Alticor Inc. v. Sun Shiguo
Claim Number: FA1111001417313
Complainant is Alticor Inc. (“Complainant”), represented by R. Scott Keller of Warner Norcross & Judd LLP, Michigan, USA. Respondent is Sun Shiguo (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <020amway.com>, registered with Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 28, 2011; the National Arbitration Forum received payment on November 29, 2011. The Complaint was submitted in both English and Chinese.
On December 2, 2011, Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp. confirmed by e-mail to the National Arbitration Forum that the <020amway.com> domain name is registered with Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp. and that Respondent is the current registrant of the name. Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp. has verified that Respondent is bound by the Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp. 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 December 2, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 22, 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@020amway.com. Also on December 2, 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 January 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <020amway.com> domain name is confusingly similar to Complainant’s AMWAY mark.
2. Respondent does not have any rights or legitimate interests in the <020amway.com> domain name.
3. Respondent registered and used the <020amway.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Alticor Inc., is the owner of the AMWAY mark. Complainant has registered the AMWAY mark (e.g., Reg. No. 707,656 registered November 29, 1960) with the United States Patent and Trademark Office (“USPTO”). The mark is used in connection with a variety of goods and services including skin care products, food supplements, nutritional foods, and hotel services.
Respondent, Sun Shiguo, registered the <020amway.com> domain name on January 6, 2011. The disputed domain name resolves to a website which offers for sale 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 argues that it has rights in the AMWAY mark. Panels have found that the registration of a mark with a federal trademark authority establishes rights in a mark under 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 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). Complainant has registered the AMWAY mark (e.g., Reg. No. 707,656 registered November 29, 1960) with the USPTO. Therefore, the Panel finds that Complainant has rights in the AMWAY mark pursuant to Policy ¶ 4(a)(i).
Complainant also argues that Respondent’s disputed domain name is confusingly similar to the AMWAY mark. The Panel finds that Respondent’s addition of the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name fails to distinguish the <020amway.com> domain name from the AMWAY mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Additionally, the Panel finds that Respondent’s addition of the string of numbers “020” does not make the disputed domain name so distinctive as to negate a finding of confusing similarity. 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 the complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)); see also Am. Online, Inc. v. garybush co uk, FA 360612 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s domain name is confusingly similar to Complainant’s AOL mark because the disputed domain name incorporates the mark with the mere addition of the nondistinctive number ‘0.’ The addition of the number ‘0’ is insufficient to distinguish the domain name from Complainant’s mark.”). The Panel thus finds that the <020amway.com> domain name is confusingly similar to the AMWAY mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is met.
Complainant argues that Respondent has neither rights nor legitimate interests in the disputed domain name. Once a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to provide evidence to the contrary. 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 Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech. Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”). The Panel finds that Complainant has made a prima facie case in support of its assertions. Respondent thus bears the burden of disproving the claims which Complainant has made against it. Respondent, however, has failed to submit a Response to the Complaint. Given this, the Panel will proceed making all reasonable inferences from the available information. See 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.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). As such, the Panel will review the record for any circumstances which may confer rights or legitimate interests on Respondent.
Complainant contends that Respondent is not commonly known by the disputed domain name. The WHOIS record for the <020amway.com> domain name lists “Sun Shiguo” as the domain name registrant. Additionally, Complainant argues that Respondent has never been authorized to use the AMWAY mark in any way and is not a subsidiary or affiliate of Complainant. The Panel finds nothing suggesting that Respondent is commonly known by the disputed domain name and nothing to dispute this. Therefore, the Panel holds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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 Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The panels in Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003), and Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001), held that using a disputed domain name to sell a Complainant’s products without authorization is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <020amway.com> domain name is used by Respondent to sell Complainant’s products. The Panel finds that the<020amway.com> domain name’s use is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services neither a Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) is met.
Complainant argues that Respondent’s intent in registering and using the <020amway.com> domain name is to disrupt Complainant’s business. The <020amway.com> domain name is used in order to sell Complainant’s products without having obtained Complainant’s permission. The Panel finds that Respondent’s use of Complainant’s mark in its confusingly similar domain name will drive some of Complainant’s expected Internet traffic away from Complainant. Therefore, the Panel finds that the <020amway.com> domain name’s registration and use is disruptive to Complainant’s work done in connection with the AMWAY mark pursuant to Policy 4(b)(iii). 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 Wall v. Silva, FA 105899 (Nat. Arb. Forum Apr. 29, 2002) (finding that despite respondent’s claim that it used the <josephinewall.com> domain name, which was identical to complainant’s JOSEPHINE WALL mark, to help complainant become popular in the United States, the Panel found that the respondent’s use of the domain name to sell the complainant’s artwork in the United States constituted disruption pursuant to Policy ¶ 4(b)(iii)).
Complainant lastly argues that Respondent’s registration and use of the disputed domain name is a result of the intent to commercially gain from the confusion created as to the source, sponsorship, or affiliation of the <020amway.com> domain name. The disputed domain name is confusingly similar to Complainant’s AMWAY mark. Some of the Internet users searching for Complainant may therefore find Respondent’s <020amway.com> domain name instead. The disputed domain name is used to sell Complainant’s products. Internet users will be confused as to whether Complainant is the source or sponsor of the disputed domain name given the minor variations from the mark in the <020amway.com> domain name. Given that the products sold are those of Complainants, Internet users will presume that Complainant is affiliated with the <020amway.com> domain name and buy the products, thus allowing Respondent to profit. Therefore, the Panel finds that Respondent’s registration and use of the disputed domain name was done in order to commercially gain from the unauthorized use of the AMWAY mark and confusion caused because of it pursuant to 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) is 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 <020amway.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 4, 2012
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