national arbitration forum

 

DECISION

 

Alticor Inc. v. xiu yu(13013650000)

Claim Number: FA1002001308122

 

PARTIES

 

Complainant is Alticor Inc. (“Complainant”), represented by Jeffrey A. Nelson, of Warner Norcross & Judd LLP, Michigan, USA.  Respondent is xiu yu (13013650000) (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <amwaynet.com>, registered with Enom, Inc.

 

PANEL

 

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 12, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.

 

On February 16, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <amwaynet.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name.  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 February 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@amwaynet.com.  Also on February 22, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1.  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.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A.  Complainant makes the following assertions:

 

1.      Respondent’s <amwaynet.com> domain name is confusingly similar to Complainant’s AMWAY mark.

 

2.      Respondent does not have any rights or legitimate interests in the <amwaynet.com> domain name.

 

3.      Respondent registered and used the <amwaynet.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant, Alticor, Inc., is the owner of the Amway brand.  Amway is one of the world’s largest direct selling companies, with independent businesses in over 80 countries and sales of over $8.2 billion a year.  Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its AMWAY mark (e.g., Reg. No. 707,658 issued on November 29, 1960), along with its ownership of other trademark registrations around the world.

 

Respondent registered the <amwaynet.com> domain name on October 19, 2004.  Respondent’s disputed domain name resolves to a website containing information about Complainant’s products as well as offering Complainant’s products for sale. 

 

DISCUSSION

 

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.

 

Identical and/or Confusingly Similar

 

Complainant owns over 2,000 trademark registrations around the world and several with the USPTO for its AMWAY mark (e.g., Reg. No. 707,658 issued on November 29, 1960).  The Panel finds that Complainant has established rights in its AMWAY mark through its trademark registrations with the USPTO.  See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).  The Panel further finds that Complainant’s numerous worldwide trademark registrations are sufficient evidence of rights in its mark, regardless of whether there is a trademark registration in the country where Respondent resides.  See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Complainant argues that the <amwaynet.com> domain name is confusingly similar to its AMWAY mark.  Complainant submits that Respondent’s disputed domain name contains its entire mark merely adding the generic term “net” and the generic top level domain (“gTLD”) “.com.”  Complainant further submits that it currently owns ten domain names that combine its AMWAY mark and the generic term “net,” including its official <amwaynet.com.cn> domain name.  The Panel finds that the disputed domain name is confusingly similar to Complainant’s AMWAY mark under Policy ¶ 4(a)(i) where it contains the registered mark in its entirety and adds the generic term “net,” as well as the gTLD “.com.”  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Amereican  Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). 

 

Therefore, the Panel finds that Respondent’s <amwaynet.com> domain name is confusingly similar to Complainant’s AMWAY mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have any rights or legitimate interests in the <amwaynet.com> domain name.  Complainant is required to make a prima facie case in support of these allegations.  Once Complainant has produced a prima facie case the burden shifts to Respondent to show it has rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”).  The Panel finds that Complainant has produced a prima facie case.  Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain name.  See American 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 America Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).  However, the Panel will inspect the record and determine whether Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). 

 

Complainant contends that it has not given Respondent permission to use its AMWAY mark, nor is Respondent commonly known by the disputed domain name.  The WHOIS information identifies Respondent as the registrant of the <amwaynet.com> domain name, and Respondent does not offer evidence to show that it is commonly known by the disputed domain name.  Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <amwaynet.com> 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name). 

 

Complainant contends that Respondent is not using its disputed domain name in connection with a bona fide offering of goods or services nor a noncommercial or fair use.  Respondent’s website displays information on Complainant’s products and offers those products for sale as though it is affiliated with Complainant.  The Panel finds that Respondent’s use of the disputed domain name to attract Internet users to its website where it puts itself out as an authorized seller of Complainant’s products is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a noncommercial or fair use under Policy ¶ 4(c)(iii).  See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”); see also National Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.    


 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s use of the disputed domain name to sell Complainant’s products without authorization is evidence of bad faith registration and use that disrupts its business.  The Panel finds that Respondent’s use of the <amwaynet.com> domain name to sell Complainant’s products, which it is not authorized to do, is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”). 

 

Complainant further argues that Respondent is using the confusing similarity between its <amwaynet.com> domain name and Complainant’s AMWAY mark to attract Internet users to its website for commercial gain.  Complainant contends that this use is further evidence of bad faith.  The Panel finds that Respondent’s use of a confusingly similar domain name to attract Internet users to its website where it sells Complainant’s products without authorization is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant). 

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.   

 

DECISION

 

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <amwaynet.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  April 6, 2010

 

 

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