WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Amazon Technologies, Inc. v. Privacy Protect, LLC (PrivacyProtect.org) / Marc, Dubai Gold
Case No. DIO2021-0027
1. The Parties
The Complainant is Amazon Technologies, Inc., United States of America (“United States”), represented Richard Law Group, United States.
The Respondent is Privacy Protect, LLC (PrivacyProtect.org), United States / Marc, Dubai Gold, France.
2. The Domain Name and Registrar
The disputed domain name <amazoncryptocoin.io> is registered with NetEarth One Inc. d/b/a NetEarth (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2021. On November 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 22, 2021, 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 Complainant on November 23, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 24, 2021.
The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO 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 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2021. The Respondent requested to the Center four additional days to file the Response, which new due date was then December 25, 2021. The Response was filed with the Center on December 25, 2021.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on February 1, 2022. 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 Complainant is a large retail and technology company founded in 1994, providing e-commerce, cloud computing, digital streaming, and artificial intelligence services under its AMAZON trademark and other trademarks including the term “amazon”. The Complainant offers its products and services to more than 100 countries around the globe, operating exclusively online. Per the Complaint, the Complainant has more than 300 million active customer accounts and more than 200 million Amazon Prime members worldwide. The Complainant’s website (“www.amazon.com”) is the 3rd most-viewed website in the United States and the 11th most-viewed website globally, according to public statistics offered by Alexa Internet, Inc.1
The Complainant owns trademark registrations comprising its AMAZON, AMAZON COINS, AMAZON.COM trademarks, and its smile logo in many jurisdictions around the world, including:
- United States Trademark Registration No. 2,078,496, AMAZON, word, registered on July 15, 1997, in Class 42;
- United States Trademark Registration No. 2,657,226, AMAZON, word, registered on December 3, 2002, in Class 42;
- United States Trademark Registration No. 2,738,837, AMAZON, word, registered on July 15, 2003, in Class 38;
- United States Trademark Registration No. 2,832,943, AMAZON, word, registered on April 13, 2004, in Class 35;
- United States Trademark Registration No. 5,218,712, AMAZON COINS, word, registered on June 6, 2017, in Classes 35, 41, and 42;
- United States Trademark Registration No. 2,837,138, AMAZON.COM, word, registered on April 27, 2004, in Class 35;
- United States Trademark Registration No. 4,171,965, AMAZON, figurative, registered on July 10, 2012, in Class 9;
- United States Trademark Registration No. 5,508,999, AMAZON, figurative, registered on July 3, 2018, in Classes 35, 36, 41, and 42; and
- United States Trademark Registration No. 4,841,614, figurative, registered on October 27, 2015, in Classes 35 and 36.
The AMAZON trademark is consistently ranked as one of the most well-known and recognizable brands,2 and its reputation has been recognized by prior decisions under the UDRP Policy. 3
The Complainant further owns de domain name <amazon.com> (registered on November 1, 1994) that resolves to its corporate website.
The disputed domain name was registered on June 26, 2021, and resolves to a website offering a crypto currency trading platform in various languages (including English, French, Arabic, Armenian, Bosnian, Bulgarian, Chinese, Croatian, Danish, Dutch, Esperanto, Finish, German, Greek, Hebrew, Hindi, Hungarian, Irish, Italian, Japanese, Korean, Kurdish, Latin, Latvian, Mongolian, Nepali, Persian, Polish, Portuguese, Russian, Serbian, Spanish, Swedish, Turkish, Ukrainian, Vietnamese, Zulu, etc.). This website shows in its heading the words “acc Amazon cryptocoin” and a logo that comprises a gold coin and a smile in the same color, all within a purple rectangle. In the section “Marketplace”, this website offers for sale a newly created cryptocurrency identified as “Amazon cryptocoin” or “ACC”, including a promotional video, and provides an option for subscription. Under a section identified as “our projects” this website displays various “projects” including links to various business sites: (i) a site offering online courses and education materials (“www.learn-online.net”); (ii) a site promoting French restaurants (“www.france-restaurants.com”); and (iii) a multi-vendor clothing and accessories market place (“www.france-grossistes.com”). The contact information offered in this website includes a contact form, an email address and a WhatsApp option; however, the WhatsApp option is apparently inactive. This website provides no privacy or legal notice, no address or other information about its owner or the owner of the disputed domain name, and no information about its lack of relationship with the Complainant.
