Amazon.com Inc., Amazon Technologies, Inc., Goodreads, Inc. v. Shi Lei aka shilei
Case No. D2014-1093
1. The Parties The Complainants are Amazon.com Inc., Amazon Technologies, Inc. and Goodreads, Inc. of Seattle, Washington, United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondent is Shi Lei aka shilei of Hangzhou, Zhejiang Province, China, self-represented.
2. The Domain Names and Registrars The disputed domain names , , , , , , and are registered with GoDaddy.com, LLC.
The disputed domain names , , and are registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The disputed domain name is registered with DropWalk.com, Inc.
The disputed domain name is registered with HiChina Zhicheng Technology Ltd.
The above-mentioned disputed domain names are hereinafter referred to as the “disputed domain names”. The above-mentioned registrars are hereinafter referred to as the “Registrars”.
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2014. On June 24, 2014, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. Between June 24 and 27, 2014, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on June 30, 2014.
On June 30, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceedings with respect to the disputed domain name . On July 1, 2014, the Respondent requested that Chinese be the language of the proceedings. On July 3, 2014, the Complainants requested that English be the language of the proceedings.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceedings commenced on July 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2014. The Response was filed with the Center on July 22, 2014.
In the Response, the Respondent appears to be willing to transfer the disputed domain names , , , , , and to the Complainants. Accordingly on July 22, 2014, the Center invited the Complainants to comment if they wished to suspend the proceeding in order to explore the possibility of settlement with the Respondent. On July 25, 2014, the Complainants confirmed that they did not wish to suspend the proceeding, and also provided some comments in relation to the Response.
The Center appointed C. K. Kwong as the sole panelist in this matter on August 14, 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.
Upon reviewing submissions from the parties, the Panel found that the aforesaid confirmation from the Complainants on July 25, 2014 had gone beyond a simple answer of not requesting a suspension. The further email from the Complainants on August 26, 2014 constitutes an unsolicited supplemental filing.
On August 27, 2014, the Panel issued Procedural Order No. 1 ordering, inter alia, that (a) the unsolicited supplemental filing from the Complainants be admitted; (b) the Respondent may file a response (if any) in reply to the points raised in the unsolicited supplemental filing within seven calendar days; and (c) no other information or materials except as specifically specified should be filed or supplied by the parties. No response was filed by the Respondent by the specified due date.
4. Factual Background The Complainant Amazon Technologies, Inc. (“ATI”) is an affiliate of, and an intellectual property holding company for, the Complainant Amazon.com, Inc. (“Amazon.com”). The Complainant Goodreads, Inc. (“Goodreads”) is a subsidiary of Amazon.com. These Complainants are hereinafter individually and collectively referred to as the “Complainant”.
The Complainant is the owner of numerous trademark and service mark registrations consisting of or comprising the following words namely:
(a) the word “Amazon” including United States trademark registration no. 2,657,226 for the mark AMAZON registered on December 3, 2002 and United States trademark registration no. 2,078,496 for the mark AMAZON.COM registered on July 15, 1997;
(b) the word “Fire” including the apparently earliest Tonga trademark registration no. 01320 for the mark FIRE registered on May 24, 2011;
(c) the word “Kindle” including United States trademark registration no. 3,694,267 for the mark KINDLE registered on October 6, 2009;
(d) the word “Goodreads” including United States trademark registration no. 3,870,157 for the mark GOODREADS registered on November 2, 2010.
The Complainant is also the registrant of the domain names:
(a) created on October 31, 1994;
(b) created on April 17, 2002;
(c) created on April 22, 1996;
(d) created on December 9, 2002;
which the Complainant has used in connection with the goods and services associated with its AMAZON trademark, FIRE trademark, KINDLE trademark and GOODREADS trademark respectively.
The uncontradicted evidence produced by the Complainant shows that the registrations of its aforesaid marks occurred well before the registration of the disputed domain names embodying the respective words “Amazon”, “Fire”, “Kindle” and “Goldreads” by the Respondent on the respective dates set out below:
(a) on October 8, 2013;
(b) on October 8, 2013;
(c) on August 1, 2013;
(d) on April 2, 2014;
(e) on April 2, 2014;
(f) on April 3, 2014;
(g) on April 3, 2014;
(h) on April 3, 2014;
(i) on April 3, 2014;
(j) on October 30, 2013;
(k) on September 25, 2013;
(l) on October 4, 2013;
(m) on September 13, 2013;
(n) on April 10, 2012.
