Alticor Inc. v. Eunsook Wi
Claim Number: FA1101001369539
Complainant is Alticor Inc. (“Complainant”), represented by R. Scott Keller of Warner Norcross & Judd LLP, Michigan, USA. Respondent is Eunsook Wi (“Respondent”), represented by MoonHee Joh of NetService Corporation, South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amway.net>, registered with OnlineNIC, Inc.
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.
Prof. Darryl C. Wilson, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 25, 2011; the National Arbitration Forum received payment on January 26, 2011.
On January 26, 2011, OnlineNIC, Inc. confirmed by e-mail to the National Arbitration Forum that the <amway.net> domain name is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, Inc. 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 January 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 15, 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.net. Also on January 26, 2011, 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.
A timely Response was received and determined to be complete on February 14, 2011.
On February 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Prof. Darryl C. Wilson, Esq. as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it owns trademark rights in the well known mark AMWAY based on its use and numerous registrations domestically and throughout the world for more than half a century. The registrations also include a multitude of domain name registrations. Complainant further contends that Respondent’s domain name <amway.net> is unquestionably confusingly similar to its AMWAY mark because it consists of nothing more than Complainant’s mark and the generic top level domain “.net.” Complainant states that it never authorized Respondent to use the AMWAY mark in any domain name or in any other name. Additionally, Complainant states that Respondent is not presently known by, nor has he ever been known by, the name or mark AMWAY. Complainant asserts that Respondent is not using the disputed domain in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair use. Complainant contends that Respondent‘s registration and use constitute bad faith under the UDRP.
B. Respondent
Respondent contends that his response “specifically responds to the statements and allegations contained in the Complaint and includes any and all bases for the Respondent to retain registration and use of the disputed domain name.” Respondent then states; “This is a problem about the “FREEDOM OF EXPRESSION”.” Respondent thereafter proceeds to reference various papers from numerous institutes in support of his contention. Respondent also contends that the disputed domain is not identical or confusingly similar to Complainant’s mark because “the domain consists of ‘AM’, ‘WAY’ and ‘NET’. Even though the Complainant has the trademark for ‘AMWAY’, they have no right to a generic words ‘AM’ and ‘WAY’ which is listed in every dictionary.” The Respondent additionally asserts that he is interested in the lifestyle of Asians and that Respondent acquired <amway.net> based on plans to establish a website under the acronym ‘[A]sian [M]en, [W]ho [A]re [Y]ou?’ to be a space for sharing Asian men’s lifestyle and culture. The Respondent states that he is “preparing to establish a corporation, which provides useful information to those who are searching for information”, that the domain name has not been offered for sale, and that any redirection of Complainant’s customers was “mere coincidence”, thus for the above reasons Respondent cannot be said to have registered or used the domain name in bad faith.
Complainant ALTICOR, INC. is the parent company of a subsidiary known as Amway Corporation (Amway). Amway was founded in 1959 and registered its first United States trademark in 1960 (Reg. No. 707,656 issued November 29, 1960). Complainant is the owner of 17 active trademark registrations and 34 pending applications with the United States Patent and Trademark Office (USPTO) including and related to the mark AMWAY. Complainant is also the owner of nearly 2,000 trademark registrations in more than 150 countries for marks containing the term AMWAY. Further, Complainant owns over 1,300 generic top level domains (gTLD’s) featuring the AMWAY mark.
The Whois database identifies the owner of the disputed domain name as Eunsook Wi of Seoul, South Korea. Respondent is not selling any AMWAY products on his site but has diverted those looking for such products to other unrelated sites. Respondent has stated that financial difficulties involving the global economic crisis have prevented him from establishing the website he intended and that if any redirection has taken place such actions are not, standing alone, indicative of bad faith.
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."
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 submitted substantial evidence reflecting its voluminous domestic and international registrations for the AMWAY mark. The Panel finds that such registrations establish Complainant’s rights pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also 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.”).
