleges that it has never given the Respondent any genre of permission or authorization to use its trademarks, and that, on information and belief the Respondent has no used or made preparations to use the disputed domain names for any bona fide offering of goods or services or otherwise has legitimate right or interest in any of the disputed domain names.
Furthermore, the Complainant alleges that, although the disputed domain names are not all being used in connection with an active website, there is still abundant basis and evidence to find their registration and passive use was and is in bad faith. But the Complainant also submits evidence that most of the disputed domain names are being offered for sale with opening bids in excess of US D900. The Complainant also points out that many of the disputed domain names were registered within several days of public announcement by the Complainant concerning the launch of new products incorporating the trademarks FIRE and/or KINDLE, such as the “Kindle Fire” ereader or the “Kindle Fire HD” Tablet - a timing that the Complainant alleges to be a further indication of the Respondent’s bad faith. Finally, the Respondent’s registration of twelve domain names with wording or meaning tied to the Complainant’s trademarks, as well as the Respondent’s registration of some domain names containing trademarks tied to other companies, represents, the Complainant alleges, a pattern of such conduct.
Whereupon the Complainant requests that the twelve disputed domain names be transferred to the Complainant Amazon Technologies Inc. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
All of the disputed domain names in some form contain the entirety of the Complainant’s trademarks KINDLE or FIRE; as the Complainant points out that can, it and of itself be sufficient, for a finding of confusing similarity. See, RapidShare AG, Christian Schmid v. Private Registration AktienGessellschaft Domain Admin, WIPO Case No. D2010-0591 citing with approval Advanced Micro Devices Inc. v. Pierre Macena,WIPO Case No. D2005-0652. Each of the disputed domain names contains, in various combinations, one or more descriptive or generic words: “keyboard”, “phone”, “accessories”, “apps”, “case”, “phonecover”, “free”, “ebook”, “hd”. All of these terms and the combinations in which they are used are evocative of ecommerce, ereading and phones, which the Complaint demonstrates to be business lines that are associated with the Complainant. Thus the inclusion of these generic words and combinations to the disputed domain names in each case adds to (or in the Complainant’s terms “exacerbates”) confusing similarity. See, e.g. Gateway Inc. v. Domaincar,WIPO Case No. D2006-0604: Indeed it is here difficult to see any motive in the word and trademark combinations of the disputed domain names other than create and enhance confusing similarity with the Complainant’s trademarks and products. See also, Wikimedia Foundation Inc. v. Kevo Ouz a/k/a ,WIPO Case No. D2009-0798 (“overall impression of the designation” of each disputed domain name “being connected to the trademark of Complainant”).
The Complainant has, accordingly, met its burden of demonstrating confusing similarity within the meaning of paragraph 4(a)(i) of the Policy, and this for each of the disputed domain names. B. Rights or Legitimate Interests
The complainant in a UDRP proceeding needs to establish at least a prima facie case that the respondent has no rights or legitimate interests in respect of the disputed domain name. See, e.g.,Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. If this prima facie case is established, the burden shifts to the respondent to demonstrate that it has such rights or legitimate interests. See also, Meizu Technology Co., Ltd v. “osama bin laden”, WIPO Case No. DCO2014-0002; H & M Hennes & Mauritz AB v. Simon Maufe, Akinsaya Odunayo Emmanuel and Nelson Rivaldo, WIPO Case No. D2014-0225.
In the instant case, the Complainant has clearly asserted that it has never assigned, licensed or in any way authorized the Respondent to register or use the Complainant’s trademarks in any of the disputed domain names or otherwise, and that this demonstrates the Respondent’s lack of rights or legitimate interest in the disputed domain names. See, e.g., Chicago Pneumatic Tool Company LLC v. Texas International Property Associates-NaNa, WIPO Case No. D2008-0144.
There is also no evidence before the Panel to suggest that the Respondent is commonly known by one or more of the domain names or some part thereof, such as “fire” or “kindle”. Nor is there any evidence or indicia suggesting that the Respondent has established any rights or legitimate interests in the disputed domain names through bona fide use of such names or otherwise.
The Respondent having failed to answer the Complaint, the Complainant has accordingly met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
There is here significant evidence and indicia pointing to bad faith registration and use by the Respondent, beginning with the fact, further explained above, that each of the twelve disputed domains names contains not only the Complainant’s trademark but combinations of words that are clearly evocative of and related to the Complainant’s products and business - the twelve disputed domain names could not reasonably have been created and registered in this way by chance. It should also be noted that all but one of the disputed domain names were registered after, in some cases long after, the Complainant had registered the compromising FIRE and KINDLE trademarks.
Furthermore, the Complainant submits evidence that a number of the disputed domain names were in fact registered very shortly after the Complainant made a public announcement of a product to which the disputed domain name is related or confusingly similar. For example, the evidence in the Complaint shows that disputed domain name was registered within one day of the Complainant’s announcement of the launch of the “Kindlefire” e-reader and computing tablet. The date of registration of the other disputed domain names also show a close time correlation with the Complainant’s product announcements, this cannot reasonably be considered to be coincidental or serendipitous. See, e.g., Bancolombia S.A.v. Elpidia Finance Corporation,WIPO Case No. D2000-0545. With respect to the disputed domain name . See also paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”): In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found”.
There is accordingly strong unrefuted evidence that each of the disputed domain names was registered in bad faith.
As to bad faith use, the Complainant first cites the well known principle arising from Telstra Corporation Limited v. Ozuris, WIPO Case No. D2000-0003 and its progeny that passive use of the disputed domain name does not prevent a finding of bad faith use, particularly where there are “cumulative circumstances” found to be indicative of bad faith. See generally, WIPO Overview 2.0, paragraph 3.2. The Complainant accordingly asserts that to the extent that one of more of the twelve disputed domain names is inactive or “parked”, there nevertheless is bad faith use on the part of the Respondent; the Panel accepts this assertion on the facts here present. This said, there is also significant evidence of active bad faith use of most or all of the disputed domain names. The Complainant points out that the disputed domain name in particular, was being used in connection with a monetized parking page that included links to services associated with the FIRE trademark, such as phone accessories. Moreover, many of the sites to which the disputed domain names resolved or offered the disputed name for sale for amounts far in excess of the out of pocket costs that would be required for the registration of such domain name. The Panel visited (from a computer in Switzerland) all the sites to which all disputed domain names resolved to, and was able to confirm that all or most of the disputed domain name sites offered or appear to have offered the disputed (and other) domain names for sale for an amount that would constitute bad faith pursuant to Paragraph 4 (b)(i) of the Policy. For, example resolved to a site announcing “ is for sale!” and inviting bids for the same; the site also contained offers to sell a wide variety of domain names incorporating the word “kindle” for prices that appeared to range from USD500 to 10,000; similar displays were found on the sites to which other disputed domain names resolved. The evidence of bad faith use within the meaning of the Policy is abundant, and there is no plausible good faith explanation for the Respondent’s conduct. There is also significant evidence that the Respondent has engaged in a pattern of such bad faith conduct as defined in paragraph 4(b)(ii) of the Policy, although it is not necessary to detail that finding in light of the other evidence of bad faith use and registration adumbrated above.
The Panel finds that the Respondent has both registered and used all of the disputed domain names in bad faith as defined in paragraph 4(a) (iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the following disputed domain names:
and
be transferred to Complainant Amazon Technologies Inc.
Nicolas Ulmer
Sole Panelist
Date: December 19, 2014
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