Alticor Inc. v. Nguyen Tri Thuc
Claim Number: FA1311001530226
Complainant is Alticor Inc. (“Complainant”), represented by Kenneth A. Coleman of Warner Norcross & Judd LLP, Michigan, USA. Respondent is Nguyen Tri Thuc (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amwayvungtau.com>, registered with MAT BAO TRADING & SERVICE COMPANY LIMITED D/B/A MAT BAO.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch 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 27, 2013, MAT BAO TRADING & SERVICE COMPANY LIMITED D/B/A MAT BAO confirmed by e-mail to the National Arbitration Forum that the <amwayvungtau.com> domain name is registered with MAT BAO TRADING & SERVICE COMPANY LIMITED D/B/A MAT BAO and that Respondent is the current registrant of the name. MAT BAO TRADING & SERVICE COMPANY LIMITED D/B/A MAT BAO has verified that Respondent is bound by the MAT BAO TRADING & SERVICE COMPANY LIMITED D/B/A MAT BAO 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 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 17, 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@amwayvungtau.com. Also on November 27, 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 John J. Upchurch 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.
i. Respondent is not now, and never has been, commonly known by, nor does it have any other legitimate rights in, the names AMWAY or AMWAYVUNGTAU. Respondent is in no way licensed or authorized to use the AMWAY mark in domain names.
ii. Respondent’s use of Complainant’s well-known AMWAY mark to sell unrelated products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
i. Respondent’s use of a confusingly similar domain to divert users to a site where Respondent sells unrelated products demonstrates that Respondent registered and is using the domain name in bad faith.
ii. Respondent is clearly portraying itself as an affiliate of Complainant, when it is not.
iii. Complainant’s AMWAY mark is well-known and famous worldwide, and as such Respondent must have known of the mark.
1. Respondent registered the <amwayvungtau.com> domain name on April 14, 2013.
1. Respondent’s <amwayvungtau.com> domain name is confusingly similar to Complainant’s AMWAY mark.
2. Respondent does not have any rights or legitimate interests in the <amwayvungtau.com> domain name.
3. Respondent registered or used the <amwayvungtau.com> domain name in bad faith.
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 contends that it is one of the world’s largest direct selling companies. Complainant has marketed AMWAY brand products for over 50 years. Complainant alleges that its AMWAY product line includes more than 450 personal care, nutrition and wellness, home care, home living, commercial products. Complainant claims that it is the owner of trademark registrations with the USPTO for the AMWAY mark (e.g., Reg. No. 707,656, registered November 29, 1960). See Complainant’s Exhibit A. The Panel notes that Respondent appears to reside in Vietnam. However, the Panel finds that Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent resides, so long as it can establish rights in the mark in some jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Thus, the Panel finds that Complainant has established rights in the AMWAY mark pursuant to Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. 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).”).
Complainant alleges that Respondent’s <amwayvungtau.com> domain name is unquestionably confusingly similar to Complainant’s famous AMWAY mark as it simply contains Complainant’s AMWAY mark followed by the geographic designation “Vung Tau.” The Panel holds that Respondent’s inclusion of a geographic designation to Complainant’s mark in a domain name is inconsequential to a Policy ¶ 4(a)(i) analysis. See Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part). Complainant claims that the addition of the gTLD “.com” does nothing to distinguish the domain name from Complainant’s mark. The Panel agrees with Complainant and hold that Respondent’s addition of a gTLD is irrelevant to Policy ¶ 4(a)(i). See 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.”). Therefore, the Panel concludes that Respondent’s <amwayvungtau.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); 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 argues that Respondent is not now, and never has been, commonly known by, nor does it have any other legitimate rights in, the names AMWAY or AMWAYVUNGTAU. Complainant contends that it has never authorized Respondent to use the AMWAY mark in any domain name. Complainant also contends that Respondent is not a subsidiary or affiliate of Complainant, nor is he currently one of Complainant’s IBOs. The Panel observes that the WHOIS record for the <amwayvungtau.com> domain name identifies “Nguyen Tri Thuc” as the registrant. Consequently, the Panel determines that Respondent is not commonly known by the <amwayvungtau.com> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant asserts that Respondent’s use of Complainant’s well-known AMWAY mark to sell unrelated products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel notes that Respondent’s <amwayvungtau.com> domain name resolves to a Vietnamese language website titled “HANG JEANS,” which appears to sell jeans and other clothing products. See Complainant’s Exhibit B. In Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003), the panel held that “Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii). Accordingly, the Panel determines that Respondent is not using the <amwayvungtau.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant asserts that Respondent’s use of a confusingly similar domain to divert users to a site where Respondent sells unrelated products demonstrates that Respondent registered and is using the domain name in bad faith. The Panel notes that Respondent’s <amwayvungtau.com> domain name resolves to a webpage which appears to sell jeans and other clothing. See Complainant’s Exhibit B. The Panel finds that Respondent is attracting consumers away from Complainant and to its own website for which it commercially benefits, and concludes that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant argues that its AMWAY mark is well-known and famous worldwide. Complainant alleges that it has used its AMWAY mark for 50 years and in over 80 countries, including Vietnam. Consequently, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith 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 "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amwayvungtau.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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