Complainant contends that the <amway.net> domain name is identical to its AMWAY mark under the Policy. The disputed domain name contains Complainant’s entire mark while merely adding the generic top-level domain (“gTLD”) “.net.” Since the addition of a gTLD is insufficient to distinguish a domain name from a registered mark the Panel finds that Respondent’s disputed domain name is identical to Complainant’s AMWAY mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”).
While Respondent contends that the <amway.net> domain name is comprised of common and generic terms and as such cannot be found to be identical to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Complainant has established this element.
Complainant has established a prima facie case thus it is the Respondent’s burden to establish that it has rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent has not indicated that he is commonly known by the disputed domain name or any derivative of the AMWAY mark. Respondent does not dispute that Complainant has never licensed Respondent to sell or market any products under the AMWAY mark. Complainant notes that the WHOIS information for the <amway.net> domain name identifies “Eunsook Wi” as the registrant of the domain name, which the Panel finds is not similar to the AMWAY mark. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also 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).
Respondent admits that he previously used the disputed domain name to market products that were unrelated to Complainant’s business. Further, Respondent also previously used the disputed domain name to display third-party links to companies unrelated to Complainant. As Complainant did not authorize these uses they cannot support an assertion by the Respondent that they reflect rights or legitimate interests in the disputed domain name.
The Panel finds that Respondent’s previous use of the disputed domain name to market and sell products unrelated to Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant and Respondent agree that there is not currently any active use of the disputed domain name despite Respondent’s declared intent to establish a new website. Respondent has provided no evidence of any preparations to bring a new website to fruition but merely states that there are plans to begin a corporation, use the site for the providing search information, or establish a website directed at Asian men. Complainant argues that Respondent’s failure to make an active use of the domain name is further evidence that Respondent lacks rights and legitimate interests in the domain name. The Panel finds that Respondent’s current failure to make an active use of the disputed domain name or provide any proof of active preparations to do, despite Respondent’s blame on economic woes, does not constitute 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Complainant has established this element.
Complainant states that Respondent’s registration of the disputed domain name to divert persons looking for Complainant on the internet constitutes bad faith under the policy. Complainant’s mark is at least well known if not famous and due to the extent of its real space and internet registrations Respondent knew or should have known of Complainant’s interests in the AMWAY mark. Complainant’s mark is a distinctive term with no meaning other than as Complainant’s trademark thus Respondent’s adoption of the domain name <amway.net> appears to violate this section of the Policy. See Pancil LLC v. Domain Deluxe, D2003-1035 (WIPO March 5, 2004) (Since Starfall has no meaning whatsoever the Panel finds it inconceivable that Respondent chose the contested domain name without knowledge of Complainant’s activities and the name and trademark under which the Complainant is doing business).
The Panel finds that Respondent’s unauthorized use of a domain name incorporating Complainant’s AMWAY mark resulted in Respondent’s commercial benefit by attracting users to his site (when it was operational) in a manner that created a likelihood of confusion amongst consumers seeking Complainant’s goods or services. The Panel finds that such conduct is evidence that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
The Panel also finds that Respondent’s decision to cease active (mis)use of the disputed domain name for an unspecified period of time without evidence of progress toward a bona fide use additionally supports a finding of registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
As is often the case in these matters it is necessary to understand that while individuals have the freedom of expression that freedom is not unbridled, especially when the figurative speech is protected or owned by another. Respondent is free to discuss the term amway or any parts thereof or even discuss the Complainant’s AMWAY mark and the many goods and services to which it attaches at his leisure. In fact, Respondent’s expression may take many forms but Respondent is not free to appropriate Complainant’s or others protected trademarks without authorization for his own personal or commercial exploitation. Trademark law and its related concerns are not about preventing freedom of expression but instead assist in regulating expression for the purpose of assuring a certain level of fairness amongst competitors and some degree of certainty amongst consumers.
Complainant has established this element.
Complainant has established all three elements required under the ICANN Policy, therefore the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <amway.net> domain name be TRANSFERRED from Respondent to Complainant.
Prof. Darryl C. Wilson, Esq., Panelist
Dated: March 8, 2011
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