Alticor Inc. v. Yuriy Izmaylov
Claim Number: FA1311001530223
Complainant is Alticor Inc. (“Complainant”), represented by Kenneth A. Coleman of Warner Norcross & Judd LLP, Michigan, USA. Respondent is Yuriy Izmaylov (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amway-ukraina.net>, registered with REGIONAL NETWORK INFORMATION CENTER, JSC d/b/a RU-CENTER.
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.
James A. Carmody, Esq., 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. The Complaint was submitted in both English and Russian.
On November 20, 2013, REGIONAL NETWORK INFORMATION CENTER, JSC d/b/a RU-CENTER confirmed by e-mail to the National Arbitration Forum that the <amway-ukraina.net> domain name is registered with REGIONAL NETWORK INFORMATION CENTER, JSC d/b/a RU-CENTER and that Respondent is the current registrant of the name. REGIONAL NETWORK INFORMATION CENTER, JSC d/b/a RU-CENTER has verified that Respondent is bound by the REGIONAL NETWORK INFORMATION CENTER, JSC d/b/a RU-CENTER 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 20, 2013, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of December 10, 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-ukraina.net. Also on November 20, 2013, the Russian 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 December 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s < amway-ukraina.net > domain name, the domain name at issue, is confusingly similar to Complainant’s AMWAY mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is one of the world’s largest direct selling companies, for which it uses its AMWAY mark. Complainant’s product line includes more than 450 personal care, nutrition and wellness, home care, home living, and commercial products such as cosmetics, detergents, and car care products as well as hotel and real estate services. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the AMWAY mark (Reg. No. 707,656 registered Nov. 29, 1960). The <amway-ukraina.net> domain name is confusingly similar to the AMWAY mark. Respondent’s addition of “ukraina,” a hyphen, and a generic top-level domain (“gTLD”) does not negate a finding of confusing similarity.
Respondent does not have rights or legitimate interests in the disputed domain name. The WHOIS record for the <amway-ukraina.net> domain name lists “Yuriy Izmaylov” as the disputed domain name registrant. Respondent is not affiliated with Complainant and not authorized to be using the AMWAY mark in a domain name or otherwise. The <amway-ukraina.net> domain name resolves to a website where Respondent offers for sale many of Complainant’s products, including Complainant’s AMWAY Home, NUTRILITE, ARTISTRY, ZOOM, and SATINIQUE products. Respondent’s use of the AMWAY mark and other marks owned by Complainant will clearly lead to confusion that Respondent is a subsidiary or affiliate of Complainant when this is not the case. Respondent is creating the false impression that it is an authorized distributor of Complainant’s product, therefore demonstrating bad faith. According to Complainant, the only purpose Respondent could have for adopting the <amway-ukraina.net> domain name would be to illegitimately profit from the association of the domain name with Complainant. Complainant and its AMWAY mark are internationally famous, and well known. The <amway-ukraina.net> domain name was registered on October 4, 2012.
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.”).
Complainant is one of the world’s largest direct selling companies, for which it uses its AMWAY mark. Complainant's product line includes more than 450 personal care, nutrition and wellness, home care, home living, and commercial products such as cosmetics, detergents, and car care products as well as hotel and real estate services. Complainant is the owner of the USPTO registration for the AMWAY mark (Reg. No. 707,656 registered Nov. 29, 1960). Registration of a trademark, independent of whether the registration is in the country in which the respondent resides, satisfies the Policy ¶ 4(a)(i) required showing of rights in the mark. 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 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, Complainant has rights in the AMWAY mark under Policy ¶ 4(a)(i).
The <amway-ukraina.net> domain name is confusingly similar to the AMWAY mark. Respondent’s addition of “ukraina,” a hyphen, and a gTLD does not negate a finding of confusing similarity. The addition of a geographic term has been held not to negate confusing similarity. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Further, punctuation, such as hyphens, and gTLDs are irrelevant to an analysis under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, Respondent’s <amway-ukraina.net> domain name is confusingly similar to the AMWAY mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Complainant asserts that Respondent is not now, and has never been, commonly known by the disputed domain name. The WHOIS record for the <amwaycom.net> domain name lists “Sergey A Abdulhanov” as the domain name registrant, and Complainant claims that Respondent is not in any way affiliated with or authorized by Complainant, and Respondent is not an authorized independent business owner for Complainant’s sales network. Further, Complainant maintains that, even if Respondent were an authorized independent business owner seller, Respondent still would not have consented to the use the AMWAY trademark in a domain name or on the resolving website. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. Therefore, Respondent is not commonly known by the <amwaycom.net> domain name under Policy ¶ 4(c)(ii).
The <amway-ukraina.net> domain name resolves to a website where Respondent offers for sale many of Complainant’s products, including Complainant’s AMWAY Home, NUTRILITE, ARTISTRY, ZOOM, and SATINIQUE products. Marketing a complainant’s products on a confusingly similar domain is not a use which justifies the protections of Policy ¶¶ 4(c)(i) and 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). Accordingly, Respondent’s use of the <amway-ukraina.net> domain name 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).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s use of the AMWAY mark and other marks owned by Complainant will clearly lead to confusion on the part of the public by suggesting that Respondent is a subsidiary or affiliate of Complainant when this is not the case. Respondent is creating the false impression that it is an authorized distributor of Complainant’s product, therefore demonstrating bad faith. According to Complainant, the only purpose Respondent could have for adopting the <amwaycom.net> domain name would be to illegitimately profit from the association of the domain name with Complainant. The <amwaycom.net> domain name resolves to a website which offers information about Complainant’s products and offers Complainant’s products for sale in association with the AMWAY mark. In Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000), the panel found that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods. Therefore, Respondent registered and uses the <amwaycom.net> domain name in a bad faith attempt to take commercial advantage of Internet users’ mistakes under Policy ¶ 4(b)(iv).
Complainant's AMWAY mark is famous worldwide and has been used in over 80 countries, including Russia. While some panels have concluded that constructive notice is not sufficient to support a bad faith finding, due to the fame of Complainant's mark and the use Respondent has made of the website associated with the domain name in dispute, it is clear that Respondent had actual knowledge of the mark and Complainant's rights. Thus, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
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-ukraina.net> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 20, 2013
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