Alticor Inc. v. peng wu
Claim Number: FA1011001359596
Complainant is Alticor Inc. (“Complainant”), represented by R. Scott Keller of Warner Norcross & Judd LLP, Michigan, USA. Respondent is peng wu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amwayyoung.com>, registered with Xin Net Technology Corporation.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 19, 2010; the National Arbitration Forum received payment on December 27, 2010.
On December 27, 2010, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <amwayyoung.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 30, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2011 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@amwayyoung.com. Also on December 30, 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 January 24, 2011, 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 (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <amwayyoung.com> domain name is confusingly similar to Complainant’s AMWAY mark.
2. Respondent does not have any rights or legitimate interests in the <amwayyoung.com> domain name.
3. Respondent registered and used the <amwayyoung.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Alticor Inc., is a transnational distributor and direct-seller of personal care, nutrition, wellness, home care, living, and commercial products. Complainant is the owner of Amway Corporation, which was founded in 1959 and subsequently changed its corporate name to Alticor Inc. in the year 2000. Complainant owns trademark rights to the AMWAY mark (e.g., Reg. No. 724,606 issued November 28, 1961) with the United States Patent and Trademark Office ("USPTO").
Respondent, peng wu, registered the <amwayyoung.com> domain name on October 14, 2004. Respondent’s disputed domain name resolves to a website that purports to sell Complainant’s goods without authorization from Complainant to conduct such business.
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.
In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), the Panel found that a complainant’s registration of its mark with the USPTO was sufficient to establish rights in the mark and met the requirements of Policy ¶ 4(a)(i). Further, the Panel in KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) held that under Policy ¶ 4(a)(i) it does not matter whether the complainant’s mark is registered in a country other than that of respondent’s place of business for complainant to establish rights under the Policy. Therefore, the Panel finds that Complainant has submitted sufficient evidence to show that it owns rights in the AMWAY mark under Policy ¶ 4(a)(i) through Complainant’s numerous trademark registrations with the USPTO, including (e.g., Reg. No. 724,606 issued November 28, 1961).
Complainant contends that the <amwayyoung.com> domain name registered by Respondent is confusingly similar to Complainant’s AMWAY mark. Complainant alleges that the disputed domain name simply uses Complainant’s entire mark while adding the generic term “young” and the generic top-level domain (“gTLD”) “.com,” which Complainant argues does not distinguish the disputed domain name from the AMWAY mark. The Panel agrees and finds that there are ample UDRP decisions that have found that merely adding a generic term to a mark within a domain name is not sufficient to render the domain name distinct from the mark. 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 Warner Bros. Entertainment, Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). Further, the Panel finds that because a gTLD such as “.com” is a required in a domain name, that element is not relevant to a Policy ¶ 4(a)(i) analysis. 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 Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel finds that the <amwayyoung.com> domain name is confusingly similar to Complainant’s AMWAY mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has established the required elements under Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights and legitimate interests in the <amwayyoung.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 of proof shifts to Respondent to show that it possesses 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 <amwayyoung.com> 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). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant asserts that it has not granted Respondent permission to use its AMWAY mark, and that Respondent is not commonly known as the <amwayyoung.com> domain name. The WHOIS information for the disputed domain name identifies the registrant as “peng wu,” which does not indicate that Respondent is commonly known as the disputed domain name. Respondent has not produced any 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 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 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 of that it is commonly known by the disputed domain name).
Complainant alleges that Respondent is using the disputed domain name to market and sell the health care products of Complainant without authorization from Complainant to engage in such conduct. Complainant alleges that even if Respondent was authorized to sell the products of Complainant, it would not be allowed to do so through a trademark infringing domain name. Further, Complainant alleges that Respondent’s use as outlined above is evidence that Respondent is not using the disputed domain name as a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel finds that Respondent’s use of the disputed domain name to sell Complainant’s products without authorization is not 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 Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)).
The Panel finds that Complainant has established the required elements under Policy ¶ 4(a)(ii).
Complainant argues that Respondent is using the disputed domain name to advertise and sell Complainant’s products without authorization from Complainant. Complainant argues that such use of a confusingly similar domain name diverts Internet users away from Complainant thereby disrupting Complainant’s business. The Panel notes that several prior UDRP decisions have determined that where a respondent is using a confusingly similar domain name to sell a complainant’s products without authorization, that such conduct 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 G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Further, Complainant contends that Respondent registered and is using the disputed domain name in bad faith by intentionally attempting to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion between the infringing domain name and Complainant’s mark. The Panel agrees and finds that Respondent is using the disputed domain name to attract Internet users to its website for commercial gain in bad faith under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
The Panel finds that Complainant has established the required elements under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amwayyoung.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 1, 2011
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