Cybersquatting & Domain Dispute Attorneys / Lawyers: Amazon Moves to Protect Kindle Trademarks, Sends Threat Letter to "KindleReport.com"

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02/10/2008

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Countries like Canada, Sweden, and South Korea have better, faster Internet connections. People in Japan can download an entire movie in just two minutes, but it can take two hours or more in the United States. Yet, people in Japan pay the same as we do in the U. S. for their Internet connection. Not only do they have the technology for higher speeds, but a larger percentage of people in those countries have access to high speed connections. The United States has fallen to 16th place behind other...

Thanks John. It will be interesting to see if the Grip Site / First Amendement analysis becomes a viable UDRP defense when a domain registrant with hybrid purpose - to provide information and discussion about a product on the one hand, and benefit financially on the other (affiliate sales or Google adwords).

[Initial interest confusion] is much like posting a sign with another’s trademark in front of one’s store. Suppose [Blockbuster Video] puts up a billboard on a highway reading—“West Coast Video: 2 miles ahead at Exit 7”—where West Coast is really located at Exit 8 but Blockbuster is located at Exit 7. Customers looking for West Coast’s store will pull off at Exit 7 and drive around looking for it. Unable to locate West Coast, but seeing the Blockbuster store right by the highway entrance, they may simply rent there. Even consumers who prefer West Coast may find it not worth the trouble to continue [**11] searching for West Coast since there is a Blockbuster right there. Customers are not confused in the narrow sense: they are fully aware that they are purchasing from Blockbuster and they have no reason to believe that Blockbuster is related to, or in any way sponsored by, West Coast. Nevertheless, the fact that there is only initial consumer confusion does not alter the fact that Blockbuster would be misappropriating West Coast’s acquired goodwill.

D'Amato contends that any proof of consumer confusion is rebutted by a disclaimer on his website which stated, [**24] "[t]his page is not associated with Audi GmbH or Audi USA in any way." First, such HN16a disclaimer does not absolve D'Amato of liability for his unlawful use of marks identical to Audi's trademarks. Ford Motor Co. v. Lloyd Design Corp., 184 F. Supp. 2d 665, 673-74 (E.D. Mich. 2002) ("The principle that disclaimers are often ineffective is especially applicable when the infringer uses an exact replica of the relevant trademark.") In addition, as we stated in PACCAR, [a]n infringing domain name has the potential to misdirect consumers as they search for web sites associated with the owner of a trademark. A disclaimer disavowing affiliation with the trademark owner read by a consumer after reaching the web site comes too late. This "initial interest confusion" is recognized as an infringement under the Lanham Act.PACAAR, 319 F.3d at 253. Further, any effect this disclaimer had in reducing confusion would likely be negated by the statement on the website contending that there was a "signed agreement" with Audi.

Audi AG v. D'Amato, 469 F.3d 534, 546 (6th Cir. 2006)

I would argue that this is a non-commercial fair use. Much like Brahma Kumaris World Spiritual Organization v. John Allan, in which a NAF panel held that the use of the Brahma Kumaris mark for the purposes of educating the public about the Brahama Kumaris and for providing news and a discussion forum on the group, was a non-commercial fair use (See http://domains.adrforum.com/domains/decisions/1075486.htm). While Schramm has a Google ad on the side of his page, it is very unlikely that a single AdSense ad is providing much revenue. Several NAF cases have held that the use of AdSense ads are non-commercial where they do not provide a significant revenue stream (See American Psychological Association v. Asmah Dar: http://domains.adrforum.com/domains/decisions/936954.htm). Furthermore, the UDRP says that commercial use is an "intent for commercial gain to misleadingly divert consumers." As several NAF decisions have pointed out, this intent for commercial gain "refers to the kind of confusion that arises in a trademark infringement context, when a competitor diverts consumers to its site and, potentially, diverts sales." See Britannia Building Society v. Britannia Fraud Prevention, D2001-0504 (WIPO July 6, 2001). It can hardly be said that Schramm is diverting consumers to his site to purchase a competing product. If anything, it seems as if Schramm's site would increase the sales of the Kindle device--that is, if the device is worth owning. At the very least it creates some non-competitive SEO value for Amazon.

