Alticor Inc. v. Amway Vietnam Site At Amway-vn.com c/o Helping People Live Better Lives - Amway Vietnam Site
Claim Number: FA0707001040099
Complainant is Alticor Inc. (“Complainant”), represented by Sherry
Gunderson-Schipper, of Alticor Inc., Legal Division 78-2G,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <amwayvn.com> and <amway-vn.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 18, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 19, 2007.
On July 18, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <amwayvn.com> and <amway-vn.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 25, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 14, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com and firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 21, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <amwayvn.com> and <amway-vn.com> domain names are confusingly similar to Complainant’s AMWAY mark.
2. Respondent does not have any rights or legitimate interests in the <amwayvn.com> and <amway-vn.com> domain names.
3. Respondent registered and used the <amwayvn.com> and <amway-vn.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Alticor Inc., is one of the world’s largest
direct selling companies. Complainant
has marketed products under its AMWAY mark for over 40 years in more than 50
countries worldwide. Complainant holds
several trademark registrations for variations of its AMWAY mark with the
United States Patent and Trademark Office (“USPTO”) (Reg. No. 707,656 issued
November 29, 1960). Complainant also
operates several websites under its AMWAY mark, including eighteen containing
the term “
Respondent registered the <amwayvn.com> domain name on December 9, 2006, and the <amway-vn.com> domain name on March 26, 2006. Respondent’s disputed domain names resolve to identical websites that resemble Complainant’s websites. Respondent’s disputed domain names also display Complainant’s marks as well as products which are marketed under the AMWAY mark.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant’s registration with the USPTO sufficiently establishes its rights in the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <amwayvn.com> domain name is confusingly similar to Complainant’s AMWAY mark, as it simply adds the geographic abbreviation “vn” onto the mark. Respondent’s <amway-vn.com> domain name is confusingly similar to Complainant’s AMWAY mark, as it simply adds the geographic abbreviation “vn” onto the mark, and inserts a hyphen between the terms. Moreover, the addition of the generic top-level domain “.com” to the mark does nothing to distinguish the disputed domain names, as all domain names require the use of a top-level domain. See MFI UK Ltd. v. Jones, D2003-0102 (WIPO May 8, 2003) (finding the <mfiuk.com> domain name confusingly similar to the complainant’s MFI mark because the addition of the letters “UK” were merely a common designation for the United Kingdom); see also Nintendo of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar the complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen); see also Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"). Thus, the Panel finds that the <amwayvn.com> and <amway-vn.com> domain names are confusingly similar to Complainant’s AMWAY mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant has the initial burden of proving that Respondent lacks rights or legitimate interests in the <amwayvn.com> and <amway-vn.com> domain names. Once Complainant establishes a prima facie case, the burden then shifts to Respondent, who must then prove it has rights or legitimate interests in the disputed domain names. In the instant case, the Panel finds that Complainant has established a prima facie case pursuant to the Policy. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Based on Respondent’s failure to respond, it can be presumed that Respondent lacks all rights and legitimate interests in the <amwayvn.com> and <amway-vn.com> domain names. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). With this in mind, the Panel will examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent’s WHOIS information does not indicate, and nothing in the record suggests, that Respondent is commonly known by the <amwayvn.com> and <amway-vn.com> domain names. Furthermore, Complainant asserts Respondent is neither licensed nor authorized to use Complainant’s AMWAY mark in any way. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Respondent’s <amwayvn.com> and <amway-vn.com> domain names resolve to identical websites that look very similar to Complainant’s website. Furthermore, Respondent’s websites feature Complainant’s logo along with a listing of the products which Complainant manufactures and distributes. The Panel presumes that Respondent is benefiting commercially from this website. Such use does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
Accordingly, Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <amwayvn.com>
domain names to attract Internet users to its website, presumably for
commercial gain. Respondent is therefore
capitalizing on the likelihood that users will confuse the disputed domain name
as being affiliated with Complainant and its AMWAY mark. This indicates that Respondent registered and
is using the <amwayvn.com> and <amway-vn.com>
domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See
State Fair of
Complainant has submitted evidence that indicates that Respondent knew of Complainant’s mark, and has in fact posted Complainant’s mark on the websites that resolve from the <amwayvn.com> and <amway-vn.com> domain names. This is evidence of Respondent’s actual knowledge of Complainant’s rights in the AMWAY mark, and shows that Respondent registered and is using the <amwayvn.com> and <amway-vn.com> domain names in bad faith, pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). Accordingly, the Panel finds that Respondent’s registration of the disputed domain names was done in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amwayvn.com> and <amway-vn.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 4, 2007
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