NATIONAL ARBITRATION FORUM

 

DECISION

 

Alticor Inc. v. Anton Suprun a/k/a Dinamika Inc.

Claim Number:  FA0410000341230

 

PARTIES

Complainant is Alticor Inc. (“Complainant”), represented by R. Scott Keller, of Warner Norcross & Judd LLP, 900 Fifth Third Center, 111 Lyon Street, N.W., Grand Rapids, Michigan 49503.  Respondent is Anton Suprun a/k/a Dinamika Inc. (“Respondent”), 47337 Middle Bluff Place, Patomac Falls, Virginia 20165.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <amway-ru.com>, registered with Register.com.

 

PANEL

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 13, 2004; the Forum received a hard copy of the Complaint on October 18, 2004.

 

On October 14, 2004, Register.com confirmed by e-mail to the Forum that the domain name <amway-ru.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On October 22, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 11, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@amway-ru.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On November 19, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <amway-ru.com> domain name is confusingly similar to Complainant’s AMWAY mark.

 

2.      Respondent does not have any rights or legitimate interests in the <amway-ru.com> domain name.

 

3.      Respondent registered and used the <amway-ru.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Amway Corporation was founded in 1959.  In 2000, Amway Corporation changed its name to Alticor Inc. and changed the name of one of its subsidiaries to Amway Corporation.  Complainant is one of the world’s largest direct selling companies.  Through a network of more than 3.6 million independent business owners, Complainant distributes products under the AMWAY trademark and other brands of products in over 80 countries and territories.  At the end of fiscal year 2003, Complainant’s worldwide sales totaled over $4.5 billion.

 

The AMWAY product line includes more than 450 personal care, nutrition and wellness, home care, home living, and commercial products.

 

Complainant owns over 30 U.S. registrations for its AMWAY mark, including registration numbers 1,338,634 (issued June 4, 1985 for “oil additive”), 1,526,319 (issued Feb. 28, 1989 for “water softening compound; water hardness test strips”), 845,230 (issued Mar. 5, 1968 for “empty soap dispensers, plastic bottles and tubes, shopping bags, paperboard boxes, laundry bags and trays”), 716,672 (issued June 13, 1961 for “cleaners and cleaning compounds, specifically, abrasive and polishing cleaners”), and 707,656 (issued Nov. 29, 1960 for “waxes and polishes, particularly furniture polishes and floor waxes”).  Complainant also owns over 2,600 trademark registrations in over 100 countries for marks containing the term AMWAY, including 12 registrations issued by the Russian Trademark Office.

 

Respondent became an authorized independent business owner (“IBO”) of Complainant’s company in 1998 and distributed Complainant’s AMWAY products in Hungary.  On October 26, 1998, Respondent registered the domain name <amway.ru>.  Respondent registered the domain name <amway-ru.com> on March 22, 2001.  However, Complainant’s IBOs are strictly prohibited from using Complainant’s trademarks in connection with Internet websites.  Complainant warned Respondent about its unauthorized use of Complainant’s AMWAY trademark in a suspension letter dated May 4, 2001 (Exhibit F).  Respondent ignored Complainant’s warnings.  On July 19, 2001, Complainant sent another warning to Respondent that stated Respondent’s Amway membership would be revoked unless Respondent stopped its unauthorized activity within two weeks (Exhibit G).  In August 2001, Complainant terminated Respondent’s IBO status due to the unauthorized activity on the part of Respondent. 

 

Sometime in 2003, Respondent offered the <amway-ru.com>domain name registration for sale at the domain name <amway.ru>.  Complainant anonymously contacted Respondent through a third-party intermediary seeking to purchase the domain name.  Respondent agreed to sell the domain name registration for $1,000.00.  Respondent has never attached the domain name <amway-ru.com> to an active website.

 

DISCUSSION

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."

 

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.

 

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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the AMWAY mark pursuant to paragraph 4(a)(i) of the Policy as the result of its numerous registrations of the mark with various legitimate governmental authorities worldwide.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark).

 

The domain name <amway-ru.com> incorporates Complainant’s AMWAY mark in its entirety.  Respondent has merely added a hyphen to separate Complainant’s mark from the letters “ru,” a common abbreviation for the country code of Russia.  It is established that the addition of a hyphen in a domain name is of little significance.  Likewise, the addition of an abbreviation for a common designation of a country has been found to be insufficient to alleviate the confusing similarity that arises by incorporating a third-party mark in a domain name.  Therefore, the domain name <amway-ru.com> is confusingly similar to Complainant’s AMWAY mark pursuant to paragraph 4(a)(i) of the Policy.  See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code '.us' fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to Complainant's TROPAR mark); see also MFI UK Ltd. v. Jones, D2003-0102 (WIPO May 8, 2003) (finding the domain name <mfiuk.com> confusingly similar to Complainant’s MFI mark because the addition of the letters “UK” were merely a common designation of the United Kingdom, which was where Complainant engaged in business); see also Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Hyphens fail to alleviate the identical nature of a combination of words existing in a domain name from that of a registered mark.”); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”).

