Alticor Inc. v. Tatyana Sorokina
Claim Number: FA1107001397604
Complainant is Alticor Inc. (“Complainant”), represented by R. Scott Keller of Warner Norcross & Judd LLP, Michigan, USA. Respondent is Tatyana Sorokina (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <krasamway.biz>, registered with IP MIRROR PTE LTD.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 7, 2011; the National Arbitration Forum received payment on July 8, 2011.
On July 7, 2011, IP MIRROR PTE LTD confirmed by e-mail to the National Arbitration Forum that the <krasamway.biz> domain name is registered with IP MIRROR PTE LTD and that Respondent is the current registrant of the name. IP MIRROR PTE LTD has verified that Respondent is bound by the IP MIRROR PTE 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 July 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 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@krasamway.biz. Also on July 11, 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 August 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <krasamway.biz> domain name is confusingly similar to Complainant’s AMWAY mark.
2. Respondent does not have any rights or legitimate interests in the <krasamway.biz> domain name.
3. Respondent registered and used the <krasamway.biz> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Alticor Inc., is a word-wide direct selling company. Complainant has marketed its personal care, nutrition and wellness, home care, home living, and commercial products under the AMWAY mark since 1959. Complainant holds a number of trademark registrations for its AMWAY mark around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 707,656 registered November 29,1960).
Respondent, Tatyana Sorokina, registered the <krasamway.biz> domain name on August 16, 2010. The disputed domain name resolves to Respondent’s website which offers information about Complainant’s products and offers Complainant’s products for sale, associating the goods with Complainant’s AMWAY mark and other trademarks.
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.
The Panel finds that Complainant has established its rights in the AMWAY mark through its federal trademark registrations 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 Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). If Complainant holds a trademark registration in any jurisdiction, it is unnecessary for Complainant to register its mark within the country where Respondent resides or operates. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <krasamway.com> domain name is confusingly similar to Complainant’s AMWAY mark. The disputed domain name incorporates Complainant’s mark in its entirety and only adds the geographic term “kras,” which is short for “Krasnoyarsk” the city listed in Respondent’s registration information, and by adding the generic top-level domain “gTLD.” The Panel finds that adding a geographic term does not avoid a finding of confusing similarity. See Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). Also, the Panel finds that affixing a gTLD does not distinguish the disputed domain name from Complainant’s mark. See 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 concludes that Respondent’s <krasamway.com> domain name is confusingly similar to Complainant’s AMWAY mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the <krasamway.com> domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the Panel determines that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). Here, Complainant has presented a prima facie case thereby shifting the burden to Respondent. However, Respondent failed to submit a response rebutting any of the claims in the Complainant and the Panel may assume that Respondent has no rights or legitimate interests. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). Here, the Panel elects to review the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies Respondent as “Tatyana Sorokina,” which is not similar to the disputed domain name. Furthermore, Complainant states that it has never authorized Respondent to use its AMWAY mark in any domain name. The Panel finds that Respondent is not commonly known by the <krasamway.com> domain name pursuant to Policy ¶ 4(c)(ii) as nothing in the record indicates otherwise. 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 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).
The disputed domain name resolves to Respondent’s website which offers information about Complainant’s products and offers Complainant’s products for sale. Respondent associates the products with many of Complainant’s marks including its AMWAY mark. The Panel finds that Respondent’s use of the confusingly similar disputed domain name to host a website which sells Complainant’s products under Complainant’s mark is not 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 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 G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Although Complainant does not directly make this argument, the Panel may consider whether Respondent’s registration and use of the <krasamway.com> domain name disrupts Complainant’s direct selling business. Respondent is not an authorized distributor of Complainant’s products and Internet users who find Respondent’s website may purchase goods from Respondent instead of Complainant or another authorized distributor. The Panel concludes that Respondent’s registration and use of the disputed domain name does disrupt Complainant’s business and constitutes bad faith under Policy ¶ 4(b)(iii). See 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); 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).”).
Respondent’s resolving website sells Complainant’s products under Complainant’s AMWAY mark. Complainant claims that this creates a false impression that Respondent is an authorized distributor of Complainant and creates a likelihood of confusion as to Complainant’s sponsorship of the disputed domain name and resolving site. Respondent profits from this confusion by increasing sales and Internet traffic to its site. The Panel finds that Respondent registered and is using the <krasamway.com> domain name in 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 Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <krasamway.biz> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 10, 2011
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