The Complainant is Ibrahim Dabes, Germany, represented by Prinz & Partner, Germany.
The Respondent is Pang Jin Jin, China, self-represented.
The disputed domain names are <ameyhookah.com>, <amy-deluxe.com>, <amyhookah.com>, and <amyshisha.com>. They are all registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 13, 2019, 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 June 20, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant filed an amendment to the Complaint in English on June 24, 2019 in which, among other things, it requested that English be the language of the proceeding. The Respondent requested that Chinese be the language of the proceeding in email communications sent on June 28 and July 1, 2019.
The Respondent sent email communications to the Center on June 25, 26, and 29 and July 10, 2019. The Complainant made a supplemental filing on June 25, 2019 and sent a brief email on July 1, 2019 regarding the Respondent’s communications.
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 in English and Chinese of the Complaint, and the proceedings commenced on June 28, 2019. In accordance with the Rules, paragraph 5, the due date for the Response was July 18, 2019. The Response was filed in Chinese with the Center on July 17, 2019.
The Center appointed Matthew Kennedy as the sole panelist in this matter on August 5, 2019. 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.
The Complainant is the owner of AMY Group which manufactures hookahs. A “hookah” is a tobacco pipe that draws smoke through water. A hookah and the tobacco used with it are also known as “shisha”. The AMY Group uses the AMY brand with hookahs, tobacco, and related accessories. The Complainant has obtained multiple trademark registrations in multiple jurisdictions. These include by way of example German trademark registration number 302012000347 for the AMY DELUXE and device mark registered on July 23, 2012, specifying tobacco and smokers’ articles in class 34. That mark is the following:
The Complainant has also obtained German trademark registration number 302015101074 for AMY, registered on June 9, 2015, specifying tobacco, in particular hookah tobacco, smokers' articles, liquids for electronic cigars and cigarettes, matches and pipes, especially hookahs, in class 34, and other goods in classes 25 and 32. These trademark registrations remain current. The Complainant acquired the domain name <amydeluxe.de> on March 18, 2010 and uses it in connection with its official website that provides information about the AMY Group and its products.
The Respondent is an individual named Pang Jin Jin, resident in China. The Respondent registered the disputed domain names on the following dates:
|
Disputed domain name |
Registration date |
|
<amyhookah.com> |
April 17, 2014 |
|
<ameyhookah.com> |
August 2, 2014 |
|
<amyshisha.com> |
August 2, 2014 |
|
<amy-deluxe.com> |
February 1, 2019 |
The Respondent holds Chinese trademark registrations numbers 18844205 and 28299600, both for AMEY, registered on February 14, 2017 (applied for January 11, 2016) and November 21, 2018 (applied for December 25, 2017), respectively, specifying wear-resistant metals, ordinary metal alloys, unprocessed or semi-processed metals, hardware implements, metal packing containers, ordinary metal artworks, metal building materials, metal ores, non-illuminating non-mechanical metal signal boards and metal buildings in class 6; and specifying tobacco, humidifiers, cigarette holders, snuff bottles, hookahs, pipes, pipe rods and ashtrays in class 34, respectively. Those trademark registrations remain current.
The Respondent registered a Chinese company named 睢县艾米科技有限公司on November 17, 2017. The company name can be translated and transcribed as “Sui County Aimi Technology Co. Ltd.” The company is registered for business in the areas of import and export of goods and technology and handicraft processing and sales. The Respondent is the company’s legal representative and responsible officer.
The disputed domain names <ameyhookah.com> and <amyshisha.com> resolve to a website for the Respondent’s company in English and Chinese. The website is titled AMEY and it provides information on the Respondent’s company profile and products. The website translates the company name as “Suixian Amey Technology Co. Ltd.” The words “AMY-DELUXE” or “AMY-deluxe” are displayed above the address bar of a browser accessing the site. The website displays the WeChat ID “amyshisha” and a contact email address that includes the username “amyhookah”. Prior to the filing of the Complaint, it also displayed a contact email address that included the term “amy-deluxe”.
