Alticor Inc. v. Zygimantas Povilaitis
Claim Number: FA1102001375213
Complainant is Alticor Inc. (“Complainant”), represented by R. Scott Keller of Warner Norcross & Judd LLP, Michigan, USA. Respondent is Zygimantas Povilaitis (“Respondent”), Lithuania.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <amway-lietuvoje.com> and <amwaylietuva.com>, registered with TUCOWS, INC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 28, 2011; the National Arbitration Forum received payment on March 1, 2011.
On March 1, 2011, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <amway-lietuvoje.com> and <amwaylietuva.com> domain names are registered with TUCOWS, INC. and that Respondent is the current registrant of the names. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 March 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 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-lietuvoje.com and postmaster@ amwaylietuva.com. Also on March 1, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 28, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <amway-lietuvoje.com> and <amwaylietuva.com> domain names are confusingly similar to Complainant’s AMWAY mark.
2. Respondent does not have any rights or legitimate interests in the <amway-lietuvoje.com> and <amwaylietuva.com> domain names.
3. Respondent registered and used the <amway-lietuvoje.com> and <amwaylietuva.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Alticor Inc., offers a wide range of personal care, nutrition and wellness, home care, and other commercial products. Complainant conducts its business under the AMWAY mark which is registered with the United States Patent and Trademark Office (“USPTO”) (e.g, Reg. No. 707,656 issued November 29, 1960).
Respondent, Zygimantas Povilaitis, registered the <amway-lietuvoje.com> and <amwaylietuva.com> domain names on August 14, 2009. The <amway-lietuvoje.com> domain name resolves to a website offering many of Complainant’s products for sale. The <amwaylietuva.com> domain name resolves to a website that solicits individuals to become authorized sellers of Complainant’s products.
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.
Complainant asserts rights in the AMWAY mark based on its USPTO registration of the mark (e.g, Reg. No. 707,656 issued November 29, 1960). The Panel finds that Complainant has established rights in the mark because federal trademark registration sufficiently establishes rights in the mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant contends that Respondent’s <amway-lietuvoje.com> and <amwaylietuva.com> domain names are confusingly similar to the AMWAY mark. The Panel finds that the domain names contain a combination of the AMWAY mark with geographic designation of the Lithuanian spelling of “Lithuania” in each name. “The mere addition of . . . a geographic term to a mark does not negate the confusing similarity of the domain name.” Harbor Country Chamber of Commerce v. Laporte County Convention and Visitor’s Bureau c/o Linda Bell, FA 295289 (Nat. Arb. Forum August 18, 2004) (<harborcountry-in.org>); see also, Alticor Inc. v. Kemal Eksioglu aka Kemal Eksioglu stdfrr b2k56y, FA 1269568 (Nat. Arb. Forum August 5, 2009) (<amwayturkiye.net>).
The Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s AMWAY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been established.
When Complainant makes a prima facie showing in support of its allegation that Respondent lacks rights or legitimate interests in the disputed domain names, Respondent then acquires the burden of showing rights in the domain names under Policy ¶ 4(a)(ii). The Panel finds that Complainant made its required showing and because Respondent failed to respond to these proceedings, the Panel infers that Respondent does not have rights or legitimate interests in the <amway-lietuvoje.com> and <amwaylietuva.com> domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c). 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 Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise).
Complainant alleges that Respondent is not commonly known by either of the disputed domain names and that Respondent has never received authorization to use the AMWAY mark. The Panel searched the record and can find no information that would provide a solid foundation for determining that Respondent is commonly known by the disputed domain names. Furthermore, the WHOIS information lists the registrant of the domain names as “Zygimantas Povilaitis” which Complainant alleges is not similar to the disputed domain names. The Panel determines, pursuant to Policy ¶ 4(c)(ii), that Respondent is not commonly known by the disputed domain names. 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 Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent was not commonly known by the disputed domain names where it maintained the domain name registrations on the complainant’s behalf and then appropriated the disputed domain names for itself, without permission from the complainant).
Complainant alleges that the <amway-lietuvoje.com> domain name resolves to a website offering many of Complainant’s products for sale. The Panel finds that registering a domain name, using Complainant’s registered mark, in order to sell Complainant’s products is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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).”); see also 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).
Complainant alleges that the <amwaylietuva.com> domain name resolves to a website that solicits individuals to become authorized sellers of Complainant’s products. The Panel finds that using a confusingly similar domain name to solicit unsuspecting Internet users to sell Complainant’s products, which the Panel assumes Complainant also solicits Internet users to do, is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel finds Policy ¶ 4(a)(ii) has been established.
Complainant contends that the <amway-lietuvoje.com> domain name is being used to resolve to a website offering many of Complainant’s products for sale. Internet users that are intending to find and purchase Complainant’s products may be misled by Respondent’s domain name and end up purchasing products from an unauthorized seller. The Panel finds Respondent’s use of the disputed domain name disrupts Complainant’s business which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See 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).”); see also 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).
Complainant also contends, under Policy ¶ 4(b)(iii), that Respondent is using the <amwaylietuva.com> domain name and resolving website to solicit Internet users to sell Complainant’s products. The Panel presumes that Complainant offers these services as well and finds that Respondent’s competing use of the disputed domain name disrupts Complainant’s business which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant argues that the <amway-lietuvoje.com> domain name is being used by Respondent for financial benefit. The website resolving from the disputed domain name is used to sell Complainant’s products. Internet users are likely to become confused as to Complainant’s sponsorship of, or affiliation with, the website selling their products and may end up purchasing products from Respondent. The Panel presumes that Respondent receives the benefit from these sales and therefore concludes that Respondent has engaged in bad faith registration and use pursuant to 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 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).
Complainant alleges that Respondent is using the <amwaylietuva.com> domain name and resolving website to recruit Internet users to become sellers of Complainant’s products. Internet users are likely to become confused as to Complainant’s sponsorship of, and affiliation with the disputed domain name and solicitations for salespersons posted on the resolving website. The Panel presumes that Respondent receives the financial benefit from this confusion and finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also Tower Labs. Ltd. v. Seltzer, FA 791325 (Nat. Arb. Forum Oct. 16, 2006) (concluding that the respondent registered and was using the <bromoseltzer.com> domain name in bad faith because it displayed a logo similar to the complainant’s BROMO SELTZER mark, which was likely to confuse the public as to the source of the material exhibited at the respondent’s website).
The Panel finds Policy ¶ 4(a)(iii) has been established.
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-lietuvoje.com> and <amwaylietuva.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 2, 2011
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