Other than the particulars shown on the printout of the database searches conducted by the Complainant of the WhoIs Database (as provided in Annex 1 to the Complaint), the websites to which the disputed domain names resolve as provided in Annex 18 to the Complaint, the WhoIs Database search result, and the information contained in the Response filed by the Respondent on July 22, 2014, there is no other evidence or information in the case file concerning the background of the Respondent and its business.
5. Parties’ Contentions A. Complainant The Complainant has made the following contentions:
1) Following its incorporation in 1994 and opening the World Wide Web in 1995, Amazon.com became publicly listed on the Nasdaq Global Select Market in 1997. This company serves consumers through retail websites including “www.amazon.com” serving over 2 million sellers offering millions of items. It has 124,000 employees with quarterly net sales amounting to USD 19.74 billion in 2014.
2) The Complainant is well-known for its popular e-readers sold under the KINDLE trademark which was introduced in 2007. Wikipedia reports Morgan Stanley’s estimates that the Complainant sold USD 3.57 billion worth of Kindle e-readers and tablets in 2012, USD 4.5 billion in Kindle device sales in 2013 and USD 5 billion in Kindle device sales in 2014.
3) On April 2, 2014, the Complainant launched its Amazon Fire TV products providing access to recommendation, ASAP (Advanced Streaming And Prediction), IMDb, Netflix, Prime Instant Video, Hulu Plus, low-cost instant video rentals, games, photos and more.
4) Prior to the Respondent’s registration of the disputed domain name containing the word “Fire”, the mainstream and technology press and blogs reported that the Complainant would launch a smartphone as reflected in the Wall Street Journal May 9, 2013 Issue, TechCrunch October 2, 2013 Issue and BGR March 20, 2014 Issue.
5) Tremendous number of phones and phone related products are offered for sale on the Complainant’s website at “www.amazon.com”.
6) In 2007, the Complainant started offering a service known as “Amazon Payments” that allows customers to use information stored in their Amazon accounts to login and pay on thousands of sites other than “www.amazon.com”.
7) The Respondent is engaged in passive holding of seven of the disputed domain names namely, , , , , , and .
8) Two of the disputed domain names, namely, and , are being used in connection with parked websites. Five of the disputed domain names namely, , , , and , are being used in connection with monetized parking pages that include generic links to services that compete with those offered by the Complainant through its various links.
9) Each of the disputed domain names is identical or confusingly similar to the corresponding trademarks of the Complainant in which the Complainant has rights.
10) Each of the disputed domain names contains one or more of the Complainant’s trademarks in its entirety or with only minor typographical variations sometime with one or more descriptive or generic words which may even further increase the likelihood of confusion.
11) In the case of the disputed domain name , the Complainant claims that the word “smile” is closely associated with the Complainant’s AMAZON trademark given that the Complainant’s primary logo, for which it owns numerous trademark registrations worldwide, contains a “smile” and that it has launched an “AmazonSmile” charitable programme which again increases the likelihood of confusion. The disputed domain name and constitute “typosquatting” conduct as they are virtually identical and/or confusingly similar to the Complainant’s AMAZON trademark.
12) Likewise, the disputed domain name substituting only the letter “l” for the letter “o” in the Complainant’s GOODREADS trademark is an insubstantial variation.
13) Six of the disputed domain names , , , , and contain two of the Complainant’s trademarks namely, AMAZON and FIRE trademarks.
14) The overall impression of the disputed domain names is one of being connected to the trademarks of the Complainant.
15) The Respondent has no rights or legitimate interests in respect of the disputed domain names. In this connection, the Complainant has never, inter alia, licenced or authorized the Respondent to use any of the Complainant’s trademarks in any way. Further, the Respondent has never used or made preparation to use any of the disputed domain names in connection with a bona fide offering of goods or services. In this connection, nine of the disputed domain names , , , , , , , and are associated with generic registrar parking pages or no web page at all.
