Alticor Inc. v. songzhengli / zhengli song
Claim Number: FA1111001417321
Complainant is Alticor Inc. (“Complainant”), represented by R. Scott Keller of Warner Norcross & Judd LLP, Michigan, USA. Respondent is songzhengli / zhengli song (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amwaybuyer.com>, registered with BizCN.com, Inc.
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.
John J. Upchurch 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 1, 2011, BizCN.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <amwaybuyer.com> domain name is registered with BizCN.com, Inc. and that Respondent is the current registrant of the name. BizCN.com, Inc. has verified that Respondent is bound by the BizCN.com, Inc. 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 1, 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 21, 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@amwaybuyer.com. Also on December 1, 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 December 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 Complain 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 <amwaybuyer.com> domain name is confusingly similar to Complainant’s AMWAY mark.
2. Respondent does not have any rights or legitimate interests in the <amwaybuyer.com> domain name.
3. Respondent registered and used the <amwaybuyer.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Alticor Inc., owns the AMWAY mark. Complainant has multiple registrations through the United States Patent and Trademark Office (“USPTO”) for the AMWAY mark (e.g., Reg. No. 707,656 registered November 29, 1960). Complainant uses its mark in connection with hotel and real estate services as well as the distribution of a multitude of goods such as dietary food supplements, nutritional foods, air treatment systems, and detergents.
Respondent, songzhengli / zhengli song, registered the <amwaybuyer.com> domain name on December 9, 2005. The disputed domain name resolves to a website which provides information about and sells 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. Complainant has registered the AMWAY mark (e.g., Reg. No. 707,656 registered November 29, 1960) many times over through the USPTO. Panels have found that registering a mark with a federal trademark authority is an adequate basis upon which a complainant may assert rights in a mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); 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)). Panels have also held that this is true regardless of whether the parties operate or reside in the countries in which the mark is registered. 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 Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Given Complainant’s showing of federal trademark registration, the Panel finds that Complainant has rights in the AMWAY mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <amwaybuyer.com> domain name is confusingly similar to Complainant’s AMWAY mark. The Panel finds that Respondent’s addition of the generic top-level domain (“gTLD”) “.com” fails to distinguish the disputed domain name from Complainant’s mark. See 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.”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Additionally, the Panel finds that Respondent’s addition of the generic term “buyer” to Complainant’s mark is similarly insufficient to differentiate the disputed domain name from Complainant’s AMWAY mark. See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark). The Panel therefore finds that Respondent’s <amwaybuyer.com> domain name is confusingly similar to Complainant’s AMWAY mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i) with a showing of its rights in the AMWAY mark and the confusing similarity of Respondent’s <amwaybuyer.com> domain name to its AMWAY mark.
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 asserts that Respondent is not commonly known by the <amwaybuyer.com> domain name. The panels in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), and M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), found that the WHOIS record for a disputed domain name as well as the complainant’s allegations are illustrative of whether a respondent is commonly known by the disputed domain name. The WHOIS record for the <amwaybuyer.com> domain name lists “songzhengli / zhengli song” as the domain name registrant. The Panel finds that this is not suggestive of Respondent being commonly known by the disputed domain name. Complainant argues that Respondent has not been authorized or permitted to use the AMWAY mark in any capacity. Additionally, Complainant contends that it has ensured that Respondent is not one of its independent business owners who sell Complainants products, but even if it were, none of Complainant’s independent business owners are given rights or legitimate interests in the AMWAY mark. The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s use of the disputed domain name is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use. Panels have found that selling a complainant’s products through a disputed domain name is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use. See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”); 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)). Complainant contends that Respondent has been selling Complainant’s products on the website which resolves from the <amwaybuyer.com> domain name. Complainant provides the Panel with supporting evidence of this claim in the form of screenshots of the resolving website. Therefore, the Panel finds that Respondent’s use of the <amwaybuyer.com> domain name to sell Complainant’s products without authorization from Complainant is neither a Policy ¶¶ 4(c)(i) or 4(c)(iii) bona fide offering of goods or services nor a legitimate noncommercial or fair use.
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii) with a showing of Respondent’s lack of rights and legitimate interests in the <amwaybuyer.com> domain name.
Complainant argues that Respondent’s registration of the disputed domain name and unauthorized sale of Complainant’s products is disruptive to Complainant’s business conducted under the AMWAY mark. Because the <amwaybuyer.com> domain name is confusingly similar to Complainant’s AMWAY mark, Internet users searching for Complainant may instead find themselves at the disputed domain name and may inadvertently make their purchases from Respondent rather than from Complainant. Complainant’s expected Internet traffic and subsequent consumer base will be affected. The Panel therefore finds that Respondent’s registration and use of <amwaybuyer.com> domain name is disruptive pursuant to Policy ¶ 4(b)(iii). See 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.”); 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)).
Finally, Complainant contends that Respondent’s registration and use of the disputed domain name was done with the intent of causing confusion and taking commercial advantage of the use of Complainant’s mark. Given that the <amwaybuyer.com> domain name is confusingly similar to Complainant’s AMWAY mark and Respondent is selling Complainant’s goods on the disputed domain name’s resolving website, there is certain to be confusion as to the source, sponsorship, or affiliation of the domain name. Respondent will likely then profit from the goodwill established by Complainant because Internet users may purchase goods or services from the <amwaybuyer.com> domain name rather than from Complainant due to the belief that Respondent is an authorized distributor of the goods and services. Therefore, the Panel finds that Respondent’s bad faith is demonstrated by Respondent’s intent to take commercial advantage of confusion of the disputed domain name’s source, sponsorship, or affiliation 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 Complainant satisfied Policy ¶ 4(a)(iii) with a showing of Respondent’s bad faith registration and use of the <amwaybuyer.com> domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amwaybuyer.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 11, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page