Alticor Inc. v. Domain Enterprises
Claim Number: FA0804001177139
Complainant is Alticor Inc. (“Complainant”), represented by Jeffrey
A. Nelson, of Warner Norcross & Judd LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <amway-europa.com>, registered with Dynadot, LLC.
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.
James A, Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 8, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 9, 2008.
On April 9, 2008, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <amway-europa.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 April
11, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 1, 2008
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 postmaster@amway-europa.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 7, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <amway-europa.com> domain name is confusingly similar to Complainant’s AMWAY mark.
2. Respondent does not have any rights or legitimate interests in the <amway-europa.com> domain name.
3. Respondent registered and used the <amway-europa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant sells personal care, nutrition and wellness, home car, home living, and commercial products through its network of over three million independent business owners. Complainant has marketed its products under the AMWAY mark for over forty years, and registered the mark with the United States Patent and Trademark Office (“USPTO”) on November 29, 1960 (Reg. No. 707,656). Complainant has also registered the AMWAY mark internationally with many other governmental trademark authorities.
Respondent registered the <amway-europa.com> domain name on February 24, 2006. Respondent has been using the disputed domain name to redirect Internet users to a website where links to unrelated websites are listed.
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 registered the mark with the USPTO, and therefore established rights to the mark under Policy ¶ 4(a)(i). See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”); 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.").
The <amway-europa.com> domain name is confusingly similar to Complainant’s AMWAY mark because it merely adds the geographic term “europa” to the mark. In Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000), the panel found that the respondent’s domain name <net2phone-europe.com> was confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark [did] not prevent a domain name from being found confusingly similar.” Here, the Panel concludes that the addition of a geographic term does not sufficiently distinguish the disputed domain name from Complainant’s mark for the purposes of confusing similarity, and the addition of a hyphen also does not distinguish the disputed domain name. Moreover, because all registered domain names are required to have a top-level domain, the generic top-level domain (“gTLD”) “.com” is not relevant for distinguishing the disputed domain name from the mark for the purposes of confusing similarity. Therefore, the Panel finds that the <amway-europa.com> domain name is confusingly similar to Complainant’s AMWAY mark under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has the initial burden of showing that Respondent lacks all rights and legitimate interests in the <amway-europa.com> domain name. Complainant has asserted that Respondent lacks all rights and legitimate interests. The panel in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) held that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue.” The Panel concludes that Complainant has made a prima facie case under Policy ¶ 4(a)(ii), thereby shifting the burden to Respondent to demonstrate rights and legitimate interests in the disputed domain name. 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.”).
By failing to respond to the Complaint, Respondent has not presented any evidence supporting its rights and legitimate interests in the <amway-europa.com> domain name. As a result, the Panel may presume that Respondent has no rights or legitimate interests. Nevertheless, the Panel will consider all evidence in the record under Policy ¶ 4(c). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant maintains that it has never authorized Respondent to use the AMWAY mark, and that nothing in Respondent’s WHOIS information indicates that Respondent has ever been commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the <amway-europa.com> domain name pursuant to 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 G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Complainant asserts that Respondent is redirecting Internet users looking for Complainant’s products to unrelated websites. Previous panels have found that redirecting Internet users to unrelated websites demonstrates a complainant’s lack of rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Therefore, the Panel concludes that Respondent’s use of the <amway-europa.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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 also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Complainant contends that Respondent is benefiting from the
goodwill associated with Complainant’s AMWAY mark by attracting Internet users
to its unrelated website for commercial gain.
The disputed domain name is capable of creating confusion as to
Complainant’s source or sponsorship of the website that resolves from the <amway-europa.com> domain name. The Panel finds that Respondent’s use of the
disputed domain name evidences registration and use in bad faith under Policy ¶
4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns
Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where
the respondent registered and used a domain name confusingly similar to the
complainant’s mark to attract users to a website sponsored by the respondent); see also Bank
of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3,
2003) (stating that “[s]ince the disputed domain names contain entire versions
of Complainant’s marks and are used for something completely unrelated to their
descriptive quality, a consumer searching for Complainant would become confused
as to Complainant’s affiliation with the resulting search engine website” in
holding that the domain names were registered and used 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 <amway-europa.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: May 21, 2008
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