16) Five of the disputed domain names , , , and include generic links or links related to the Complainant’s services which is not a bona fide offering of goods or services under the Policy.
17) The Respondent has never been commonly known by any of the disputed domain names.
18) The disputed domain names were registered and are being used in bad faith.
19) Each of the Complainant’s trademarks has a strong reputation and is widely known.
20) So far as those of the disputed domain names that are being used in connection with monetized parking pages, these constitute bad faith. The Respondent’s use of such disputed domain names to resolve to websites linking Internet users to third party products and services is intended to capitalize on the likelihood of confusion with the Complainant’s trademarks.
21) The Complainant’s trademarks pre-date the Respondent’s registrations of the disputed domain names.
22) The Respondent has registered the disputed domain names in order to prevent the Complainant from reflection its trademarks in corresponding domain names and has engaged in a pattern of such conduct, acting in bad faith.
23) Each of the disputed domain names is obviously indicates or suggests connection with the Complainant, the Respondent’s action suggests “opportunistic bad faith”.
24) The registration of the disputed domain names containing the AMAZON trademark, the FIRE trademark and the word “phone” (i.e. , , and were registered by the Respondent on April 2, 2014 and April 3, 2014 – only days after the publication of the Complainant’s article on the popular tech website BGR under the headline “Insider reveals launch timing and specs for mysterious Amazon smartphone” and on the same day on which or the day after the Complainant filed applications to register the trademark AMAZON FIRE.
B. Respondent The Respondent has made the following contentions:
1) Four disputed domain names , , and were all registered on April 2, 2014 before the Complainant announced the launch of its smartphone in the name of “Amazon Fire Phone” on June 19, 2014 and announcing the availability of Amazon Fire Phone on June 20, 2014.
2) The Complainant has failed to protect itself by registering domain names with its trademark “Fire Phone”.
3) Amazon is a common noun or geographical term. In fact, there are many domain names registered embodying the word “Amazon” like , and .
4) The domain name such as belongs to someone else and is used as a platform for observing happenings in the Amazon River basin area. can be used as a platform website for watching the fire hazards in the Amazon River basin. can also be a platform website for those who are going to observe and research on the Amazon River basin clothing and fashion culture.
5) The Respondent is a website producer in China and therefore regularly registers domain names for the purpose of website productions.
6) The application for “.amazon” as generic Top Level Domain name has been objected to by the South American countries simply because it is a geographical name representing the important region in which the South American countries were situated in the Amazon tropical forest. These countries include Brazil, Argentina, Chile, Peru and Uruguay.
7) As for , it was created on April 10, 2012 for more than two years and according to the Rules, registration for more than two years should not be subject to challenge by administrative proceeding. Furthermore, the Complainant has already announced its Amazonpayments products. Other “kindlepay” domain names are still available. Had the Complainant been serious in protecting its domain names and trademark rights, it should commence administrative proceeding against all these others but in fact it did not even bother to register the domain names itself.
8) As the disputed domain names , , , , , and are near to their expiry and are not put to use, these can be given to the Complainant for free if it considers that its rights have been infringed.
6. Discussion and Findings
A. Consolidation of the Proceedings
Paragraph 3(c) of the Rules provides that “the Complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”. In this case, all the 14 disputed domain names are registered in the name of the same registrant, the Respondent.
Previous UDRP panels have consolidated cases of multiple complainants against a respondent where (i) the complainants either have specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; and
(ii) it would be equitable and procedurally efficient to permit the consolidation. Paragraph 4.16 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Paragraph 10(e) of the Rules provides that “[a] panel shall decide a request by a party to consolidate multiple domain names dispute in accordance with the Policy and these Rules”.
On the basis of the evidence produced before the Panel, the Panel is satisfied that the principles laid down in the aforesaid paragraphs of the Rules and paragraph 4.16 of the WIPO Overview 2.0 are satisfied for the consolidation of the proceedings relating to the three Complainants and 14 disputed domain names.
