national arbitration forum

 

DECISION

 

Alticor Inc. v. fan you

Claim Number: FA1205001445564

 

PARTIES

Complainant is Alticor Inc. (“Complainant”), represented by Kenneth A. Coleman of Warner Norcross & Judd LLP, Michigan, USA.  Respondent is fan you (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <usamway.com>, registered with Hichina Zhicheng Technology Ltd.

 

PANEL

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.

 

 The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2012; the National Arbitration Forum received payment on May 24, 2012.  The Complaint was received in Chinese and English.

 

On May 23, 2012, Hichina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <usamway.com> domain name is registered with Hichina Zhicheng Technology Ltd. and that Respondent is the current registrant of the name.  Hichina Zhicheng Technology Ltd. has verified that Respondent is bound by the Hichina Zhicheng Technology 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 May 25, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 14, 2012 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@usamway.com.  Also on May 25, 2012, the Chinese language Written Notice of the Complaint, notifying Respondent of the e-mail 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 June 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

1.   Complainant is one of the world’s largest direct selling companies having marketed its AMWAY branded products for over 50 years.

 

2.    Complainant has established a network of more than three million independent business owners in more than 80 countries and territories with global sales of over $10.9 billion. 

 

3.    Complainant owns more than 2,000 trademark registrations worldwide including a trademark registration with the United States Patent and Trademark Office ("USPTO") for its AMWAY mark (Reg. No. 707,656 November 29, 1960).

 

4.    Respondent, Fan You, registered the <usamway.com> domain name.

 

5.    Respondent’s disputed domain name resolves to a website that offers information about Complainant’s products and offers those products for sale.

 

6.    Respondent has not been licensed, authorized, or otherwise permitted to use Complainant’s trademarks in any way.

 

7.    Respondent registered and is using the disputed domain name in bad faith by portraying itself as a subsidiary or affiliate of Complainant when it is not.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Complainant is a United States company that is one of the world’s largest direct selling companies. Its AMWAY trademark and brand are well known the world over. Complainant has marketed AMWAY brand products for over 50 years. Amway Corporation, the former name of Complainant, was founded in 1959.

 

2.    Complainant owns more than 2,000 trademark registrations worldwide for AMWAY including a trademark registration with the United States Patent and Trademark Office ("USPTO") for its AMWAY mark (Reg. No. 707,656 November 29, 1960).

 

3.    Respondent registered the <usamway.com> domain name on April 4, 2010. It resolves to a website that is presented as a website of Complainant advertising goods and services of Complainant for sale without the permission or authority of Complainant.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS

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.

 

DISCUSSION

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."

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant submits that it has registered the AMWAY mark with national trademark authorities worldwide and provides evidence of its trademark registration with the USPTO for the AMWAY mark (Reg. No. 707,656 November 29, 1960).  Based upon Complainant’s evidence, the Panel finds that Complainant has established rights in the AMWAY mark under Policy ¶ 4(a)(i), notwithstanding Respondent’s location in China.  See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); 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).

 

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s AMWAY mark. Due to the fame and nature of Complainant’s AMWAY mark, Complainant argues that the <usamway.com> domain name is confusingly similar to Complainant’s AMWAY mark under Policy ¶ 4(a)(i).  Complainant asserts that the letters “us” are a geographic designation for the United States.  Complainant argues that the addition of a geographic designation to the AMWAY mark only enhances the confusing similarity of the disputed domain name and the Panel agrees.  The Panel also notes that the disputed domain name adds the generic top-level domain (“gTLD”) “.com.”  The Panel agrees with Complainant and finds that the <usamway.com> domain name is confusingly similar to Complainant’s AMWAY mark under Policy ¶ 4(a)(i).  See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”); 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).

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

 

It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

 

(a)  Respondent has chosen to take Complainant’s AMWAY mark, precede it with the letters “us” which would clearly be understood to be a reference to the operations of Amway in the United States and to use it in its domain name;

 

(b)  The disputed domain name resolves to Respondent’s website that is presented as a website of Complainant advertising goods and services of Complainant for sale.

 

(c)  Respondent has engaged in these activities without the consent or approval of Complainant;

 

(d)  Complainant alleges Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the AMWAY mark or the <usamway.com> domain name.  Complainant further contends that Respondent has not been authorized or licensed to use Complainant’s mark in any way and that Respondent is not a subsidiary, affiliate, or independent business owner dealing in Complainant’s goods.  The Panel notes that the WHOIS information identifies the registrant of the <usamway.com> domain name as “Fun You,” a name which the Panel finds to be dissimilar to the disputed domain name.  Therefore, the Panel finds that Respondent is not commonly known by the <usamway.com> domain name under Policy ¶ 4(c)(ii).  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);

 

(e) Further, Complainant argues that Respondent’s use of the disputed domain name 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).  Complainant contends that Respondent is using the disputed domain name to provide information on Complainant’s products and to sell those products without license or authorization.  See Complainant’s Exhibit B.  The Panel finds that such use by Respondent does not constitute 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).

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

 

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

First, Complainant contends that Respondent is “clearly portraying itself as a subsidiary or affiliate of Complainant, when it is not.”  Complainant further argues that Respondent’s conduct creates a false impression that it is an authorized distributor of Complainant’s products in bad faith.  The Panel notes that throughout the Complaint, Complainant has argued that Respondent’s disputed domain name resolves to a website providing information about Complainant’s products and offering those products for sale.  The Panel finds that such use of the disputed domain name is sufficient for the Panel to make a finding that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) and the Panel makes that finding.  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).

 

Secondly, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the AMWAY mark. Complainant argues that Respondent's offering of Complainant's own products and information on those products at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").

 

Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the AMWAY mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <usamway.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  June 22, 2012

 

 

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