Alticor Inc. v. Nguyen Anh Vu
Claim Number: FA1210001468845
Complainant is Alticor Inc. (“Complainant”), represented by Kenneth A. Coleman of Warner Norcross & Judd LLP, Michigan, USA. Respondent is Nguyen Anh Vu (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amwayvina.com>, registered with OnlineNic, Inc.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 24, 2012; the National Arbitration Forum received payment on October 25, 2012.
On October 30, 2012, OnlineNic, Inc. confirmed by e-mail to the National Arbitration Forum that the <amwayvina.com> domain name is registered with OnlineNic, Inc. and that Respondent is the current registrant of the name. OnlineNic, Inc. has verified that Respondent is bound by the OnlineNic, 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 November 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 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@amwayvina.com. Also on November 1, 2012, the 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 December 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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. Indeed, on October 31, 2012, the Forum received a brief acknowledgement email from Respondent.
The Panel has issued its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and rules and principles of law that it deemed applicable, without the benefit of a reasoned response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in AMWAY and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark AMWAY in connection with the sale of personal care, home care and other products.
2. Complainant owns, inter alia, United States Trademark Reg. No. 707,656 registered November 29, 1960 for the word mark AMWAY.
3. The disputed domain name was registered on May 3, 2012.
4. The domain name resolves to a website that features personal care and other items offered for sale by reference to the trademark AMWAY and other trademarks belonging to Complainant.
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.”)).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration, the Panel is satisfied that it has trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
For the purpose of comparison between the disputed domain name and the trademark the gTLD, “.com” can be disregarded (see 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 asserts that the term “vina” is a non-distinctive generic addition to the trademark since it is a given name in Vietnam. Panel notes here that Respondent appears to be Vietnamese.
From its own limited research Panel can see that “Vina” is a relatively common female given name in at least Vietnam and India. Whilst at one level it may make sense to describe a common given name as “generic” (as does Complainant), it does not follow that such a name is per se non-distinctive in the same way as descriptive terms such as “online” or “discount” or “cheap” would be when coupled with the trademark.
In any event, the point is moot because that same research shows that the term “Vina” is a synonym of Viet (sometimes, and possibly incorrectly) Vietnam). The Complaint makes no reference to that other meaning however Panel is satisfied that a significant proportion of internet users would, on seeing the disputed domain name, comprehend it as a combination of the trademark together with a reference to Vietnam. Previous panels have found that the addition of geographic descripters can add to the confusing similarity between the domain name and the relevant trademark (see, for example, Am. Online, Inc. v. Oxford Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002) (“Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent’s domain name into separate and distinct marks for the purpose of a Policy ¶ 4(a)(i) analysis.”). Panel is also satisfied that the disputed domain name is confusingly similar to Complainant’s trademark.
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
Based on the Complaint and its annexures the Panel makes these preliminary observations. The domain name is in use. It resolves to a website (in Vietnamese, but with the option of English language) which offers for sale personal care products. The website carries images of those products. The majority bear the trademark AMWAY. A handful of products bear names which the evidence shows to be other trademarks owned by Complainant. Complainant sells its goods through a network of so-called “IBOs” (independent business owners). Complainant states that Respondent is not one of its IBOs. There is no suggestion that the goods offered for sale on the resolving website are counterfeit goods and nothing in the screenshots of the webpage points to the goods being other than goods originally put on the market by Complainant or its IBOs. The website does not offer anything but goods bearing the trademark AMWAY or other trademarks shown to belong to Complainant.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Paragraphs 4(c)(ii) and (iii) of the Policy have no application. The publicly available WhoIs data shows the owner of the disputed domain name to be “Nguyen Anh Vu” and so there is no prima facie evidence that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has any trade mark rights. The use of the domain name is clearly commercial.
There is, however, a question as to whether paragraph 4(c)(i) is engaged.
Complainant states that the resolving website:
“offers for sale many of Complainant’s products including Complainant’s NUTRILITE, PURSUE, and ARTISTRY products. Respondent’s use of the AMWAY, NUTRILITE, PURSUE, and ARTISTRY marks will clearly lead to confusion that Respondent is a subsidiary or affiliate of Complainant, when it is not. … It is well-recognised that status as a distributor of the Complainant’s products would not give the Respondent any rights or legitimate interests in registering a domain name containing the AMWAY mark.”
Panel determines that the relevant enquiry is whether before notice of the dispute Respondent used the disputed domain name in connection with a bona fide offering of goods. The key issue is the bona fides of the offering and in that respect the Panel proceeds on the basis that Respondent is a re-seller of Complainant’s goods and not a counterfeiter of those goods.
In the former UDRP case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”), it was held that to be “bona fide” within the meaning paragraph 4(c)(i) the offering should meet the following requirements:
- the Respondent must actually be offering the goods or services at issue;
- the Respondent must use the site to sell only the trade marked goods; otherwise, it could be using the trade mark to bait Internet users and then switch them to other goods;
- the site must accurately disclose the registrant’s relationship with the trade mark owner; it may not, for example, falsely suggest that it is the trade mark owner, or that the website is the official site; and
- the Respondent must not try to corner the market in all domain names, thus depriving the trade mark owner of reflecting its own mark in a domain name.
The factors developed in the Oki Data case have been adopted in numerous subsequent UDRP cases (see, for example, Ferrari S.P.A., Fila Sport S.P.A., v. Classic Jack, WIPO Case No. D2003-0085 - <ferrari-fila.com>, <ferrarifila.com>, <ferrariguy.com> et al.; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002‑0095 - <experiancredit.com>).
This Panel follows the majority view put forward in the Oki Data case that a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use conforms with the requirements laid out in that case.
Here, Respondent is confining its use of the disputed domain name to the resale of Complainant’s goods by reference to Complainant’s trademarks. It is not selling products in competition to Complainant’s goods or selling other goods or offering other services. There is no evidence that Respondent has attempted to “corner the market” and somehow deprive Complainant of suitable domain names for use in its business.
In terms of the Oki Data factors, Respondent’s omission is that it appears not have disclosed its relationship with the Complainants. The respondent in the Oki Data case was an authorized re-seller and so that requirement was quite specific to the case and to parallel cases. Nonetheless, former UDRP panelists have applied the same criteria in cases, such as this one, where there was no contractual relationship between the parties (see, for example, Dr. Ing. h.c. F. Porsche AG. v. Del Fabbro Laurent, WIPO Case No. D2004-0481 - <porsche-buy.com>; Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946 – <discount-marlboro-cigarettes.com>).
That said, the guidance from the Oki Data case is that Respondent should not falsely suggest that it is the trade mark owner, or that its website is the Complainant’s official site. Panel has already commented on the connotation of the word “Viet”. Panel is of the view that the domain name is suggestive of Complainant’s official website specific to Vietnam.
Panel also recognizes that Complainant may for many reason partition the sale of its goods under different trademarks and, notwithstanding the fact that all goods offered for sale on the resolving website may be genuine or that all the trademarks are trademarks of Complainant, this Panel reads the Oki Data case requirement that Respondent “be offering the goods or services at issue” to mean those goods sold by reference to the particular trademark at issue and not any other of Complainant’s trademarks.
Panel does not find that the offering to be bona fide within the meaning of paragraph 4(c)(i) of the Policy.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response, that onus is not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. Panel has already found the disputed domain name to be confusingly similar to Complainant’s trademark. Panel accepts as more likely than not that Respondent receives revenue from the website associated with the disputed domain name. In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain name to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amwayvina.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: December 12, 2012
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