Alticor Inc. v Gregory Smith
Claim Number: FA1403001548551
Complainant is Alticor Inc. (“Complainant”), represented by Kenneth A. Coleman of Warner Norcross & Judd LLP, Michigan, USA. Respondent is Gregory Smith (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iamamway.com>, registered with GODADDY.COM, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 14, 2014; the National Arbitration Forum received payment on March 14, 2014.
On March 14, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <iamamway.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, 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 March 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 2014 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@iamamway.com. Also on March 17, 2014, 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.
Respondent submitted a response that was received on April 7, 2014. However, the format of the response was corrupt and unable to be opened by the Forum. The Forum reached out to Respondent on April 7, 2014, and informed Respondent of this issue and requested that Respondent resubmit the response document in an alternate, readable, format. Respondent did not respond to this request. The Panel notes that ICANN Supplemental Rule 5(a) states that, in part, “[t]he response shall be submitted in electronic form.” This necessarily implies that the response be submitted be a form which is accessible to the Forum and the Panel.
Respondent did not submit a readable copy of its response until April 14, 2014, one week after the due date. Therefore, the Arbitrator determines that a timely response was not submitted by Respondent.
On April 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <iamamway.com> domain name is confusingly similar to Complainant’s AMWAY mark.
2. Respondent does not have any rights or legitimate interests in the <iamamway.com> domain name.
3. Respondent registered and uses the <iamamway.com> domain name in bad faith.
B. Respondent did not submit a timely response.
Complainant uses the AMWAY mark in connection with the sale of goods through independent distributors. Complainant has registered the AMWAY mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 707.656 registered Nov. 29, 1960).
Respondent registered and is using the <iamamway.com> domain name for the purpose of selling AMWAY goods.
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.
The Panel finds that Complainant’s USPTO registration of its AMWAY mark sufficiently demonstrates rights under Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Respondent’s <iamamway.com> domain name simply adds the phrase “I am” and the gTLD “.com” to Complainant’s mark, which is not enough to distinguish the disputed domain name from the AMWAY mark. See Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 claims that Respondent was formerly an independent distributor of AMWAY goods, and thus well aware of an agreement he signed forbidding him from using the AMWAY mark in any manner without Complainant’s prior approval. Complainant argues that Respondent is not otherwise commonly known by the <iamamway.com> domain name. The WHOIS information as lists Respondent as “Gregory Smith.” Thus, the Panel finds that Respondent is not commonly known by the <iamamway.com> domain name under Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant provides an exhibit of the domain name’s use for purposes of selling AMWAY goods, an unauthorized use of the AMWAY mark under its distribution arrangement with Respondent. Complainant alleges that it is well established that distributors, such as Respondent, do not have an inherent right to use the trademarks associated with the goods they distribute. In Associated Materials, Inc. v. Perma Well, Inc., FA 154121 (Nat. Arb. Forum May 23, 2003) the panel declined to find the Respondent had a Policy ¶ 4(c)(i) bona fide offering of goods, because although a distribution agreement gave the respondent authority to sell the complainant’s goods, the respondent was out of bounds in registering confusingly similar domain names in furtherance of its distribution sales. The Panel finds that Respondent has failed to make a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent was an authorized distributor of AMWAY goods and therefore had actual knowledge of Complainant’s rights in its AMWAY mark when he registered and used the mark, against the distribution agreement terms, showing bad faith. The Panel may agree and finds Policy ¶ 4(a)(iii) bad faith. See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <iamamway.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 21, 2014
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