Alticor Inc. v. GRUPO ICEDA S.A.S. / JOSE ALBERTO ICEDA RUIZ
Claim Number: FA1211001469950
Complainant is Alticor Inc. (“Complainant”), represented by Kenneth A. Coleman of Warner Norcross & Judd LLP, Michigan, USA. Respondent is GRUPO ICEDA S.A.S. / JOSE ALBERTO ICEDA RUIZ (“Respondent”), Columbia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amwaytiendacolombia.com>, registered with ENOM, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 6, 2012; the National Arbitration Forum received payment on December 13, 2012.
On December 13, 2012, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <amwaytiendacolombia.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2013 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@amwaytiendacolombia.com. Also on December 17, 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 January 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is one of the world’s largest direct selling companies, and has used the AMWAY trademark in its business for over fifty years. Complainant owns trademark registrations for its AMWAY mark with the United States Patent and Trademark Office (“USPTO”), and provides evidence of a TESS search result list for Complainant’s numerous USPTO registration numbers. Complainant owns similar registrations with additional trademark authorities around the world including the authority serving Columbia.
Respondent is one of Complainant’s independent business owners (“IBOs”) that sells Complainant’s products, but registered the <amwaytiendacolombia.com> domain name without required authorization.
Respondent created a website addressed by the disputed domain name to offer information regarding Complainant’s products and offers those products for sale in association with Complainant’s AMWAY mark, as well as other trademarks owned by Complainant. The website purports to belong to an entrepreneur associated with Complainant and targets customers interested in Complainant’s products.
The <amwaytiendacolombia.com> domain name is confusingly similar to Complainant’s AMWAY mark.
Respondent fails to demonstrate rights or legitimate interests in the <amwaytiendacolombia.com> domain name, as it is not known by the disputed domain name, nor does it make a bona fide offering of goods or services under the domain or use it for a legitimate noncommercial or fair use.
Respondent registered the <amwaytiendacolombia.com> domain name in bad faith, as shown by Respondent’s use of the domain name to portray itself as an affiliate of Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns multiple trademark registrations for AMWAY with the USPTO as well as other trademark registries worldwide including Columbia.
Respondent is an Independent Business Operator that sells and is conditionally authorized to sell Complainant’s products.
Respondent registered the at-issue domain name subsequent to Complainant’s acquiring rights in the AMWAY mark.
Respondent has agreed not to use Complainant’s trademark in a domain name without Complainant’s written permission. Complainant has not given such permission.
The at-issue domain name is used to address a website offering information regarding Complainant’s products. The website also offers Complainant’s products for sale in association with Complainant’s AMWAY mark, as well as other trademarks owned by Complainant.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant owns USPTO as well as Columbian trademark registrations for the AMWAY mark. Therefore, the Panel finds that Complainant has rights in the AMWAY mark pursuant to 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 Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Respondent’s at issue domain name is confusingly similar to Complainant’s AMWAY mark. In constructing the <amwaytiendacolombia.com> domain name Respondent adds the descriptive terms, “tienda,” meaning “shop” in Spanish, and the geographic location “Columbia,” to Complainant’s AMWAY trademark. To complete the domain name, Respondent then appends the top level domain name, “.com,” to the resulting string. Although ensuing at-issue domain name is not identical to Complainant trademark, even after altering the mark in this manner the domain name is nonetheless confusingly similar to Complainant’s AMWAY mark under to Policy ¶ 4(a)(i). See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to the complainant’s CMGI 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).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in as part of a domain name and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and there is no evidence supporting a finding under Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
There is no evidence in the record which tends to prove that Respondent is commonly known by the at-issue domain name. To the contrary, the WHOIS record for the domain name lists GRUPO ICEDA S.A.S. / JOSE ALBERTO ICEDA RUIZ as the domain name’s registrant. Therefore, the Panel finds that Respondent is not known by the domain name pursuant to Policy ¶4(a)(i). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent registered and is using Complainant’s trademark in its confusingly similar domain name to address a website which displays Complainant’s trademarks and offers Complainant’s products for sale. Since Respondent is using the domain name in breach of its agreement with Complainant calling for Respondent to refrain from registering or using the mark in a domain name unless Complainant has expressly authorized such use in writing, the Panel concludes that Respondent is neither using the domain name to make a bona fide offering of goods or services under Policy ¶4(a)(i), nor a legitimate noncommercial or fair uses under Policy ¶4(a)(iii). See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002), (finding that the respondent’s use of the domain name to obtain orders for the complainant’s products, without the complainant’s consent, was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Given the forgoing, Complainant satisfies its initial burden and, since there is no evidence to the contrary, conclusively demonstrates that Respondent lacks both rights and legitimate interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
Although the existence of Policy ¶4(b)(iv) bad faith circumstances are not expressly suggested by Complainant, the at-issue domain name was registered and is being used in bad faith. The Policy’s codification of the particular bad faith circumstances enumerated in Paragraph 4(b) is not exhaustive. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). As discussed below, there is non-Policy ¶4(b) evidence from which the Panel may conclude under Policy ¶4(a)(iii) that Respondent acted in bad faith in registering and using the at-issue domain name.
The Panel rejects Complainant’s notion that Respondent is holding itself out as an affiliate of Complainant and is not authorized to sell (distribute) Complainant’s products. Necessarily then the Panel rejects Complainant’s conclusion grounded on such notion regarding Policy ¶4(b)(iii). Indeed, there is an affiliation between Complainant and Respondent thus in the common sense of the word making Respondent an affiliate of Complainant. Furthermore, Complainant admits that Respondent, as an Independent Business Operator, is permitted to sell Respondent’s products. However, notwithstanding the foregoing, Respondent has unequivocally breached the parites’ agreement not to register a domain name containing Complainant’s mark unless Respondent has first obtained written permission to do so. Therefore, the Panel finds that Respondent has registered and is using the at-issue domain name in bad faith under Policy ¶4(a)(iii). See Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) (finding that a respondent may be part of an affiliate program operated by a complainant, but using the complainant’s mark in a domain name was evidence of bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amwaytiendacolombia.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 14, 2013
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