5. Parties’ Contentions
A. Complainant
Key contentions of the Complaint may be summarized as follows:
The disputed domain name is confusingly similar to the Complainant’s AMAZON and AMAZON COINS trademarks. The disputed domain name incorporates the AMAZON trademark in its entirety (adding the descriptive term “cryptocoin”, which relates to the Complainant’s Amazon Coins service), and incorporates the AMAZON COINS trademark in singular form.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with or authorized by the Complainant. The Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, it is not making a noncommercial fair use of the disputed domain name, and has never been legitimately known as or referred to as AMAZON, AMAZON COINS, or any variation thereof. The disputed domain name resolves to a website that uses confusingly similar derivatives of the Complainant’s smile logo and the AMAZON figurative mark to promote cryptocurrency offers, acquire consumer email addresses and financial information, and offer a competing online store. The use of the AMAZON trademark in the disputed domain name and derivatives of the Complainant’s trademarks and smile logo is likely to confuse and mislead the public, which has been calculated to attract traffic to an unrelated and competing currency business and online store, being unfair and constituting passing off. The apparent use of the disputed domain name to harvest consumer email and crypto wallet addresses is also not a legitimate or bona fide use.
The disputed domain name was registered and is been used in bad faith. Since the Respondent’s website displays derivatives of the Complainant’s figurative trademarks for a competing online store, it is apparent that the Respondent registered the disputed domain name with actual knowledge of the Complainant’s rights and intended to generate association, creating the false impression that its website or services originate with, or are endorsed or certified by the Complainant. The Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with the Complainant’s trademarks, to promote an alternative online store, which potentially diverts and disrupts the Complainant’s business. The apparent use of the disputed domain name to facilitate a fraudulent cryptocurrency, phishing or similar scheme, and the use of a privacy shield to hide the Respondent’s identity, are further evidence of bad faith.
The Complainant has cited previous decisions under the Uniform Domain Name Dispute Resolution Policy (the “UDRP Policy” or “UDRP”) that it considers supportive of its position, and requests the transfer of the disputed domain name.
B. Respondent
Key contentions of the Response may be summarized as follows:
The use of privacy services in the registration of the disputed domain name was only motivated by the intention to avoid any harm to the Respondent’s site by hackers or other bad intended persons. Cryptocurrency is a very sensitive market, which needs security measures.
Due to the worldwide reputation of the Complainant and the differences (in the design, colors, and logo) of the Respondent’s website compared to the one of the Complainant, there is no possibility of confusion. The Respondent’s website does not indicate any relationship with the Complainant. The Complainant does not have cryptocurrency, and the Respondent does not sell anything, so the Parties are not in the same field.
The decisions cited by the Complainant are not applicable to this case. The word “amazon” is a universal common dictionary word, mostly used to describe a female warrior or a river in South America, and the smile logo used by the Respondent is a universal smile, which is not the intellectual property of the Complainant. The disputed domain name includes no spaces or dots between the words “amazon” and “cryptocoin”. The Complainant does not own any intellectual property for this exact letter composition, and its size and importance does not allow the Complainant to appropriate a common word or to bully other companies. The Complainant changed its company name and trademark from “Cadabra” into “Amazon”, simply because of its first letter “a” to have a high score in Internet search engines. The Complainant’s founder found the word “amazon” while flipping a dictionary (as indicated in his biography by Ann Byers), choosing it because its starting letter “a” and because the river appealed to him, not subject to any emotional, symbolical or territorial meaning, taking a name already existent linked to a place in South America.