The disputed domain names <amyhookah.com> and <amyshisha.com> were listed on the Facebook page of Amy Import & Export Co., Limited. This Hong Kong company (Chinese name: 艾米进出口有限公司) was registered on April 24, 2014. Its Facebook profile indicates that the company produces stainless steel hookahs and accessories. Prior to the filing of the Complaint, its Facebook page name was “amey HOOKAH” and it displayed the username “@amyhookahs” and hashtags including #amydeluxe, #amyhookah and #amyshisha.com.
The disputed domain names <amy-deluxe.com> and <amyhookah.com> do not resolve to any active website; rather, they are passively held.
The Complainant sent a cease-and-desist letter by email addressed to the Respondent on October 22, 2018, regarding the three disputed domain names already registered at that time. That letter was based on rights deriving from two trademark registrations for AMY, both registered in 2015.
The disputed domain names are identical or confusingly similar to the Complainant’s AMY DELUXE device trademark. The AMY DELUXE brand is well known as AMY. The main element of the disputed domain names is “amy”, which is the distinctive element of the Complainant’s trademark. The elements “hookah” and “shisha” are descriptive words that can be disregarded. The disputed domain name <amy-deluxe.com> incorporates the Complainant’s trademark completely. The hyphen does not change the character of this disputed domain name.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. There is no evidence of use of the disputed domain names in connection with a bona fide offering of goods or services. The Respondent has no trademark rights. The Respondent (as a business or other organization) is not commonly known by the disputed domain names. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.
The disputed domain names were registered and are being used in bad faith. The Respondent is selling infringing products and displaying the Complainant’s trademark on the website to which two of the disputed domain names resolve. The disputed domain name <amy-deluxe.com> was registered after the Complainant sent a cease-and-desist letter to the Respondent. The Respondent previously used the Facebook username “@amyhookahs” and it uses “Amy Hookah”, “Amy Shisha”, and “Amy Deluxe” as Google keywords. The Respondent intentionally attempted to attract, for commercial gain, Internet users to her website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the website or location. The Respondent is also blocking the Complainant from reflecting its trademark in a corresponding domain name.
The Complainant has not attacked anyone with malicious emails.
The Respondent submitted that “Amy” was the Respondent’s name and that this means “love you”. “Amy” was their original brand but, after receiving threats from the Complainant, they changed it to “Amey”. The Respondent also alleged that her company’s email accounts had been maliciously attacked in a possible attempt to obtain the disputed domain names.
The disputed domain names are not confusingly similar to the Complainant’s domain name. The disputed domain names <amyhookah.com> and <amyshisha.com> share only three letters with the Complainant’s domain name whereas domain names must be considered as a whole. Internet users will not use “amy” to search as it is just a common name. The disputed domain name <ameyhookah.com> shares only two letters with the Complainant’s domain name and many domain names begin with “am”. The other elements in these three disputed domain names are “hookah” and “shisha”, which have a completely different spelling, pronunciation and meaning from “deluxe”. The disputed domain names are in the “.com” Top-Level Domain (“TLD”), while the Respondent is in China, and the Complainant’s domain name is in the “.de” TLD and the Complainant is in Germany. Consumers will not be confused and the Parties’ respective domain names can coexist. The disputed domain name <amy-deluxe.com> is also different from the Complainant’s domain name <amydeluxe.de>. They are in different TLDs and the Complainant’s website is not searchable in China so the chances of them appearing in the same market are small. This disputed domain name contains a hyphen, and if the hyphen is omitted it will not resolve to the Respondent’s website. Moreover, two of the disputed domain names do not resolve to an active website and therefore cannot cause confusion. Most of the Complainant’s trademarks were registered after the first disputed domain name <amyhookah.com>. As regards those of the Complainant’s trademarks that were registered earlier, the design elements constitute their main part and these are more prominent than the textual elements. There are other words in the trademarks besides “amy” such as “deluxe” or “gold tobacco molasses”.
