Alticor Inc. v. PrivacyProtect.org / Domain Admin
Claim Number: FA1311001530220
Complainant is Alticor Inc. (“Complainant”), represented by Kenneth A. Coleman of Warner Norcross & Judd LLP, Michigan, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amway-eurasia.com>, registered with REGISTRAR OF DOMAIN NAMES REG.RU LLC.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 15, 2013; the National Arbitration Forum received payment on November 18, 2013.
On November 25, 2013, REGISTRAR OF DOMAIN NAMES REG.RU LLC confirmed by e-mail to the National Arbitration Forum that the <amway-eurasia.com> domain name is registered with REGISTRAR OF DOMAIN NAMES REG.RU LLC and that Respondent is the current registrant of the name. REGISTRAR OF DOMAIN NAMES REG.RU LLC has verified that Respondent is bound by the REGISTRAR OF DOMAIN NAMES REG.RU 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 November 25, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 16, 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@amway-eurasia.com. Also on November 25, 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 December 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Alticor Inc., is one of the world’s largest direct selling companies. Its AMWAY trademark is used in connection with a product line that includes personal care products, cosmetics, nutrition supplements, and all-purpose cleaning products. Complainant owns rights in the AMWAY mark through registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 707,656 registered November 29, 1960).
Respondent, PrivacyProtect.org / Domain Admin, registered the disputed domain name on September 30, 2013. The website resolving from the <amway-eurasia.com> domain name offers Complainant’s products for sale without Complainant’s authorization, including Complainant’s AMWAY Home 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."
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 Panel finds that Complainant’s registration of the AMWAY mark with the USPTO establishes its rights in the mark under Policy ¶ 4(a)(i) even though Respondent appears to reside in Australia. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to 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).
Complainant next alleges that the<amway-eurasia.com> domain name is confusingly similar to Complainant’s AMWAY mark because the domain name fully incorporates Complainant’s mark and merely adds a gTLD, a hyphen, and the geographic indicator, “Eurasia.” A domain name’s gTLD and its inclusion of a hyphen are irrelevant. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). A domain name is confusingly similar to a complainant’s mark where the domain name fully incorporates the mark and merely adds a geographic indicator. See, e.g., Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name <net2phone-europe.com> is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"). The disputed domain name’s added term “Eurasia” is a geographic indicator. Accordingly, the Panel finds that the <amway-eurasia.com> domain name is confusingly similar to Complainant’s AMWAY mark under Policy ¶ 4(a)(i).
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).
Complainant has not authorized Respondent to use its AMWAY mark in a domain name. The WHOIS information identifies the registrant of the <amway-eurasia.com> domain name as “PrivacyProtect.org / Domain Admin.” The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See, e.g., 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).
The website resolving from the <amway-eurasia.com> domain name offers Complainant’s products for sale without Complainant’s authorization, including Complainant’s AMWAY Home products. Respondent’s website offers Complainant’s AMWAY Home cleaning products as well as other products under the headings of “Beauty and Body Care,” “Home,” and “Healthy Food.” The Panel finds that Respondent’s use of the <amway-eurasia.com> domain name 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 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.”).
In addition to offering Complainant’s products for sale, Respondent’s website prominently displays Complainant’s AMWAY mark. A respondent demonstrates bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) where the disputed domain name is registered and used to sell the complainant’s products without authorization using the complainant’s mark. See, e.g., G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii).
Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv), because the <amway-eurasia.com> domain name and its resolving website lead to confusion with Complainant’s AMWAY mark and create the false impression that Respondent’s website is sponsored by Complainant. A respondent demonstrates bad faith under Policy ¶ 4(b)(iv) by registering and using a domain name that is obviously connected to a complainant’s mark for the respondent’s own commercial gain. See, Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003)(the respondent demonstrated bad faith under Policy ¶ 4(b)(iv) where the contents of website, together with the domain name, created the incorrect impression that the respondent was either the exclusive distributor or a subsidiary of the complainant or that the complainant had approved the use of the domain name).
Respondent registered the disputed domain name with actual notice of Complainant’s rights in the AMWAY mark, which is evidence of Respondent’s bad faith registration and use of the <amway-eurasia.com> domain name pursuant to Policy ¶ 4(a)(iii). A respondent demonstrates bad faith under Policy ¶ 4(a)(iii) by registering a disputed domain name with actual notice of the complainant’s rights in the appropriated mark. See, e.g., Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amway-eurasia.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 2, 2014
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