B. Language of the Proceedings
In response to the Center’s notification in English and Chinese of June 30, 2014 to both parties on the language of the proceedings in relation to the disputed domain name . The Respondent requested on July 1, 2014 that Chinese be used as the language of the proceedings. The Complainant requested that English be used as the language of the proceedings and provided reasons on July 3, 2014.
Paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The language of the Registration Agreement for the disputed domain name is Chinese.
In support of its request, the Complainant has inter alia argued that:
(a) Each of the disputed domain names contain latin characters and an English-language trademark;
(b) The active websites using the disputed domain names are all in English;
(c) The Respondent has registered numerous other domain names including 13 other disputed domain names in these proceedings with the Registrars whose registration agreements are in English;
(d) There is sufficient indication that the Respondent can conduct the proceedings himself in the English language;
(e) To proceed in a language other than English may result in delay, considerable and unnecessary expenses of translating document.
The Respondent requested that the Complaint be translated into simplified Chinese and that this language, being the national language of the country in which the Respondent resides, be used for conducting the defence.
As the Complainant is a sophisticated multi-national corporation with considerable exposure in China having substantial legal and language resources, the Panel considers it would not be unduly burdensome to it for the proceedings to be conducted in Chinese. However, the Panel must also take into account:
(i) the fact that 13 other disputed domain names in these proceedings have Registrars whose registration agreements are in English being the language which should be used for the administrative proceedings in relation to those 13 other disputed domain names;
(ii) The Respondent is apparently familiar with and conversant in English, as reflected in his ability to register the other 13 disputed domain names with Registrars using English registration agreements;
(iii) The ability to provide an articulated Response even though in the Chinese language addressing the issues raised in the Complaint pertinently;
(iv) It serves no good purpose and it is inefficient to single out one out of the 14 disputed domain names for the proceedings to be conducted in Chinese;
(v) All the disputed domain names consist of letters from the English alphabet;
(vi) The Respondent has provided contact details to the Registrars in English.
In exercising its discretion to use the language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties taking into account all relevant circumstances of the case including matters such as the parties abilities to understand and use of the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; also Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Taking all circumstances into account, the Panel is satisfied that there is no prejudice or unfairness to the Respondent for the proceedings in relation to the disputed domain name to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of such administrative proceedings should be English.
C. The Complainant’s Supplemental Filing As recited in the above Section 3 relating to the Procedural History, the Panel admitted the unsolicited supplemental filing by the Complainant on July 25, 2014 and August 26, 2014 with an opportunity to the Respondent to file a Response thereto by September 3, 2014 pursuant to the Procedural Order No. 1 issued by the Panel on August 27, 2014.
D. The Three Elements In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “[t]he Panel shall 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”.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to each of the disputed domain names, the Complainant must prove each of the following, namely that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
The said three elements are considered below.
D.1. Identical or Confusingly Similar On the evidence available before the Panel, it has no hesitation in finding that the Complainant has rights in the trademarks AMAZON, FIRE, KINDLE and GOODREADS by reason of the trademark registrations as recited in Section 4 above.
The Panel finds that the disputed domain names , , , , and embodying the Complainant’s AMAZON and FIRE trademarks in their entirety with additional descriptive suffixes like “phone”, “watch”, “wear” or the numeral “2” are insufficient to distinguish them from the Complainant’s said trademarks.
Similarly, the disputed domain names , , and which embody the Complainant’s AMAZON mark in its entirety with the addition of indistinctive elements like the misspelled word of “collection”, “smile”, “supply” and “TV” are insufficient to distinguish them from the Complainant’s trademark AMAZON.
The misspelled word “amazon” in the disputed domain name remains confusingly similar phonetically and visually with the word “amazon”. Similarly, the misspelled word “amazon” in the disputed domain name remains confusingly similar to the word “amazon” both phonetically and visually. The addition of the non-distinctive word “payment” does not distinguish them from the Complainant’s AMAZON trademark.
The distinctive feature of the disputed domain name is “kindle”, being the Complainant’s KINDLE trademark in its entirety. The mere additional of the non-distinctive word “pay” is insufficient to distinguish it from the Complainant’s KINDLE trademark.
