Alticor Inc. v. Zhang Jian Ke / Jian Ke Zhang
Claim Number: FA1102001375216
Complainant is Alticor Inc. (“Complainant”), represented by R. Scott Keller of Warner Norcross & Judd LLP, Michigan, USA. Respondent is ZHANG JIAN KE / JIAN KE ZHANG (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <521amway.com>, registered with Jiangsu Bangning Science & Technology Co. Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard 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. The Complaint was submitted in both Chinese and English.
On March 1, 2011, Jiangsu Bangning Science & Technology Co. Ltd confirmed by e-mail to the National Arbitration Forum that the <521amway.com> domain name is registered with Jiangsu Bangning Science & Technology Co. Ltd and that Respondent is the current registrant of the name. Jiangsu Bangning Science & Technology Co. Ltd has verified that Respondent is bound by the Jiangsu Bangning Science & Technology Co. Ltd 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 7, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 28, 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@521amway.com. Also on March 7, 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 March 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a direct selling company that has marketed AMWAY brand products, including personal care and nutrition products, air and water treatment systems, and car care goods worldwide for 50 years.
Complainant uses a network of independent business owners to distribute its AMWAY products.
Complainant owns trademark registrations for the AMWAY mark with the United States Patent and Trademark Office (“USPTO”), including Reg. No. 1,509,790, issued October 25, 1988.
Respondent registered the <521amway.com> domain name on April 27, 2010.
The disputed domain name resolves to a website offering Complainant’s products for sale.
Respondent’s <521amway.com> domain name is confusingly similar to Complainant’s AMWAY mark.
Respondent is not, and never has been, commonly known by the contested <521amway.com> domain name.
Respondent is not authorized to use Complainant’s AMWAY mark.
Respondent does not have any rights to or legitimate interests in the domain name <521amway.com>.
Respondent registered and uses the disputed <521amway.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the multiple for the AMWAY mark trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registrations of the mark with the United States Patent and Trademark Office (“USPTO”). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that a complainant’s registration of the DISNEY trademark with the USPTO prior to a respondent’s registration of a disputed domain name is sufficient to prove that that complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)). This is so even where a complainant’s rights in its mark are acquired by means of registration of the mark in a jurisdiction which is not the country of residence of a respondent. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction).
Respondent’s <521amway.com> domain name is confusingly similar to Complainant’s AMWAY mark because the disputed domain name merely combines Complainant’s mark with the number “521” and the generic top-level domain (“gTLD”) “.com.” This alteration of the mark in forming the contested domain name is insufficient to distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Oxford Univ., FA 104132 (Nat. Arb. Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to a complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)); see also Bloomberg L.P. v. Calum Maclean, FA 96344 (Nat. Arb. Forum Feb. 5, 2001):
The domain names in dispute are confusingly similar to the Complainant’s mark … because they combine the Complainant’s mark with the numbers, which are non-descriptive and add little to the domain names as a whole.
Similarly, the addition of the gTLD to Complainant’s mark in forming the disputed domain name is inconsequential under a Policy ¶ 4(a)(i) analysis. See, for example, Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.
The Panel thus concludes that Respondent’s <521amway.com> domain name is confusingly similar to Complainant’s AMWAY trademark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii), once Complainant establishes a prima facie case in support of its allegations on this point, the burden shifts to Respondent to prove that it has rights to or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
To the same effect, see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007).
Complainant has made out a prima facie case under this head of the Policy. Because Respondent has failed to submit a Response to the allegations of the Complaint filed in this proceeding, we are entitled to conclude that Respondent has no rights to or legitimate interests in the disputed domain name. See 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.
We will nonetheless examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is not, and never has been, commonly known by the <521amway.com> domain name, and that Respondent is not authorized to use Complainant’s AMWAY mark. Moreover, the WHOIS information for the disputed domain name lists the registrant only as “Zhang Jian Ke / Jian Ke Zhang,” which does not resemble the disputed domain name. On this record, we must conclude that Respondent is not commonly known by the <521amway.com> domain name and consequently lacks either rights to or legitimate interests in 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, based on the WHOIS information and other evidence in the record, that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii)); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent did not have rights in a domain name when that respondent was not commonly known by the domain within the meaning of Policy ¶ 4(c)(ii)).
We next observe that Complainant alleges, without objection from Respondent, that Respondent uses the <521amway.com> domain name to host a commercial website that offers Complainant’s products for sale. This unauthorized use of the disputed domain name 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 Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that using contested domain names to sell a complainant’s goods without that complainant’s authority is not bona fide use); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000):
The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
The website resolving from the <521amway.com> domain name offers Complainant’s products for sale, despite Respondent’s lack of authorization to sell those products. Respondent’s use of the contested domain name disrupts Complainant’s business and serves as evidence of Respondent’s bad faith registration and use of the domain under 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 Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that a respondent registered and used the <sportlivescore.com> domain name to disrupt a complainant’s business conducted under the LIVESCORE trademark where that respondent maintained a website operating in competition with that complainant’s business).
In addition, Respondent is using the <521amway.com> domain name misleadingly to portray itself as authorized to sell Complainant’s products. The inclusion of Complainant’s AMWAY trademark in the disputed domain name, and the marketing of products at the resolving website, are intended to attract Internet users by misleading them as to the possibility of an affiliation between Complainant and Respondent, thus to profit from those consumers’ purchases. Respondent’s efforts to gain commercially by this means evidences bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that a respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where that respondent was not authorized to sell a complainant’s goods); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that a respondent came within the parameters of Policy ¶ 4(b)(iv) by displaying a complainant’s mark on its website and offering services identical to those marketed by that complainant).
For these reasons, the Panel finds Policy ¶ 4(b)(iv) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, GRANTED.
Accordingly, it is Ordered that the <521amway.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 12, 2011
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