As an attorney that does this for a living on both the domainer and trademark side, I have to vote as follows.

1. Amazon's letter is a great example of how companies should be these 'misinformed registrant' cyber-squatting matters. It is even-handed and provides more notice than threats (although it does little to educate the misinformed registrant WHY this is in fact cybersquatting).

2. Registrant Jason Schramm appears to be aggrandizing the 'poor me' issue to obtain leverage he doesn't have. Either that or he simply does not understand that Amazon will likely send a much stronger domain dispute threat letter this next round.

Because Jason has brought this otherwise private issue to the internet by posting the notice letter, the merits of the domain dispute matter should be discussed. Jason's approach might have been to engage Amazon in a private discussion and negotiate a transition period to a new domain. When Amazon forces transfer of the domain because Jason went on offense, I am not sure Jason will get much sympathy from his target community.

Doesn't the affiliate code for Amazon used on the allegedly infringing domain name count as commercial activity and evidence of bad faith under the UDRP? It doesn't seem that replacing the affiliate code to presumably deny Amazon affiliate revenue (I am sure they are tightening their belt just to absorb the loss) with ad word code would help the domain registrants cause.

What if every amazon affiliate could register one of Amazon's many brand marks just because they would be selling amazon books on their web site??

Is Amazon's trademark infringement and cybersquatting letter more threat or polite notice? Look, trademark holder get characterized as heavy handed and draconian just as much as domainers get accused of cybersquatters. There is misjudgment and and overly aggressive behavior on both sides. There are black hat trademark and service mark holders as well as black hat domainers (ie typo & cybersquatters)

This another case of a internet enthusiast who simply does not understand that Amazon is fully within their rights, that they must protect their trademarks in order to preserve their brand and that YOU CAN NOT REGISTER DOMAINS USING THIRD PARTY BRANDS AND PRODUCT NAMES for commercial gain (i.e. Google adwords). The only remaining legal question is whether the domain owner can make a claim that the site is primarily non-commercial and otherwise fair use.

The message reads as follows:

Greetings from Amazon.com.

It has recently come to our attention that you are using a domain name in our Associates Program that contains a variation and/or misspelling of the name KINDLE, including but not limited to KINDLEREPORT.COM. Please note that we do not allow anyone with a URL containing the word “amazon,” any other trademark of Amazon.com, Inc. or its affiliates, any misspelling of the word “amazon” and/or numerical variants to participate in the Associate Program (see Section 1 of the Associates Program Operating Agreement at http://affiliate-program.amazon.com/gp/associates/agreement/). Such use violates Amazon.com’s trademark, proprietary and other rights.

At this juncture, we are willing to assume that you have registered and are using this domain name without a full appreciation of the above, provided that you are willing to assign this domain name over to Amazon.com. Please advise whether you agree to transfer ownership of the KINDLEREPORT.COM domain name to Amazon.com. If so, you will be contacted with further details.

If, however, we do not hear from you regarding the above within ten days from the date of this email, we will have no alternative but to terminate your associates account effective as of the date of this email and you will not receive payment for Q1 2008.

Please know that we value our relationship and we look forward to hearing from you. Please do not hesitate to contact me if you have any questions.

Best regards,

Amazon.com Account Specialist
Associates Program
http://www.amazon.com

I find it interesting that anyone is suggesting that Amazon is being heavy handed here. Did you read the letter they sent? It is as nice as could be, given their rights under the ACPA and UDRP.

I see threat letters every day. I will post the letter next. You tell me. ++>

Jason says: "I have created this site in good faith, promoting the Amazon brand. I have a slew of articles that I just need to finish up and post over the next few days and weeks. I also have a lot of ideas to improve the site."

I don't think promoting someone else's brand, trade mark or service mark is a viable defense to cybersquatting. Otherwise, anyone could register trademark protected domain names and say they are merely acting as cheerleaders to the brand.

Jason will not be improving the site since Amazon will take the domain by force if necessary under the UDRP.

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