The Respondent has legal rights in the disputed domain names. The Respondent holds Chinese trademark registrations numbers 18844205 and 28299600, both for AMEY. Therefore, her registration of the disputed domain names conforms to the Policy. The Respondent granted exclusive rights to use the mark to 睢县艾米科技有限公司 and Amy Import & Export Co., Limited. Both companies were founded by the Respondent. The Respondent’s use of the disputed domain names will not cause confusion. The Complainant uses “Amy” as an abbreviation of “Amy Deluxe”. The Complainant’s marks are not globally well known and the Respondent only uses its marks in China. Further, “Amy” is a commonly used name in English-speaking countries and “deluxe” is a dictionary word. The word “Amy” lacks distinctiveness and should not be registrable as a trademark. The Complainant’s mark is only distinctive and obtained registration due to its figurative elements.
The Respondent has used the disputed domain names in an offering of goods or services before receiving notice of this dispute. As a Chinese company, it is impossible for the Respondent’s company to know the existence of every domain name or trademark in every country in the world. The Respondent’s purpose in registering the disputed domain names was solely for the normal needs of production and operation and she has made long-standing use of the AMEY mark in China. The scope of use of the disputed domain names is completely different. The Respondent has only sold AMEY brand hookahs in China while the Complainant sells its products in Germany. The Parties are not competitors. The Respondent’s website and social media accounts and business have never created confusion with the Complainant.
The Complainant has engaged in reverse domain name hijacking. The Respondent did not receive the Complainant’s cease-and-desist letter. The Respondent was entitled to use the website address “www.amyhookah.com” on her company’s Facebook page because she is the legal registrant of the relevant disputed domain name. The website clearly shows the name of the Respondent’s company and the contact information of the Respondent and her husband Ai Longxiao. This does not misleadingly divert consumers or damage the reputation of the Complainant’s mark. The Respondent only used the website address once and has since abandoned it. The Complainant used “amyshisha” on its Facebook and Twitter accounts and Amazon page after the Respondent registered the relevant disputed domain name.
The Respondent’s English name is “Amy” and she often uses this name in business dealings. The Respondent did not know of the existence of the Complainant’s trademarks and domain names before receiving notice of this dispute. The Complainant’s trademark and domain name are not globally well known. Its trademark is unlikely to have become well-known by 2014, as that was only two years after its registration. The Complainant provides only a few pictures from Facebook to prove its reputation. The Respondent has never placed an advertisement in the Google search engine.
Paragraph 11(a) of the Rules provides that “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 Registrar confirmed that the Registration Agreement for each of the disputed domain names is in Chinese.
The Complainant requests that English be the language of the proceeding. Its main arguments are that the website to which two of the disputed domain names resolve is in English, which indicates that the Respondent is able to communicate in that language, while the Complainant is a German resident who does not understand Chinese.
The Respondent requests that Chinese be the language of the proceeding. The Respondent’s main arguments are the language of the Registration Agreement for each of the disputed domain names is Chinese; the Parties have not agreed to use English as the language of this administrative proceeding; communications sent from the Center and the Complainant in English required translation, caused delays in preparation of the defense and seriously damaged the Respondent’s interests.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.
The Panel observes that the Complaint and the amendment to the Complaint were filed in English, whereas the Response and various other communications from the Respondent in this proceeding were submitted in Chinese. However, the Panel notes that communications sent by the Respondent on June 25 and 26, 2019 were written in English, which indicates that the Respondent is indeed able to communicate in that language. The website to which two of the disputed domain names resolve is in English as well as Chinese, which provides further support for this finding. The contents of the Response clearly indicate that the Respondent has understood the Complaint and the amendment to the Complaint. Further, the Center sent its communications regarding the language of the proceeding and notification of the Complaint in both Chinese and English. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay, whereas accepting all documents as filed in their original language will not cause unfairness to either party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that it will accept all documents as filed, whether in English or Chinese, without a translation.
The Response describes 睢县艾米科技有限公司 as the Respondent in this proceeding. The Response annexes copies of powers of attorney with various dates in 2014 and 2017 purporting to show that Pang Jin granted exclusive authorization to Amy Import & Export Co., Limited and 睢县艾米科技有限公司to use the disputed domain names <amyhookah.com>, <ameyhookah.com> and <amyshisha.com>, and to manufacture, sell and use “amey” brand hookahs.