 

Complainant has established Policy ¶ 4(a)(i).

 

 

Rights or Legitimate Interests

 

The lack of a Response allows the Panel to accept all reasonable allegations set forth in the Complaint that pertain to paragraph 4(a)(ii) of the Policy as true unless clearly contradicted by the evidence.  See Allergan Inc. v. MedBotox Inc., FA 170639 (Nat. Arb. Forum Sept. 9, 2003) (“Respondent has not challenged the allegations in the Complaint. Under these circumstances it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant's allegations are true unless clearly contradicted by the evidence).

 

Furthermore, the failure of Respondent to respond to the Complaint may be construed as an implicit admission that Respondent lacks rights and legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”).

 

Since registering the domain name <amway-ru.com> in March 2001, Respondent has failed to attach an active website to the domain name.  It is established that such passive holding is insufficient to demonstrate that the domain name is used in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy.  See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).

 

Nothing in the record sufficiently indicates that Respondent is commonly known by the domain name <amway-ru.com> pursuant to paragraph 4(c)(ii) of the Policy.  The fact that Respondent has failed to attach an active website to the domain name is sufficient to indicate that Respondent is not commonly known by the domain name pursuant to paragraph 4(c)(ii) of the Policy.  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

 

Moreover, Respondent was not authorized to use Complainant’s AMWAY mark in a domain name pursuant to its contractual agreement to distribute Complainant’s products.  Such unauthorized use does not evidence rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.  See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“[U]nauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); see also Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding that Respondent lacked rights and legitimate interests in the domain name because Respondent was not authorized by Complainant to use its trademarks and the mark was distinct in its nature, such that one would not legitimately choose it unless seeking to create an impression of an association with Complainant).

 

Complainant has established Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant was authorized as an IBO for Complainant’s AMWAY business in 1998.  Respondent did not register the disputed domain name until March 22, 2001.  Therefore, Respondent had actual notice of Complainant’s AMWAY mark prior to registering the domain name that is confusingly similar to Complainant’s mark.  Registering a domain name one knows to be similar to another’s mark has been found to be evidence of bad faith registration and use.  See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”).

 

Respondent listed the <amway-ru.com> domain name registration for sale on the website attached to Respondent’s other registered domain name <amway.ru>.  This fact, combined with the fact that Respondent has not connected the disputed domain name to an active website, suggests that Respondent did not intend to actually use the disputed domain name except to sell it to a potential purchaser interested in a domain name that includes the term “amway.”  More likely than not, such an “interested” purchaser would be Complainant, or one of Complainant’s competitors, given the domain name includes Complainant’s trademark in its entirety.  Respondent agreed to sell the domain name registration for $1,000.00, which is in excess of any out-of-pocket expenses associated with the domain name, especially because there had been no apparent efforts to build an attached website.  Therefore, Respondent is in violation of paragraph 4(b)(i) of the Policy because Respondent registered the disputed domain name primarily to sell it to Complainant, or a competitor of Complainant’s business, for valuable consideration in excess of any documented out-of-pocket expenses directly related to the domain name.  See Koninklijke Philips Elec. N.V. v. Duplica Hugo Coppens, D2001-0312 (WIPO May 11, 2001) (finding that Respondent violated Policy ¶ 4(b)(i) based on correspondence between Respondent and Complainant and where the domain name was being offered for sale at GreatDomains.com for the price of $1,000); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because it offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that Respondent demonstrated bad faith when it requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).

 

Moreover, Respondent was a distributor of Complainant’s products and was not authorized to use Complainant’s AMWAY mark in a domain name.  Therefore, Respondent’s registration of a domain name that incorporated Complainant’s mark is evidence of bad faith registration and use pursuant to paragraph 4(a)(iii) of the Policy.  See Procter & Gamble Co. v. Hlad, FA 126656 (Nat. Arb. Forum Nov. 20, 2002) (finding that the disputed domain name was registered and used in bad faith where Respondent, a distributor of Complainant’s products who was not a licensee of Complainant, used Complainant’s mark in its domain name, suggesting a broader relationship with Complainant and fostering the inference that Respondent was the creator of Complainant’s products rather than a mere distributor); see also Assoc. Materials, Inc. v. Perma Well, Inc., FA 154121 (Nat. Arb. Forum May 23, 2003) (finding that Respondent’s actual knowledge of Complainant’s rights in the ULTRAGUARD mark, inferred from the fact that Respondent was a distributor of Complainant, along with Respondent being on notice of its own lack of rights evidenced that the domain name was registered and used in bad faith).

 

Complainant has established Policy ¶ 4(a)(iii).

 

DECISION

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-ru.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  November 29, 2004

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page