There are obvious differences between the Complainant’s logo and figurative mark, and the mark used by the Respondent.4 The Complainant uses a smiley mouth with an arrow, whereas the one displayed in the Respondent’s site is the universal smile logo (with no arrow). There are various companies using smile logos, and this logo’s copyright does not belong to the Complainant.5
The Complaint is based on the power and importance of the Complainant, in an intent to bully the Respondent, as the story of David and Goliath. Intellectual property laws and rules benefit the one with the most money and power. However, neither the common word “amazon” nor the universal smile are the intellectual property of the Complainant. There are other websites using domain names that include the word “amazon”.6 The reason behind this proceeding is that the Complainant is probably looking into cryptocurrency, being a case of intimidation trying to steal the Respondent’s business.
The Respondent has invested a lot of effort and money in its project (months of work and over EUR 2,250,000). The Respondent would not have done such investment and taken such risk if it thought it would create a conflict with the Complainant. The Respondent’s website has more than 8,000 unique visitors daily and is growing every hour. The Respondent is open to find a peaceful solution, for example, by removing or changing its logo, or indicating in its website that it does not belong to the Complainant.
6. Discussion and Findings
The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules. Noting the substantive similarities between the Policy and the UDRP, the Panel will refer to prior UDRP cases and doctrine where appropriate, as well as various sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A. Identical or Confusingly Similar
The Complainant indisputably has rights in the AMAZON and the AMAZON COINS marks, both by virtue of its trademark registrations and as a result of its global goodwill and reputation.
In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the UDRP and the Policy. In such cases, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Furthermore, the applicable generic Top-Level-Domain (“gTLD”) or country code Top-Level-Domain (“ccTLD”) in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test. See sections 1.7, 1.8, and 1.11, WIPO Overview 3.0.
The disputed domain name incorporates the AMAZON mark in its entirety, and the AMAZON COINS mark in a singular form, adding the term “crypto” interspersed between the words “amazon” and “coin”. The Complainant’s trademarks are recognizable in the disputed domain name and the ccTLD “.io” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, prior decisions under the Policy as well as under the UDRP have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests.
The Complainant’s prima facie assertions and evidence effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case.
Paragraph 4(c) of the Policy provides the circumstances, without limitation, for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy, and to establish rights or legitimate interests in the disputed domain name.
The Respondents alleges that, before the notice of the dispute, it has used the disputed domain name in connection with a bona fide offering of services in the field of cryptocurrency, unrelated to the Complainant’s business, in which it has invested considerable funds and effort.
The Panel notes, however, that the Respondent’s website includes a section that promotes and displays various links to businesses unrelated to the field of cryptocurrency, including a clothing and accessories online market place, as well as a website offering online courses and other education material. The Panel notes that these businesses (promoted by or belonging to the Respondent) may compete and collide with the Complainant’s services and some of the products commercialized in its reputed online retail platform.
The Respondent further indicates that it has used to identify its business a word included in the dictionary (the term “amazon”), and a logo universally used (a smile logo), considering that the Complainant does not (or should not) hold any intellectual property rights in these elements, which should be commonly and freely used in the market.
In this respect, the Panel notes that the Respondent appears to mix up the concepts of a term being “generic” and a term “being included in the dictionary”, alleging that being the word “amazon” included in the dictionary, it should not be possible to claim any exclusive rights over it. This is a common mistake perfectly addressed by section 2.10 of the WIPO Overview 3.0, which the Panel finds important to partially reproduce: “[…] The fact that a particular term has a dictionary meaning is sometimes confused with the notion of a “generic” term. When used in a non-dictionary distinctive sense (i.e., in a manner that bears no relation to the goods or services being sold), such dictionary terms can function as “arbitrary” trademarks. […].”
The Panel considers that the term “amazon” bears no direct relation or resemblance to the Complainant’s business, being a perfect and valid identifier of its origin, fulfilling all of a trademark’s functions. Additionally, the AMAZON mark has acquired a higher level of distinctiveness derived from its acquired global goodwill and reputation.7
It is further to be noted that a core factor in assessing potential fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademarks. See section 2.5, WIPO Overview 3.0. The disputed domain name incorporates the AMAZON and the AMAZON COINS (in singular) marks, reproducing the main element of the Complainant’s company name and its corporate website’s domain name (<amazon.com>), the word “amazon”. Therefore, the Panel considers that the disputed domain name creates the intrinsic impression that it refers to the Complainant’s official website for a type of cryptocurrency related to its platform, or to use in its online retail platform, suggesting sponsorship or endorsement by the Complainant with a risk of implied affiliation.