The Panel notes that the Registrar’s verification email identifies Pang Jin as the registrant of all four disputed domain names. The amendment to the Complaint incorporates the information provided in the Registrar’s verification email. Accordingly, the Panel finds that the Respondent in this proceeding is Pang Jin.
The Complainant submitted an unsolicited supplemental filing on June 25, 2019 in reply to the Respondent’s informal email communications of the dame day.
Paragraph 10(d) of the Rules provides that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Although paragraph 12 of the Rules empowers the Panel, in its sole discretion, to request further statements or documents from either of the Parties, this does not preclude the Panel from accepting unsolicited filings. See Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447.
The Panel observes that the Respondent alleged in an email communication of June 25, 2019 that her company’s email accounts had been maliciously attacked. The Complainant could not have anticipated such an allegation at the time of the Complaint or the amendment to the Complaint. The Complainant’s supplemental filing includes a statement replying to this allegation. In these exceptional circumstances, the Panel accepts this statement as part of the record of this proceeding. Otherwise, the supplemental filing reiterates arguments that the Complainant had already presented. Therefore, with the exception of the statement regarding the alleged email attack, the Panel declines to accept the Complainant’s supplemental filing as part of the record of this proceeding.
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements in respect of each disputed domain name:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The comparison to be made under paragraph 4(a)(i) of the Policy is between the disputed domain names, on one hand, and the Complainant’s trademark, on the other hand, but not the Complainant’s own domain name. Based on the evidence submitted, the Panel finds that the Complainant has rights in the AMY DELUXE and device trademark.
The Panel will compare the disputed domain names (which are strings of alphabetical letters and fullstops) with the textual elements of the Complainant’s trademark. The dominant element in the Complainant’s trademark is the word AMY and that word is not subject to a disclaimer. The design elements do not overtake that textual element in prominence. The design or non-textual elements of the Complainant’s trademark are incapable of representation in domain names. Therefore, the Panel will disregard the design elements in its comparison for the first element of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.10.
The disputed domain name <amy-deluxe.com> includes all textual elements of the Complainant’s trademark. This disputed domain name adds a hyphen but, as mere punctuation separating the two textual elements in the trademark, it does not prevent a finding of confusing similarity with that trademark.
The disputed domain names <amyhookah.com> and <amyshisha.com> wholly incorporate the word AMY as their initial and dominant element. The disputed domain name <ameyhookah.com> contains the element “amey”, which is phonetically identical to the word AMY, as its initial and dominant element. All three of these disputed domain names include an additional element that is not found in the trademark, namely the word “hookah” or “shisha”. As mere dictionary words, these additional elements do not prevent a finding of confusing similarity with a trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110. The Panel notes that none of these three disputed domain names includes the word “deluxe” which is a textual element of the trademark. However, given that they all include the dominant element of the trademark, the Panel does not consider that this prevents a finding of confusing similarity.
Each of the disputed domain names also contains the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix may generally be disregarded in the comparison between a domain name and a trademark for the purposes of the Policy. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.
Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy with respect to all four disputed domain names.
The Panel will assess the existence of the Respondent’s rights or legitimate interests at the present time, that is to say, based on facts at the time of the filing of the Complaint rather than at the time of registration of the disputed domain names. See WIPO Overview 3.0, section 2.11.
The Complainant has shown that the Respondent uses the disputed domain names <ameyhookah.com> and <amyshisha.com>, which are confusingly similar to the Complainant’s AMY DELUXE and device mark, in connection with a business that sells the same type of goods as the Complainant, i.e., hookahs. It is clear from the Complainant’s cease-and-desist letter that it has not authorized or licensed the Respondent to register the disputed domain names. The Complainant has also shown that the Respondent makes only passive use of the disputed domain names <amy-deluxe.com> and <amyhookah.com>. On their face, none of the uses of the four disputed domain names constitutes use in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy.
