national arbitration forum

 

DECISION

 

Alticor Inc. v. FRJ Enterprises

Claim Number: FA1304001494249

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <amwayfinanceconsultants.com>, registered with GODADDY.COM, LLC.

 

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 11, 2013; the National Arbitration Forum received payment on April 12, 2013.

 

On April 11, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <amwayfinanceconsultants.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name.  GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 April 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 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@amwayfinanceconsultants.com.  Also on April 15, 2013, 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 May 15, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant, Alticor Inc., is one of the world’s largest direct selling companies. Complainant’s AMWAY product line includes more than 450 personal care, nutrition and wellness, home care, home living, and commercial products.

 

Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AMWAY mark (Reg. No. 707,656, registered November 29, 1960).

 

Respondent’s <amwayfinanceconsultants.com> domain name is confusingly similar to Complainant’s AMWAY mark as it simply contains Complainant’s AMWAY mark with the words “finance consultants.”

 

Respondent does not have any rights or legitimate interests in the names AMWAY or <amwayfinanceconsultants.com>. Respondent is not now, and never has been, commonly known by, nor does it have any other legitimate rights in the names AMWAY or <amwayfinanceconsultants.com>. Respondent is not using the <amwayfinanceconsultants.com> domain name in connection with a bona fide offering of goods or services or for legitimate noncommercial or fair use.

Respondent’s registration of the domain name to divert persons looking for Complainant on the Internet constitutes bad faith under the Policy.

 

Respondent is clearly 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

Complainant owns a USPTO registered trademark for AMWAY.

 

Respondent is not affiliated with Complainant and had not been authorized to use the AMWAY mark in any capacity.

 

Respondent registered the at‑issue domain name after Complainant acquired trademark rights in AMWAY.

 

The <amwayfinanceconsultants.com> domain name was used by Respondent to impersonate Complainant and offer Respondent’s services for sale online.

 

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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant’s registration of the AMWAY mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). Complainant need not register its mark where Respondent operates to demonstrate such rights. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i)”); 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Respondent’s at-issue domain name contains Complainant’s AMWAY mark with the words “finance consultants” added and the top level domain name “.com” appended thereto. Respondent’s mating of Complainant’s trademark with the descriptive terms “finance” and “consultants” and then adding the “.com” top level domain name does not differentiate the domain name from Complainant’s mark under Policy ¶ 4(a)(i). Accordingly, the Panel concludes that Respondent’s <amwayfinanceconsultants.com> domain name is confusingly similar to Complainant’s AMWAY mark. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”).

 

Rights or Legitimate Interests

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 any capacity 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 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 since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.

 

WHOIS information identifies “FRJ Enterprises” as the at-issue domain name’s registrant.  Moreover, the record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by the domain name. The Panel thus concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Respondent is not using the <amwayfinanceconsultants.com> domain name in connection with a bona fide offering of goods or services or for legitimate noncommercial or fair use. Respondent’s at-issue domain name addressed a website titled “AMWAY FINANCE CONSULTANTS.” That website offered services for debt reduction, collections, and financial consulting services. Respondent’s use of the AMWAY mark in such manner falsely suggested that Respondent was authorized by, or affiliated with, Complainant. Respondent’s use of the at-issue domain name to offer similar services to Complainant’s is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).

 

Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) as well as non-Policy ¶ 4(b) circumstance are present and compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

 

Respondent’s registration of the at-issue domain name to divert Internet users looking for Complainant constitutes bad faith. Respondent uses the domain name to portray itself as a subsidiary or affiliate of Complainant, when it is not. Respondent’s website at <amwayfinanceconsultants.com> offers services for debt reduction, collections, and financial consulting services and Respondent’s use of the AMWAY mark is likely to cause confusion that Respondent is part of or is authorized by or affiliated with Complainant. Respondent’s conduct in creating the false impression that it is an authorized distributor of or spokesperson for Complainant’s product constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).

 

Additionally, it is apparent that Respondent had actual knowledge of Complainant’s rights in the well-known AMWAY mark prior to registering the at-issue domain name.  Respondent’s prior knowledge is clear from the fact that the <amwayfinanceconsultants.com> domain name contains Complainant’s entire AMWAY trademark and was used by Respondent to impersonate Complainant for financial gain. Registering a domain name that one knows is confusingly similar to the trademark of another indicates bad faith registration and use under Policy ¶4(a)(iii). See 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 had "actual knowledge of Complainant's mark when registering the disputed domain name").

 

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 <amwayfinanceconsultants.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Paul M. DeCicco, Panelist

Dated:  May 15, 2013

 

 

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