national arbitration forum

 

DECISION

 

Alticor Inc. v. wangxiaodong

Claim Number: FA1012001365317

 

PARTIES

Complainant is Alticor Inc. (“Complainant”), represented by R. Scott Keller of Warner Norcross & Judd LLP, Michigan, USA.  Respondent is wangxiaodong (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <amwaywang.com>, registered with XIAMEN CHINASOURCE INTERNET SERVICE CO., LTD.

 

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 December 28, 2010; the National Arbitration Forum received payment December 29, 2010.  The Complaint was submitted in both Chinese and English.

 

On January 5, 2011, XIAMEN CHINASOURCE INTERNET SERVICE CO., LTD. confirmed by e-mail to the National Arbitration Forum that the <amwaywang.com> domain name is registered with XIAMEN CHINASOURCE INTERNET SERVICE CO., LTD. and that Respondent is the current registrant of the names.  XIAMEN CHINASOURCE INTERNET SERVICE CO., LTD. verified that Respondent is bound by the XIAMEN CHINASOURCE INTERNET SERVICE CO., LTD. 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 14, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of February 3, 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@amwaywang.com.  Also on January 14, 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 February 8, 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.

 

The Panel notes that Respondent sent correspondence, presumably in Chinese, to the Forum on January 14, 2011; but such correspondence was not submitted in duplicate in English.  The Panel has thus given no consideration of such other correspondence.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 determines 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.    The domain name that Respondent registered, <amwaywang.com>, is confusingly similar to Complainant’s AMWAY mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Alticor Inc., is a direct selling company with more than 3 million independent business owners.  Complainant markets more than 450 personal care, nutrition and wellness, home care, home living, and commercial products under its AMWAY mark which is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 716,672 issued June 13, 1961). 

 

Respondent, wangxiaodong, registered the disputed domain name February 24, 2010.  The disputed domain name resolves to a website that offers information about Complainant’s products and offers 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 its AMWAY mark by virtue of its registration of the mark with the USPTO (e.g., Reg. No. 716,672 issued June 13, 1961).  Previous panels have determined that a trademark registration with the USPTO is sufficient to establish a complainant’s rights in a mark, even where the respondent resides or operates in a country other than where the mark is registered.  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.”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).  Therefore, given the fact that Complainant has registered its AMWAY mark with the USPTO, the Panel finds that Complainant has successfully established its rights in the mark for the purposes of Policy ¶ 4(a)(i). 

 

Complainant asserts that Respondent’s <amwaywang.com> domain name is confusingly similar to Complainant’s own AMWAY mark.  The disputed domain name incorporates Complainant’s entire mark and adds both the generic term “wang” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that these two additions are insufficient to distinguish the disputed domain name from Complainant’s 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 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, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <amwaywang.com> domain name is confusingly similar to Complainant’s own AMWAY mark.

 

The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Policy ¶ 4(a)(ii) requires that Complainant first make a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests before the burden of proof shifts to Respondent.  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.”).  Based on the arguments contained in the Complaint, the Panel finds that Complainant has satisfied its initial Policy ¶ 4(a)(ii) burden by establishing a sufficient prima facie case.  Respondent did not submit any response to these proceedings and the Panel may view Respondent’s default as evidence that Respondent does in fact lack any right or legitimate interest in the disputed domain name.  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.”).  Nevertheless, this Panel still examines the record in light of the factors contained in Policy ¶ 4(c) to determine whether the evidence suggests that Respondent has any rights or legitimate interests in the disputed domain name. 

 

Complainant alleges that Respondent is not now, and has never been, commonly known by the disputed domain name.  Complainant further alleges that it never authorized Respondent to use the AMWAY mark in any domain name and that Respondent is not a subsidiary or affiliate of Complainant, nor is it one of Complainant’s authorized independent business owners (“IBOs”).  Complainant states that even if Respondent were an authorized IBO, it would be specifically precluded from using Complainant’s AMWAY mark, unless Complainant granted prior written consent, which Complainant asserts it has not given here.  The WHOIS information for the disputed domain name identifies the registrant of the domain name as “wangxiaodong.”  The Panel finds that the WHOIS information, along with Complainant’s assertions, provide sufficient evidence to support a finding that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); 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 asserts that Respondent is using the disputed domain name to provide information on Complainant’s products and to offer Complainant’s products for sale, without Complainant’s authorization.  The Panel finds that Respondent’s use of the disputed domain name for such a purpose is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See 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); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, 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 alleges as well that Respondent registered and used the disputed domain name in bad faith.  Based on the evidence, the Panel finds that Respondent’s registration and use of the disputed domain name to offer information on Complainant’s products and to sell Complainant’s AMWAY products without Complainant’s authorization clearly constitutes a disruption of Complainant’s business.  Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to 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).”).

 

Further, in such circumstances, the Panel is permitted to presume that Respondent profits in some way from the unauthorized sale of Complainant’s AMWAY products.  Thus, the Panel finds that Respondent registered and is using the disputed domain name to intentionally attract Internet users to its domain name, for commercial gain, by creating a likelihood of confusion as to Complainant’s sponsorship or affiliation with the disputed domain name.  Therefore, the Panel finds that Respondent has demonstrated bad faith under Policy ¶ 4(b)(iv).  See 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); see also AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.”). 

 

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 <amwaywang.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Hon. Carolyn Marks Johnson, Panelist

Dated: February 22, 2011.

 

 

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