Alticor Inc. v. amwaypk / karnal imran / Muhmmad Afzel
Claim Number: FA1311001532128
Complainant is Alticor Inc. (“Complainant”), represented by Kenneth A. Coleman of Warner Norcross & Judd LLP, Michigan, USA. Respondent is amwaypk / karnal imran / Muhmmad Afzel (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amwaypk.com>, registered with Cloud Group Limited.
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 27, 2013; the National Arbitration Forum received payment on December 2, 2013.
On November 28, 2013, Cloud Group Limited confirmed by e-mail to the National Arbitration Forum that the <amwaypk.com> domain name is registered with Cloud Group Limited and that Respondent is the current registrant of the name. Cloud Group Limited has verified that Respondent is bound by the Cloud Group Limited 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 2, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@amwaypk.com. Also on December 2, 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 30, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <amwaypk.com> 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, Alticor Inc., is one of the world’s largest selling companies. Complainant’s product line includes more than 450 personal care, nutrition and wellness, home care, home living, and commercial items and 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). The domain name <amwaypk.com> is confusingly similar to Complainant’s famous AMWAY mark as it simply contains Complainant’s AMWAY mark followed by the geographic designation “pk.” Finally, the addition of the generic top-level domain (“gTLD”) “.com” does nothing to distinguish the domain name from Complainant’s famous mark.
Respondent does not have any rights or legitimate interests in the names AMWAY or AMWAYPK. Respondent is not now, and never has been, commonly known by, nor does it have any other legitimate rights in the names AMWAY or AMWAYPK. Respondent is portraying itself as a subsidiary or affiliate of Complainant, when it is not. Complainant’s AMWAY mark is well-known and famous worldwide.
Respondent registered the <amwaypk.com> domain name on August 19, 2013. On December 13, 2013, Respondent sent an email to the Forum stating “I will chang desing and name, give me some time, thanks.” The Panel finds that this communication is neither a consent to transfer nor a Response. Accordingly, this case is proceeding a default matter.
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's product line includes more than 450 personal care, nutrition and wellness, home care, home living, and commercial products and Complainant is the owner of trademark registrations with the USPTO for the AMWAY mark (e.g., Reg. No. 707,656, registered November 29, 1960). While Respondent appears to reside and operate in Pakistan, it is irrelevant under Policy ¶ 4(a)(i) whether Complainant registers its mark in the country in which Respondent resides. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Thus, the Panel finds that Complainant’s registration of the AMWAY mark with the USPTO sufficiently proves its rights in the mark according to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <amwaypk.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 “pk.” Respondent’s inclusion of a geographic term is inconsequential to a Policy ¶ 4(a)(i) determination. See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”). Finally, the addition of the gTLD “.com” does nothing to distinguish the domain name from Complainant’s famous mark. Respondent’s addition of a gTLD does not differentiate the domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Accordingly, Respondent’s <amwaypk.com> domain name is confusingly similar to Complainant’s AMWAY mark pursuant to 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.”).
Respondent is not now, and never has been, commonly known by, nor does it have any other legitimate rights in the names AMWAY or AMWAYPK. Complainant never authorized Respondent to use the AMWAY mark in any domain name, and Respondent is not a subsidiary or affiliate of Complainant nor is he currently one of Complainant’s authorized IBOs. The <amwaypk.com> domain name is listed as “amwaypk / karnal imran / Muhmmad Afzel” in the WHOIS record. While Respondent appears to refer to itself as AMWAYPK in the WHOIS record, Respondent fails to provide additional evidence that it is commonly known by the disputed domain name. Therefore, the Panel holds that Respondent is not commonly known by the <amwaypk.com> domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Respondent is clearly portraying itself as a subsidiary or affiliate of Complainant, when it is not. Respondent’s <amwaypk.com> domain name links to a website purporting to provide Complainant’s AMWAY personal care products. Respondent’s conduct creates the false impression that it is an authorized distributor of Complainant’s products, and Respondent gains no right or interest under Policy ¶ 4(c)(i), (iii) when the domain name is being used to sell off competing goods under the AMWAY mark. See, e.g., 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).”). Since Respondent is attempting to pass itself off as Complainant, the Panel holds that Respondent is not using the <amwaypk.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. See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is clearly portraying itself as a subsidiary or affiliate of Complainant, when it is not. Respondent’s <amwaypk.com> domain name resolves to a webpage which purports to provide Complainant’s AMWAY personal care products. Respondent’s conduct in creating the false impression that it is an authorized distributor of Complainant’s products constitutes bad faith. In Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002), the panel held that “Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.” Therefore, Respondent has registered and is using the <amwaypk.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant's AMWAY mark is well-known and famous worldwide and has been in use for 50 years and in over 80 countries, including Pakistan, with annual sales in the billions of dollars. Therefore, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Moreover, because Respondent uses the AMWAY mark itself in the marketing of the goods sold through the disputed domain name, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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 <amwaypk.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 2, 2014
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