The Panel notes that the Complainant’s platform already provides a virtual currency identified with the AMAZON COINS trademark (which is incorporated in the disputed domain name in its entirety in a singular form, interspersed with the word “crypto”). Under the AMAZON COIN trademark, the Complainant offers certain incentives and discounts for purchases in its website. The Panel considers that, although this virtual currency is not equivalent to a cryptocurrency, it shares the same virtual and financial nature, as a means of payment, although currently limited its use to the Complainant’s platform, finding that this circumstance increases the likelihood of affiliation between the disputed domain name and the Complainant’s prior rights.
The Panel further considers remarkable that the Respondent’s website displays not only the word “amazon”, but also a logo that includes the same figurative element used as well-known logo by the Complainant, a smile in yellow or gold color. This element, although it is slightly different, as pointed out by the Respondent, may further contribute, in the view of the Panel, to generate a risk of confusion and association with the Complainant and its trademarks.
The Panel further considers remarkable that, not only the disputed domain name was registered using privacy services, but also, and more important, the Respondent’s website does not contain any information or contact details from the owner of the site or that of the disputed domain name, only including an email address, a contact form, and an apparently non-operational WhatsApp option. Furthermore, this website does not include any legal or privacy notice and does not mention its lack of relationship with the Complainant.
The Panel further notes that the Respondent provides information about how and why the Complainant chose the term “amazon” to identify its business (obtained from a biography of the Complainant’s founder), but no explanation is provided about the reasons behind the Respondent’s choice of this same word for identifying its business.
All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not rebutted the Complainant’s prima facie case, and all the case cumulative facts and circumstances point to consider that the Respondent lacks any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
C. Registered or Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establishes that the disputed domain name has been registered or is being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0. The Panel considers such standard appropriate in the present case.
The Panel notes the continuous extensive use of the AMAZON mark and presence over the Internet since its launch in 1994 (initially as an online platform for selling books), its fast growing into the global retail and technology brand it is today, and the well-known character of this trademark worldwide, as has been recognized by previous decisions under the Policy.8
The Panel considers that all cumulative circumstances of this case point to bad faith registration of the disputed domain name:
(i) the disputed domain name incorporates the Complainant’s trademarks (AMAZON in its entirety and AMAZON COINS with a minor alteration), adding a term (“crypto” interspersed between the terms “amazon” and “coin”) which do not avoid the intrinsic likelihood of affiliation;
(ii) the Complainant’s trademarks are well-known worldwide and the Complainant operates exclusively online, being its global retail platform available and extensively used worldwide, including, particularly, in France, where the Respondent is apparently located according to the Registrar verification;
(iii) the disputed domain name is used in a website that offers for sale newly created cryptocurrency identified as “ACC” or “Amazon Crypto Coin”, but this same site includes links to various online retail businesses offering for sale various products (clothing, accessories, and educational courses, etc.), which collides and competes with the Complainant’s business and its retail services;
(iv) the Respondent’s website displays derivatives of the Complainant’s figurative trademark and its smile logo, provides no information about its owner or that of the disputed domain name, and/or its lack of relationship with the Complainant and its trademarks; and
(v) the Respondent has not sufficiently alleged and proof any rights or legitimate interests in the disputed domain name.
In light of the above, taking into consideration all cumulative circumstances of this case, on the balance of probabilities, the Panel considers that the disputed domain name was registered and is being used targeting the famous AMAZON trademark, in bad faith, with the intention of obtaining a free ride on the established reputation of the Complainant and its trademarks. The circumstances of this case show that the Respondent’s purpose has been to increase the traffic of the Respondent’s website by misleading Internet users seeking for the Complainant, its reputed retail online platform or its platform’s currency, which constitutes bad faith, and potentially disrupts the Complainant’s business.