The Respondent’s name in the Registrar’s WhoIs database is Pang Jin. The Complainant has no evidence that the Respondent has been commonly known by the disputed domain names within the terms of paragraph 4(c)(ii) of the Policy.
The Respondent makes commercial use of the disputed domain names <ameyhookah.com> and <amyshisha.com> and passive use of the disputed domain names <amy-deluxe.com> and <amyhookah.com>. None of these uses constitutes a legitimate noncommercial or fair use within the terms of paragraph 4(c)(iii) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Panel will now consider the Respondent’s arguments.
Based on the evidence submitted, the Panel finds that the Respondent holds two Chinese trademark registrations for AMEY. This trademark is identical to the initial and only distinctive element of the disputed domain name <ameyhookah.com>. The only additional elements in that disputed domain name are the dictionary word “hookah” and the gTLD suffix “.com”.
A trademark registration will ordinarily support a finding of rights or legitimate interests in a domain name for the purposes of the second element. See WIPO Overview 3.0, section 2.12.1. Nevertheless, the Panel will consider all the circumstances surrounding the Respondent’s trademark registration to determine whether she obtained it for a legitimate or bona fide purpose or primarily to circumvent the application of the Policy or otherwise prevent the Complainant’s exercise of its rights. See WIPO Overview 3.0, section 2.12.2. On one hand, the Respondent did not apply for the AMEY trademark in respect of hookahs and tobacco until a considerable time after she registered this disputed domain name, after she had already obtained registration of that trademark in respect of another class of goods and well before receiving notice of the Complaint. The Respondent has made active use of the trademark AMEY subsequent to its registration, both on her company website and offline, and she has indeed been selling hookahs since prior to the filing of the Complaint. The AMEY trademark is registered in the jurisdiction in which the Respondent actually uses it, i.e., China. On the other hand, the Respondent concedes in her email of June 25, 2019 that she changed her brand from AMY to AMEY after receiving threats from the Complainant, which confirms that she knew of the Complainant and its AMY brand at the time that she applied for her trademark. The Respondent’s AMEY mark is phonetically identical, and visually nearly identical, to the dominant element of the Complainant’s AMY DELUXE and device mark, and it is registered in respect of the same type of goods that the Complainant sells, among others. The Respondent not only uses the AMEY mark but has continued to use the dominant element of the Complainant’s mark, i.e., AMY, as discussed further in Section 6.2C below. There is no evidence of any use of the AMEY mark in connection with any orders, invoices or payments. This all gives rise to the inference that the Respondent sought and obtained rights to the AMEY trademark in order to confuse Internet users, among others, as to the source, sponsorship, affiliation or endorsement of her company and its goods, and to prevent the Complainant’s exercise of its rights. In light of the clear indicia of bad faith, the Panel does not consider that the Respondent can succeed in demonstrating that she is using this disputed domain name in good faith. Accordingly, the Panel finds that the Respondent’s trademark registration does not create rights or legitimate interests in respect of the disputed domain name <ameyhookah.com> for the purposes of the Policy.
The Respondent’s trademark rights in AMEY do not demonstrate rights or legitimate interests in the disputed domain names <amy-deluxe.com>, <amyhookah.com>, or <amyshisha.com>. These disputed domain names do not contain the trademark AMEY and the Respondent does not demonstrate that her rights in the AMEY trademark otherwise create rights or legitimate interests in connection with domain names beginning with the element “amy”.
The Respondent presents other arguments asserting rights and legitimate interests in the name “Amy”. The Respondent claims that she is known as “Amy”. However, there is no evidence on the record in support of this assertion. The evidence only shows that the Respondent’s husband’s surname is 艾 (Ai). The Respondent’s Chinese company name includes the word 艾米 (Aimi), which it translates on its website as “Amey” not “Amy”. The Respondent claims to have registered the company name “Amy Import & Export Co., Limited.” in Hong Kong, China in 2014. However, the extract from the company register that she submits in evidence does not mention her name. Therefore, the Panel is unable to find that the Respondent has been commonly known as “Amy” within the terms of paragraph 4(c)(ii) of the Policy.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. It is not an exhaustive list of such circumstances. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.”
