Alticor, Inc. v. liu bo / lijun / linbin
Claim Number: FA1110001411456
Complainant is Alticor Inc. (“Complainant”), represented by R. Scott Keller of Warner Norcross & Judd LLP, Michigan, USA. Respondent is liu bo / lijun / linbin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sdamway.com> and <sdamway.net>, registered with Xin Net Technology Corporation.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 14, 2011; the National Arbitration Forum received payment on October 17, 2011. The Complaint was submitted in both Chinese and English.
On October 16, 2011, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <sdamway.com> and <sdamway.net> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 October 20, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of November 9, 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@sdamway.com and postmaster@sdamway.net. Also on October 20, 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 November 16, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sdamway.com> and <sdamway.net> domain names are confusingly similar to Complainant’s AMWAY mark.
2. Respondent does not have any rights or legitimate interests in the <sdamway.com> and <sdamway.net> domain names.
3. Respondent registered and used the <sdamway.com> and <sdamway.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses its AMWAY mark to market and sell personal care, nutrition and wellness, home care, home living, and other commercial products. Complainant owns multiple trademark 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 registered the <sdamway.com> and <sdamway.net> domain names on January 15, 2010 and September 12, 2010, respectively. The disputed domain names formerly resolved to websites selling unauthorized products of Complainant. Currently, the disputed domain names fail to resolve to active websites.
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 provides a long list of its trademark registrations with the USPTO and includes its trademark registration certificate for its first registration of the AMWAY mark (e.g., Reg. No. 707,656 registered November 29, 1960). While Respondent does not reside in the United States, past panels have held that a complainant is not required to register a mark within the country where the 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). As prior panels have further found that a trademark registration with the USPTO is sufficient to establish rights in a mark, the Panel holds that Complainant has demonstrated Policy ¶ 4(a)(i) rights in its AMWAY mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also 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.”).
Complainant argues that Respondent’s <sdamway.com> and <sdamway.net> domain names are confusingly similar to Complainant’s AMWAY mark. Complainant alleges that the only difference between the domain names and the mark is the addition of the letters “s” and “d,” which Complainant argues are abbreviations for the Sudan country-code, and the generic top-level domain (“gTLD”) “.com” or “.net.” Previous panels have consistently held that the additions of letters and a gTLD fail to adequately distinguish a disputed domain name from a complainant’s mark. See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)); see also Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also 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.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Based on this precedent, the Panel finds that Respondent’s <sdamway.com> and <sdamway.net> domain names are confusingly similar to Complainant’s AMWAY mark for the purpose of Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the <sdamway.com> and <sdamway.net> domain names. Previous panels have held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). 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.”). The Panel finds Complainant made a sufficient prima facie case. Past panels have also held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant claims that Respondent is not commonly known by the <sdamway.com> and <sdamway.net> domain names. Complainant asserts that Respondent is not authorized to use Complainant’s AMWAY mark in a domain name and that Respondent is not a subsidiary or affiliate of Complainant. Complainant admits that Respondent was formerly a “Privileged Customer,” but argues that this status does not allow Respondent to use the AMWAY mark. The WHOIS information does not indicate that Respondent is commonly known by the disputed domain names, and Respondent has not presented any evidence to the contrary. Past panels have held, in similar circumstances, that a respondent is not commonly known by a disputed domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Thus, the Panel concludes that Respondent is not commonly known by the <sdamway.com> and <sdamway.net> domain names under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent’s former use of the <sdamway.com> and <sdamway.net> domain names is not evidence of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant argues that Respondent formerly used its Privileged Customer status to purchase Complainant’s products at a discount and then sold Complainant’s products on the resolving websites. Complainant claims that such a use directly contradicts its Privileged Customer agreement and that Complainant terminated its relationship with Respondent. Complainant contends that Respondent is not an independent business owner (“IBO”) associated with Complainant. Prior panels have concluded that the sale of unauthorized versions of a complainant’s products is evidence that the respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); 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). Therefore, the Panel concludes that Respondent has not established rights and legitimate interests in the <sdamway.com> and <sdamway.net> domain names pursuant to Policy ¶¶ 4(c)(i) and (iii).
According to Complainant, Respondent’s <sdamway.com> and <sdamway.net> domain names currently fail to resolve to active websites. Past panels have concluded that a respondent’s failure to make an active use of a disputed domain name is evidence that the respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). The Panel finds accordingly in this case.
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Complainant does not make any allegations under Policy ¶ 4(b)(iii). However, previous panels have found that a respondent’s registration and use of a disputed domain name for the unauthorized purpose of selling a complainant’s products necessarily disrupts a complainant’s business as consumers may purchase products from the respondent instead of from the complainant or an authorized seller of the complainant. See 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); 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).”). As Respondent previously used the disputed domain name to sell Complainant’s products without authorization, the Panel determines that Respondent’s registration and use of the <sdamway.com> and <sdamway.net> domain names did disrupt Complainant’s business, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant contends that Respondent was attempting to commercially benefit from the unauthorized sale of Complainant’s products by creating confusion as to Complainant’s affiliation with the disputed domain name. Past panels have held that a respondent registered and used a disputed domain name in bad faith in similar circumstances. See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”); see also 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). Consequently, the Panel concludes that Respondent registered and used the <sdamway.com> and <sdamway.net> domain names in bad faith under Policy ¶ 4(b)(iv) by previously offering Complainant’s products for sale without authorization.
Complainant claims that Respondent currently fails to make an active use of the disputed domain names. Prior panels have also held that a respondent’s failure to make an active use of the disputed domain name is evidence of bad faith registration and use. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). Thus, the Panel holds that Respondent registered and uses the <sdamway.com> and <sdamway.net> domain names in bad faith under Policy ¶ 4(a)(iii).
The Panel finds Policy ¶ 4(a)(iii) is 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 <sdamway.com> and <sdamway.net> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: November 18, 2011
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