national arbitration forum

 

DECISION

 

Alticor Inc. v. shi ling

Claim Number: FA1011001359600

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <amway-shanghai.com>, registered with BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS.COM.CN.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically November 19, 2010; the National Arbitration Forum received payment December 23, 2010.  The Complaint was submitted in both Chinese and English.

 

On December 29, 2010, BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS.COM.CN confirmed by e-mail to the National Arbitration Forum that the <amway-shanghai.com> domain name is registered with BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS.COM.CN and that Respondent is the current registrant of the name.  BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS.COM.CN verified that Respondent is bound by the BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS.COM.CN registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On January 5, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of January 25, 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@amway-shanghai.com.  Also on January 5, 2011, the Chinese language 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 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit 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.

 

Pursuant to Rule 11(a) the Panel finds that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

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 <amway-shanghai.com> domain name is confusingly similar to Complainant’s AMWAY mark.

 

2.      Respondent has no rights to or legitimate interests in the <amway-shanghai.com> domain name.

 

3.      Respondent registered and used the <amway-shanghai.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Alticor Inc., distributes AMWAY products, including nutrition and wellness, home care, home living, and commercial products.  Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AMWAY mark (e.g., Reg. No. 1,509,790 issued October 25, 1988).

 

Respondent, shi ling, registered the <amway-shanghai.com> domain name March 1, 2005.  The disputed domain name resolves to a website that purports to offer 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."

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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 to and/or Confusingly Similar

 

Complainant asserts rights in the AMWAY mark through its registrations of the mark with the USPTO (e.g., Reg. No. 1,509,790 issued October 25, 1988).  The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the AMWAY mark pursuant to Policy ¶ 4(a)(i).  See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).  The Panel further finds that it is irrelevant whether Complainant holds a trademark registration with the trademark authority in the country in which Respondent resides.  See 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 contends that Respondent’s <amway-shanghai.com> domain name is confusingly similar to its AMWAY mark.  Respondent replicates Complainant’s mark in the disputed domain name.  Respondent also attaches a hyphen and the geographically descriptive term “Shanghai” to Complainant’s mark.  Finally, Respondent affixes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name.  The Panel finds that these additions do not sufficiently distinguish Respondent’s domain name from Complainant’s mark.  See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). 

 

Therefore, the Panel finds that Respondent’s <amway-shanghai.com> domain name is confusingly similar to Complainant’s AMWAY mark pursuant to Policy ¶ 4(a)(i); Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant must first make a prima facie case showing that Respondent lacks rights and legitimate interests in the <amway-shanghai.com> domain name under Policy ¶ 4(a)(ii).  The burden of proof then shifts to Respondent to prove that it does have such rights or legitimate interests in the disputed domain name.  The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests.  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 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.”)

 

Despite Respondent’s failure to respond, this Panel still evaluates the record to determine whether evidence there suggests that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

Complainant asserts that it is not affiliated with Respondent and that it has not given Respondent permission to use its AMWAY mark in a domain name.  Furthermore, the WHOIS information lists “shi ling” as the registrant of the disputed domain name, which the Panel finds is not similar to the <amway-shanghai.com> domain name.  Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant also contends that the <amway-shanghai.com> domain name resolves to a website that purports to offer Complainant’s products for sale.  The Panel presumes that Respondent profits from such use of the disputed domain name.  Based on the evidence in the record, the Panel finds that Respondent uses a confusingly similar domain name to sell Complainant’s goods.  Therefore, the Panel holds that Respondent does not use the disputed domain name to make a bona fide offering of goods or services under Policy ¶ 4(a)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant); see also Nat’l 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 Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant lastly urges that Respondent registered and used the disputed domain name in bad faith. The Panel finds that Respondent uses the disputed domain name to redirect Internet users seeking Complainant’s products to Respondent’s competing website.  Accordingly, the Panel finds that Respondent’s <amway-shanghai.com> domain name disrupts Complainant’s business, which supports findings of bad faith registration and use under Policy ¶ 4(c)(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).”).

 

As previously discussed, the Panel presumes that Respondent profits from its use of the disputed domain name.  Moreover, the Panel finds that Respondent’s <amway-shanghai.com> domain name is confusingly similar to Complainant’s AMWAY mark.  Therefore, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, endorsement, or affiliation of Respondent’s website or products on Respondent’s site.  Consequently, the Panel holds that this behavior provides additional evidence of registration and use in bad faith under Policy ¶ 4(b)(iv).  See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); 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 Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

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 <amway-shanghai.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Hon. Carolyn Marks Johnson, Panelist

Dated: February 10, 2011.

 

 

 

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