As regards registration, the Respondent registered the disputed domain names years after the Complainant obtained its trademark registrations, particularly in the case of <amy-deluxe.com>. Three of the disputed domain names incorporate the dominant element of the Complainant’s AMY DELUXE and device mark, i.e., “amy” while the other disputed domain name incorporates a phonetically identical element, i.e., “amey”. Three disputed domain names combine one or other of these elements with the word “hookah” or “shisha”, which demonstrates an awareness of the Complainant’s mark and business, as there is no other apparent connection between the word “amy” and those goods. The other disputed domain name combines “amy” with the word “deluxe” and thus wholly incorporates the textual elements of the Complainant’s AMY DELUXE and device mark, which also demonstrates an awareness of that mark. Even though the words are mere dictionary words, their combination with the word “amy” or its phonetic equivalent is most unlikely to have been coincidental, which indicates that the Respondent targeted the Complainant’s mark at the time that she registered the disputed domain names. Accordingly, the Panel finds that the Respondent registered the disputed domain names in bad faith.
As regards use, the Respondent uses the disputed domain names <ameyhookah.com> and <amyshisha.com> in connection with a website titled “AMEY” that offers for sale hookahs. Despite the website title, and despite the Respondent’s trademark registrations for AMEY, screenshots submitted by the Complainant show that the textual elements of the Complainant’s AMY DELUXE and device mark are displayed above the address bar of a browser accessing the site. The Respondent challenges the authenticity of this evidence, citing discrepancies in formatting. The Panel notes that the capitalization of the word “deluxe” in a browser differs according to which of these disputed domain names is used to access the site, but sees nothing that would call into question the reliability of this evidence. Besides, the website itself displays the dominant element of the Complainant’s mark, i.e., “AMY”, in the WeChat ID and in the email contact address, while a former email contact address included all textual elements of the Complainant’s mark, i.e., “AMY” and “DELUXE”. The evidence of the Respondent’s offline sales consists principally of orders and payments transmitted by WeChat. The website offers for sale the same type of goods that the Complainant sells and, even if the Respondent only does business in China, its website is still accessible in Germany, where the Complainant is located, and elsewhere. Taking into account all these circumstances, the Panel considers that the Respondent is using the disputed domain names <ameyhookah.com> and <amyshisha.com> intentionally to attract Internet users searching for the Complainant’s goods to the Respondent’s website, for commercial gain, by creating create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or the goods on that website. Therefore, the Panel finds that the disputed domain names <ameyhookah.com> and <amyshisha.com> are being used in bad faith.
The Respondent makes only passive use of the disputed domain names <amy-deluxe.com> and <amyhookah.com> but this does not preclude a finding of use in bad faith. See Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, these disputed domain names form a pattern of conduct with the disputed domain name <amyshisha.com>, insofar as all three combine the dominant element of the Complainant’s mark, i.e.,“amy”, with a word that either appears in the Complainant’s trademark or describes its goods. The Panel has already found that the Respondent uses the disputed domain name <amyshisha.com> with an active website in bad faith. In the Panel’s view, the most likely explanation for the passive use of these other two disputed domain names is that they are intended to resolve to that same website, or a similar website, at some future time. Therefore, the Panel finds that the disputed domain names <amy-deluxe.com> and <amyhookah.com> are being used in bad faith.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
The Respondent alleges that the Complainant has engaged in reverse domain name hijacking. Paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The Respondent alleges an attempt to attack her company’s email accounts. She submits evidence that appears to show that her email server received over 20 hits in the space of a minute from an IP address in Quebec, Canada in June 2019. The Complainant denies any involvement. The Panel notes that there is no evidence on the record linking this incident to the Complainant.
The Panel declines to find that the Complaint was brought in bad faith. The Panel has upheld the Complaint and sees nothing on the record that indicates bad faith on the part of the Complainant.
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 <ameyhookah.com>, <amy-deluxe.com>, <amyhookah.com>, and <amyshisha.com> be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: August 28, 2019