Alticor Inc. v. Rashid osman
Claim Number: FA1107001397652
Complainant is Alticor Inc. (“Complainant”), represented by R. Scott Keller of Warner Norcross & Judd LLP, Michigan, USA. Respondent is Rashid osman (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rashidamway.com>, registered with UK2 Group 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 8, 2011; the National Arbitration Forum received payment on July 8, 2011.
On July 8, 2011, UK2 Group Ltd. confirmed by e-mail to the National Arbitration Forum that the <rashidamway.com> domain name is registered with UK2 Group Ltd. and that Respondent is the current registrant of the name. UK2 Group Ltd. has verified that Respondent is bound by the UK2 Group 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 12, 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@rashidamway.com. Also on July 12, 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 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <rashidamway.com> domain name is confusingly similar to Complainant’s AMWAY mark.
2. Respondent does not have any rights or legitimate interests in the <rashidamway.com> domain name.
3. Respondent registered and used the <rashidamway.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Alticor Inc., owns the AMWAY mark which it uses in connection with the sale and distribution of a variety of products including nutritional foods, detergents, and home care products as well as hotel and real estate services. Complainant has multiple registrations for its AMWAY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 707,656 registered November 29, 1960).
Respondent, Rashid osman, registered the <rashidamway.com> domain name on January 27, 2011. The disputed domain name resolves to a website which provides links to view and purchase various AMWAY 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 contends that it has rights in its AMWAY mark. Complainant maintains over thirty active registrations and additional pending registrations for the AMWAY mark with the USPTO (e.g., Reg. No. 707,656 registered November 29, 1960). The Panel finds that this adequately demonstrates Complainant’s rights in the mark. See 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.”); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO). Respondent’s contact information reflects that Respondent lives and operates outside of the United States. The registration of the AMWAY mark in the United States establishes Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i) regardless of Respondent’s location. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Therefore, the Panel finds that Complainant has rights in the AMWAY mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that the disputed domain name is confusingly similar to Complainant’s mark. Respondent adds the generic term “rashid” as a prefix to Complainant’s mark within the domain name. Respondent then follows the AMWAY mark with the generic top-level domain (“gTLD”) “.com.” Neither of these changes is sufficient to distinguish a domain name from the mark it is infringing upon. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel holds that the <rashidamway.com> domain name is confusingly similar to Complainant’s AMWAY mark.
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. A complainant having made a prima facie case in support of an assertion shifts the burden to the respondent, but a respondent’s failure to submit a response allows the Panel to infer that the complainant’s assertions are true. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). The Panel finds that Complainant has made a prima facie case and will review the record for contradictory information.
Complainant additionally contends that Respondent is not commonly known by the <rashidamway.com> domain name. This determination, guided by cases such as Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) and Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), is done by reviewing the WHOIS listing for the disputed domain name coupled with any information the complainant may provide such as authorization to use a mark. Complainant claims that Respondent is in no way affiliated with Complainant and is not authorized to be using the AMWAY mark. The WHOIS information for the <rashidamway.com> domain name lists “Rashid osman” as the domain name registrant. While this information does suggest potential for Respondent being commonly known by the disputed domain name, because of Respondent’s failure to submit a response to the Complaint and Complainant’s statements regarding the lack of any relationship between Complainant’s mark and Respondent, the Panel finds that this is insubstantial. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name). As a result, the Panel finds that Respondent is not commonly known by the <rashidamway.com> domain name pursuant to Policy ¶ 4(c)(ii).
The disputed domain name resolves to a website where Respondent sells Complainant’s products. Previous panels have found that this use of a disputed domain name is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use. See 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)); see also 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). The Panel thus finds that the use of the <rashidamway.com> domain name is not a protected use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Panels have found that bad faith registration and use occurred where the disputed domain name is disruptive. Domain names which resolve to websites selling a complainant’s products is evidence of bad faith. 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 Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”). Respondent’s <rashidamway.com> domain name resolves to a site on which Respondent sells Complainant’s various products. Some of the Internet traffic that is routed to this site will end up purchasing AMWAY products from Respondent instead of from Complainant. This, the Panel finds, is a disruption to Complainant’s business under Policy ¶ 4(b)(iii).
Respondent registered and is using a confusingly similar domain name. As a result, Internet users will certainly become confused as to whether Respondent is acting independently of Complainant. Assuming that the similar domain name means that Respondent is not operating completely independent of Complainant, Internet users will purchase goods from Respondent. The registration and use of a domain name to sell a complainant’s products by taking advantage of Internet users’ confusion demonstrates bad faith registration and use according to holdings such as those in Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) and Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000). The Panel thus finds that Respondent’s registration and use of the disputed domain name to capitalize off of Internet users’ confusion is evidence of bad faith under Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rashidamway.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 17, 2011
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