The distinctive feature of the disputed domain name is “goldreads” which is confusingly similar with the Complainant’s GOODREADS trademark with a mere substitution of the letter “l” for the letter “o”.
The Panel holds that each of the disputed domain names is confusingly similar to the Complainant’s respective trademarks AMAZON, FIRE, KINDLE and GOODREADS respectively as enumerated above. Accordingly, the first element of paragraph 4(a) of the Policy is established in respect of all the disputed domain names.
D.2. Rights or Legitimate Interests The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain names. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the burden of production will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain names.
In the present case, the Complainant has asserted registration and use of the registered trademarks AMAZON, FIRE, KINDLE and GOODREADS as set out in Section 4 above well before the Respondent’s registration of the corresponding disputed domain names. The Complainant has confirmed that the Respondent is not a licensee or authorized agent of the Complainant. The Respondent was not authorized to register or use any of the disputed domain names.
There is no explanation on the record as to why it was necessary for the Respondent to adopt the words comprising the Complainant’s aforesaid four registered trademarks in the corresponding disputed domain names.
The Respondent has argued the registration of the disputed domain names , , and on April 2, 2014 was prior to the Complainant’s launch of its Fire Phone. However, this does not assist the Respondent as the Complainant’s AMAZON and FIRE trademarks were registered as early as in 1997 and 2011 well before the creation the said four disputed domain names in 2014. In addition, the Complainant has created the domain name in 1994 and in 2002 which it has used in connection with its goods and services.
The fact that there are others who may have registered and used other domain names embodying any of the Complainant’s trademark does not by itself confers rights or legitimate interests on the Respondent in the disputed domain names. Such matters may or may not be the subject of separate proceedings which are outside the ambit of the present proceedings.
The assertion that the word “Amazon” may be a geographical indication does not prevent the Complainant from asserting rights in its registered AMAZON trademark which it has extensively used and registered worldwide.
Similarly, the objections to the Complainant as application for “.amazon” as a generic Top-Level Domain (gTLD) is outside the consideration of the present proceedings and does not confer any rights or legitimate interests in the disputed domain names upon the Respondent.
Contrary to suggestion made of possible noncommercial use, there is no evidence available to demonstrate any legitimate noncommercial or fair use of the “Amazon” disputed domain names by the Respondent.
There is also no evidence to suggest that the Respondent Shi Lei aka shilei is commonly known by any of the disputed domain names.
In relation to the disputed domain name , the Respondent asserts that it was created on April 10, 2012 and that according to some regulations, a challenge to such registration should be time barred. The Panel does not agree that there is such time bar or any provision in the Policy or the Rules conferring any unchallengeable rights on the Respondent.
The Respondent’s proposal to transfer the disputed domain names , , , , , and to the Complainant because these registrations are close to expiry if the Complainant considers that these have infringed its rights, does not assist the Respondent in the assertion of his rights or legitimate interests in the relevant disputed domain names.
The Panel is satisfied that the Respondent has no rights or legitimate interests in any of the disputed domain names. Accordingly, the second element of paragraph 4(a) of the Policy is established in respect of all the disputed domain names.
D.3. Registered and Used in Bad Faith The Panel finds that the incorporation of words which are identical or confusingly similar to the Complainant’s said four registered trademarks consisting of or comprising the respective words “amazon”, “fire”, “kindle” and “goodreads” in the Respondent’s 14 disputed domain names within a period of 2 years from April 10, 2012 to April 3, 2014 cannot be incidental. The assertions and grounds pleaded in the Response filed herein by the Respondent referring to various commercial activities of the Complainant such as launching of its Fire Phone product line in June 2014 and the Complainant’s application for the new gTLD show a strong awareness of the Complainant, its trademarks and commercial activities using such trademarks.
In the absence of any plausible explanation for the above conduct in incorporating the Complainant’s said four trademarks in their entirety as part of the respective disputed domain names, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith. To the extent necessary, paragraph 4(b)(ii) of the Policy is invoked.
The Panel finds that the disputed domain names have been registered and are being used in bad faith under 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 disputed domain names , , , , , ,
, , , , , , and be transferred to the Complainant.