Alticor Inc. v. Chang Ha Lee
Claim Number: FA1102001373313
Complainant is Alticor Inc. (“Complainant”), represented by R. Scott Keller of Warner Norcross & Judd LLP, Michigan, USA. Respondent is Chang Ha Lee (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amway.biz>, registered with Key-Systems GMBH.
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.
Hon. Sir Ian Barker, QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 16 , 2011; the National Arbitration Forum received payment on February 17, 2011.
On February 17, 2011, Key-Systems GMBH confirmed by e-mail to the National Arbitration Forum that the <amway.biz> domain name is registered with Key-Systems GMBH and that Respondent is the current registrant of the name. Key-Systems GMBH has verified that Respondent is bound by the Key-Systems GMBH 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 February 24, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 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.biz. Also on February 24, 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 March 15, 2011.
On March 18, 2011, pursuant to the Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Sir Ian Barker, as Panelist.
On March 21, 2011, a timely Additional Submission was received from the Complainant.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainant is one of the largest direct-selling companies iln the world. It markets more than 450 personal and home care, nutrition, skin and hair care products, as well as a wide variety of products.
It sells all its products under the AMWAY trademark through more than 3 million independent distributors in some 80 countries. Its global sales for the year ending December 31, 2009 were some $US 8.4 billion. It utilises all kinds of marketing strategies and media coverage.
The Complainant owns 17 trademark registrations and 34 pending applications with the United States Patent & Trademark Office for the mark AMWAY in both plain and stylized versions and combined with logos and other words. The earliest registration was issued in 1990. The Complainant owns 2,000 similar trademark registrations in 150 countries plus over 1,300 generic top level domain names including the word ‘Amway’.
The disputed domain name was registered by the Respondent in March 27, 2000. The Respondent is in no way affiliated with the Complainant or authorised to use the Complainant’s mark in a domain name. The Complainant has no record of the Respondent ever having been one of its authorised independent business owners (“IBO”) authorised to sell its products. The Respondent makes no active use of the disputed domain name which is currently ‘parked’ with an indication on the site that the disputed domain name is for sale.
The Respondent contacted the Complainant through an intermediary about the Complainant acquiring the disputed domain name. The Respondent demanded $US18,000 for it.
The disputed domain name is identical or confusingly similar to the Complainant’s marks. Many Panelists in cases brought under the Policy have upheld the Complainant’s rights in the AMWAY mark.
The Respondent has no rights or legitimate interest which would enable him to reflect the Complainant’s trademark in a domain name. The Complainant gave him none. The disputed domain name diverts customers looking for the Complainant’s products. None of the provisions of Paragraph 4(c) of the Policy applies to the Respondent.
The Respondent registered and is using the disputed domain name in bad faith. The Complainant’s mark is famous globally and has been in use for 50 years. The only reason the Respondent could have for adopting the Complainant’s trademark would be illegitimately to profit from the fame of the Complainant.
The Respondent’s failure to make active use of the disputed domain name demonstrates bad faith registration and use as does his offer to sell the disputed domain name for $18,000.
B. Respondent
When he registered the disputed domain name 11 years ago, the Respondent had joined the Amway network. He has asked the Complainant to confirm his registration then, but was told that no information could be found about him 11 years ago, but that registration had to be renewed annually. He will rejoin soon.
He has not yet created a website for the disputed domain name. To do so “is not easy” but he still has plans to do so. The free hosting site for the disputed domain name has “disappeared”, so he has the disputed domain name currently on a parking site which has a ‘domain for sale’ free web-page. He has recently changed the web-page to show ‘under construction’.
He admits the offer to sell the disputed domain name. He thinks there was a trap. He intends to use the website when developed for his Amway business and he will not deal the domain to anyone else.
C. Complainant’s Additional Submission
The Respondent admits that he is not currently an IBO. If he had been 11 years ago, his membership needed to have been renewed annually and it has not been.
Even if he had been an IBO, he was never authorized to use the Complainant’s trademark without the Complainant’s consent. The standard rules in Korea and elsewhere for IBOs make this clear. The Respondent does not assert any authorization. Nor, under general law, as a distributor, would he have had any right to use the Complainant’s trademark.
The Respondent acknowledges that he offered to sell the disputed domain name for the equivalent in Korean currency of $US18,000. His email indicates that he has done nothing with the disputed domain name for some time. Nothing in the Response refutes the Complainant’s claim.
1. The disputed domain names is confusingly similar to registered trademarks in which the Complainant has rights.
2. The Respondent has no rights or legitimate interests in the disputed domain name.
3. The disputed domain name has been registered and is using the in 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.
The disputed domain name is identical to the numerous trademarks of the Complainant.
The Complainant gave the Respondent no rights to reflect its trademarks in the disputed domain name. The Respondent has not made out any defence under Paragraph 4(c) of the Policy.
Even if he had been an IBO for Amway products in 2000 when the disputed domain name was registered, that status as an IBO gave him no rights to use the Complainant’s trademark in a domain name. Besides, he needed to renew his relationship with the Complainant annually and he admits that he did not do so. One can not imagine that the Complainant would want to have any relationship with him now.
Registration and Use in Bad Faith
Despite the unexplained delay by the Complainant which did not take action until some 11 years after the disputed domain name had been registered, it is easy to infer that this registration had been made in bad faith. On his own admission, the Respondent had been a distributor for the Complainant and would or should have known of the prohibition against such persons using the Complainant’s trademarks and brand without authorization.
Bad faith use is shown in the circumstances of this case by:
(a) The lack of any activity by the Respondent in developing a website for the disputed domain name for 11 years, together with the lack of any evidence of any preparations to develop a website. In other words, such a long-term passive holding of the disputed domain name can only be interpreted as bad faith registration.
(b) The Respondent’s undisputed offer to sell the disputed domain name for an exorbitant sum combined with a long-time advertisement that the disputed domain name was available for sale.
(c) The existence of a ‘click-through’ site. It is no answer to say that this is a requirement of the service provider. The owner of a domain name bears responsibility for the contents of any website accessed by the domain name.
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.biz> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Sir Ian Barker Panelist
Dated: March 29, 2011
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