The Panel further considers that the circumstances of this case reveal, on a balance of probabilities, an intention to impersonate the Complainant, using a cryptocurrency business either a pretext for the promotion of other businesses linked in the Respondent’s website (partially competing with the Complainant’s retail platform), or a pretext for any type of fraudulent cryptocurrency, phishing or similar scheme.
Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the disputed domain names has been registered and is being used in bad faith.
D. Reverse Domain Name Hijacking
The Respondent alleges that the Complaint was filed in bad faith, in an attempt to hijack the disputed domain name, bulling a small company. However, the Panel finds that nothing in this case indicates that the Complaint was brought abusively; to the contrary, it is the disputed domain name registration that was. See section 4.16, WIPO Overview 3.0.
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 <amazoncryptocoin.io> be transferred to the Complainant.
Reyes Campello Estebaranz
Sole Panelist
Date: February 15, 2022
1 Alexa Internet, Inc. is an Internet site ranking company, part of the Complainant’s group.
2 According to the evidence provided by the Complainant, the AMAZON trademark is been ranked: in 2021, by Brandz Most Valuable Global Brands, as No.1; in 2018-2020, by Brand Finance Global 500, as No.1; in 2018-2019, by Interbrand Best Global Brands, as No.3; in 2017, by Brandz Global Top 100 Brands, as No.4; in 2017, by Interbrand Best Global Brands, as No.5; in 2017, by Forbes The World’s Most Valuable Brands, as No.6; in 2016, by Interbrand Best Global Brands, as No.8; in 2016, by Brand Finance Global 500, as No.4; in 2016, by BrandZ Top 100 Most Valuable Global Brands, as No.7; in 2015, by Interbrand Best Global Brands, as No.10; in 2014, by Interbrand Best Global Brands, as No.15; in 2013, by Interbrand Best Global Brands, as No.19; in 2012, by Interbrand Best Global Brands, as No. 20; and in 2011, by Brand Finance Global 100, September Update, as No. 22.
3 See, among others, Amazon Europe Core S.à r.l v. Agata Konopka, WIPO Case No. DNL2021-0029; Amazon Technologies, Inc. and Amazon Europe Core S.à.r.l. v. Hei Ze Shang Zi, WIPO Case No. D2020-3012; Jones Lang LaSalle IP, Inc. v. Domain Administrator, See PrivacyGuardian.org / Sharon Jensen, WIPO Case No. D2018-0868; Amazon Europe Core S.à.r.l. v. Wuxi Yilian LLC, WIPO Case No. D2017-2254; and Amazon.com, Inc., Amazon Technologies, Inc., Amazon Europe Holding Technologies SCS v. Safraaz Karim, WIPO Case No. D2016-0809
4 The Respondent cites the following differences: (1) The Respondent’s the first letter “A” is uppercase; (2) the smile used by the Respondent is the same as the universal one, whereas the Complainant’s smile has an arrow; (3) the letter “z” of the Complainant’s figurative trademark is different at the bottom of the letter; (4) the letter “O” of the Complainant figurative trademark is substituted in the Respondent’s trademark by the logo of a coin; and (5) the colors are different.
5 The Respodent indicates that “To trace the birth of the yellow smiley face we think of today, we need to fast forward to the 1960s. In 1963, graphic designer Harvey Ball was paid $45 to create a motivating design for the State Mutual Life Assurance Company. Ball created a yellow smiling face with two black dots for eyes and a curved, black line for a smile. The company loved it and placed it on a variety of merchandise. Neither Ball nor the company that hired him would trademark the symbol. However, others couldn’t let this business opportunity slip by. The smiley face’s trademark and ownership have been at the centre of many lawsuits and legal battles since the 1970s, battles that are still fought today.” (Source https://www.dictionary.com/e/smiley-face-history-origin/)
6 The Respondent cites https://amazone.net/fr; https://www.projetamazones.com/; https://www.amazonecafe.com/; and https://www.amazone.nl/ https://amazonmode.nl/
7 See footnotes numbers 2 and 3, supra.
8 See footnote number 3, supra.