Alticor Inc. v. minoru ikeda / bestcareonline corporation
Claim Number: FA1311001531883
Complainant is Alticor Inc. (“Complainant”), represented by Kenneth A. Coleman of Warner Norcross & Judd LLP, Michigan, USA. Respondent is minoru ikeda / bestcareonline corporation (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amwaybuys.com>, registered with GMO Internet, Inc. d/b/a onamae.com.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 26, 2013; the National Arbitration Forum received payment on November 27, 2013. The Complaint was submitted in both English and Japanese.
On November 26, 2013, GMO Internet, Inc. d/b/a onamae.com confirmed by e-mail to the National Arbitration Forum that the <amwaybuys.com> domain name is registered with GMO Internet, Inc. d/b/a onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a onamae.com 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 9, 2013, the Forum served the Japanese language Complaint and all Annexes, including a Japanese language Written Notice of the Complaint, setting a deadline of December 30, 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@amwaybuys.com. Also on December 9, 2013, the Japanese 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 January 3, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Japanese, thereby making the language of the proceedings in Japanese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
a. Complainant, Alticor Inc., is one of the world’s largest direct selling companies. Complainant has marketed AMWAY brand products for over 50 years. The AMWAY product line includes more than 450 personal care, nutrition and wellness, home care, home living, and commercial products.
b. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AMWAY mark (e.g., Reg. No. 707,656, registered November 29, 1960).
c. The domain name <amwaybuys.com> is unquestionably confusingly similar to Complainant’s famous AMWAY mark as it simply contains Complainant’s AMWAY mark followed by the generic word “buys.” Finally, the addition of the generic top-level domain (“gTLD”) “.com” likewise does nothing to distinguish the domain name from Complainant’s famous mark.
d. Respondent does not have any rights or legitimate interests in AMWAY or AMWAYBUYS.
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 AMWAYBUYS.
ii. Respondent is clearly portraying itself as a subsidiary or affiliate of Complainant, when it is not.
e. Respondent’s registration of the domain to divert persons looking for Complainant on the Internet constitutes bad faith.
i. Respondent is clearly portraying itself as a subsidiary or affiliate of Complainant, when it is not.
ii. Complainant’s AMWAY mark is well known and famous worldwide.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Alticor, Inc. of Ada, MI, USA. Complainant is the owner of a domestic registration for the AMWAY mark which it has continuously used at least since 1960 in connection with its direct sales and services business. Complainant claims to own nearly 2,000 related AMWAY marks registered globally in more than 150 countries. Complainant also claims to own more than 1,300 domain names including, <amway.com>, <amwaylive.com> and <amwayproduct.com>.
Respondent is Minoru Ikeda/Bestcareoline Corporation of Miyazaki, Japan. Respondent’s registrar’s address is listed as Tokyo, Japan. Respondent registered the <amwaybuys.com> on or about November 2, 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 asserts that it is one of the world’s largest direct selling companies. Complainant claims that it has marketed AMWAY brand products for over 50 years. Complainant contends that the AMWAY product line includes more than 450 personal care, nutrition and wellness, home care, home living, and commercial products. Complainant alleges 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 although Respondent resides in Japan, it is irrelevant under Policy ¶ 4(a)(i) whether Complainant register its mark in the country in which Respondent resides, so long as it demonstrates rights in the mark in some jurisdiction. See 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). The Panel finds that Complainant’s registration of the AMWAY mark with the USPTO proves its rights in the mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant argues that Respondent’s <amwaybuys.com> domain name is unquestionably confusingly similar to Complainant’s famous AMWAY mark as it contains Complainant’s full AMWAY mark followed by the generic word “buys.” The Panel notes that Respondent’s inclusion of a generic term does not differentiate Respondent’s domain name from Complainant’s AMWAY mark under Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Finally, Complainant alleges that the addition of the gTLD “.com” likewise does nothing to distinguish the domain name from Complainant’s famous mark. In Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007), the panel found that “[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.” The Panel here finds that Respondent’s addition of a gTLD to Complainant’s AMWAY mark is irrelevant to Policy ¶ 4(a)(i), and that Respondent’s <amwaybuys.com> domain name is confusingly similar to Complainant’s AMWAY mark according to Policy ¶ 4(a)(i).
The Panel recognizes that 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). The Complainant has met this burden.
Complainant claims 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 AMWAYBUYS. Complainant asserts that it never authorized Respondent to use the AMWAY mark in any domain name. Complainant alleges that Respondent is not a subsidiary or affiliate of Complainant nor is he currently one of Complainant’s authorized IBOs. The Panel notes that the WHOIS information lists “minoru ikeda / bestcareonline corporation” as the registrant of the <amwaybuys.com> domain name. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that 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 respondent was commonly known by the disputed domain name. The Panel here finds that Respondent is not commonly known by the <amwaybuys.com> domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent is clearly portraying itself as a subsidiary or affiliate of Complainant, when it is not. The Panel notes that Respondent’s <amwaybuys.com> domain name resolves to a Japanese language site that appears to sell Complainant’s products, which may give Internet users the impression that Respondent is an affiliate or subsidiary of Complainant. See Complainant’s Exhibit B. Previous panels have determined that a respondent’s use of a disputed domain name to sell a complainant’s products does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors). The Panel here finds that Respondent is not using the <amwaybuys.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.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant asserts that Respondent is clearly portraying itself as a subsidiary or affiliate of Complainant, when it is not. The Panel notes that Respondent’s <amwaybuys.com> domain name leads to a webpage that purports to sell Complainant’s AMWAY products, stating, “In our company, as Amway purchase specialty store to be able to sell it in peace a long time. Of course, expensive purchase, so we thoroughly to the customer information management, you can sell it in peace.” See Complainant’s Exhibit B. Complainant contends that Respondent’s conduct in creating the false impression that it is an affiliate of Complainant or an authorized distributor of Complainant’s products constitutes bad faith. The Panel finds that Respondent is using the <amwaybuys.com> domain name to portray itself as a subsidiary or affiliate of Complainant, which misleads and diverts Internet users away from Complainant’s website and to Respondent’s website, and find bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <amwaybuys.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 17, 2014
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