The Complainants are A, Inc., a Delaware corporation, and Amazon Technologies, Inc., a Nevada corporation, located in Seattle, Washington, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyP) of Burlington, Massachusetts, United States / MikeTyson of Malaga, Spain. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on December 20, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on December 20, 2017.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2018.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on January 17, 2018. 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
Amazon Technologies, Inc. is an affiliate and the intellectual property holding company of A, Inc. The two related corporate entities are collectively referred to as “Complainant”.
The Complainant was incorporated in 1994 and started its online services in July 1995. Today, it offers a range of products and services through a number of retail websites, in particular “www.a”. It is one of the largest and best known companies in the world, with quarterly net sales of USD 43.7 billion and 541,900 employees. It ranks number 12 on the “Fortune 500” list of the largest corporations in the United States and number 8 on Interbrand’s list of “Best Global Brands 2016”.
The Complainant is the proprietor of several trademark registrations worldwide for marks that consist of or include the word “amazon”, such as AMAZON.COM (United States trademarks: number 2,078,496, registered on July 15, 1997; number 2,167,345, registered on June 23, 1998; number 2,559,936, registered on April 9, 2002; and number 2,633,281, registered on October 8, 2002) and AMAZON (United States trademarks: number 2,657,226, registered on December 3, 2002; number 2,738,837, registered on July 15, 2003; and number 2,738,838, registered on July 15, 2003).
Furthermore, the Complainant has registered its distinctive logo consisting of the word “amazon” in lowercase letters and a curve or “smile” at the bottom, which begins under the “a” and ends with a dimple under the “z” (e.g., United States trademarks: number 4,171,965, registered on July 10, 2012; number 5,038,752, registered on September 13, 2016) (the “Smile Logo”). The Complainant frequently uses a variation of the Smile Logo in connection with other words to identify its specific services. Examples include “amazon drive”, “amazon business”, “amazon video direct”, “amazon restaurants”, “amazon prints”.
The disputed domain name was registered on October 31, 2017. The record shows that the original registrant according to the WhoIs database was Domain Admin, Privacy Protect, LLC (PrivacyP), whereas the present registrant is listed as MikeTyson. The former and the present registrant are collectively referred to as “Respondent”.
At the time the Complaint was filed, the disputed domain name resolved to a cryptocurrency website which offered what it described as “the best cloud mining & professional training programme”, using a logo similar to the Complainant’s Smile Logo. 5. Parties’ Contentions A. Complainant
In summary, the Complainant contends the following:
The disputed domain name is identical or confusingly similar to the Complainant’s AMAZON trademark, because it contains the AMAZON trademark in its entirety, only adding the descriptive word “hash”, which, in the context of cryptocurrency, refers to “functions [that] are an essential part of, not only of the bitcoin protocol, but of information security as a whole” (according to the corresponding entry on the CoinDesk website, Annex 12 to the Complaint). Additionally, the AMAZON trademark appears at the beginning, i.e., in the dominant portion of the disputed domain name, so that the overall impression is one of being connected to the Complainant’s trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the AMAZON trademark in any way. The Respondent is not commonly known by the disputed domain name. The Respondent’s use of the disputed domain name in connection with a cryptocurrency website and training program that charges fees does not constitute a bona fide offering of goods and services. Neither is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
Finally, the disputed domain name was registered and is being used in bad faith, because the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the AMAZON trademark and the Complainant’s Smile Logo as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent’s bad faith is particularly evidenced by its use of a logo which is substantially similar to the Complainant’s Smile Logo. Furthermore, the timing of the registration of the disputed domain name, which correlates with media rumors of the Complainant’s release of its own cryptocurrency, suggests opportunistic bad faith from the side of the Respondent. This all the more so, since, on the same date, the Complainant registered a number of domain names containing the AMAZON trademark alongside descriptive terms related to cryptocurrencies. In light of the significant international presence and brand recognition of the AMAZON trademark and the fact that the trademark predates the registration of the disputed domain name by more than 20 years, the Respondent cannot credibly claim that it was unaware of the trademark.
The Complainant requests that the disputed domain name be transferred to Amazon Technologies, Inc. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has uncontested rights in the AMAZON trademark, both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the trademark over a period of more than 20 years. Previous UDRP panels have found that the AMAZON trademark “appears beyond question to be highly distinctive, if not famous” (see, e.g., A, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman,WIPO Case No. D2006-0517; A Inc., Amazon Technologies, Inc. v. Giovanni Laporta / Yoyo.Email,WIPO Case No. D2015-0009).
The disputed domain name differs from the Complainant’s AMAZON trademark only by the addition of the term “hash”. It is the consensus view of UDRP panels that the addition of such descriptive term does not prevent a finding of confusing similarity under the first element of the Policy, in cases such as the present one, where a domain name incorporates the entirety of the relevant trademark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s AMAZON trademark.
Therefore, the Complainant has fulfilled the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, which remains unrebutted by the Respondent. Although the Respondent may have used the disputed domain name to offer real services related to a cryptocurrency training program, this cannot be considered a bona fide commercial use of the disputed domain name, as the Respondent has created a false impression of affiliation with the Complainant and its trademark by using the AMAZON trademark in the disputed domain name and on its website and by mimicking the Complainant’s distinctive Smile Logo.
Based on the record and the Complainant’s credible contentions, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Given the worldwide recognition of the AMAZON trademark and the fact that its registration predates the registration of the disputed domain name by two decades, it is nearly impossible for the Respondent not to have had any knowledge of the trademark when registering the disputed domain name. In light of the particular circumstances of the case, including the timing of the domain name registration amidst media reports of the Complainant’s launch of its own cryptocurrency, the Panel finds that the Respondent has attempted to profit from the Complainant’s reputation in order to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark. In the absence of evidence to the contrary and any response from the Respondent, such conduct constitutes bad faith registration and use in the sense of paragraph 4(b)(iv) of the Policy.
The Panel thus finds that the requirement of paragraph 4(a)(iii) of the Policy is also fulfilled. 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 disputed domain name be transferred to Amazon Technologies, Inc.
Tobias Zuberbühler
Sole Panelist
Date: January 31, 2018
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