Alticor Inc. v. Leshkov Leonid
Claim Number: FA0612000861134
Complainant is Alticor Inc. (“Complainant”), represented by R.
Scott Keller, of Warner Norcross
& Judd LLP, 900 Fifth Third Center,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <amwayest.com>, registered with Stargate Holdings Corp.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 5, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 6, 2006.
On December 11, 2006, Stargate Holdings Corp. confirmed by e-mail to the National Arbitration Forum that the <amwayest.com> domain name is registered with Stargate Holdings Corp. and that Respondent is the current registrant of the name. Stargate Holdings Corp. has verified that Respondent is bound by the Stargate Holdings Corp. 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 December 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 2, 2007 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@amwayest.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 6, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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." 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 <amwayest.com> domain name is confusingly similar to Complainant’s AMWAY mark.
2. Respondent does not have any rights or legitimate interests in the <amwayest.com> domain name.
3. Respondent registered and used the <amwayest.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Alticor Inc., is
one of the world’s largest direct selling companies whose product line includes
more than 450 personal care, nutrition and wellness, home care, and commercial
products. Complainant owns numerous
marks for use in connection with the provision of these services, including the
AMWAY mark which has been registered with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 845,230 issued March 5, 1968).
Respondent registered the <amwayest.com> domain name on July 16, 2004. Respondent’s disputed domain resolves to a website that sells Complainant’s products without Complainant authorization.
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. 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.”).
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.
Complainant has established rights in the AMWAY mark through registration with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant contends that Respondent’s <amwayest.com> domain
name is confusingly similar to Complainant’s marks. Respondent’s domain name contains
Complainant’s entire AMWAY mark and adds an “est” which is a common
abbreviation for the country of
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have rights or legitimate interests in the <amwayest.com> domain name. Complainant’s assertion is sufficient to establish a prima facie case under Policy ¶ 4(a)(ii) and thereby shifts the burden to Respondent to set forth evidence of rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is neither commonly known by the <amwayest.com> domain name nor licensed to register domain names featuring Complainant’s AMWAY mark. Without evidence suggesting otherwise, the Panel finds that Respondent has not established rights or legitimate interests under Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Moreover, Complainant contends that Respondent is using the <amwayest.com> domain name to operate a website that allows Internet users to purchase Complainant’s goods without Complainant’s authorization. In Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001), the panel found no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant. As such, in the instant case, the Panel finds that Respondent’s use of the <amwayest.com> domain name is not 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). See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <amwayest.com> domain name to sell
Complainant’s products without authorization to do so. The Panel finds that Respondent’s use
constitutes a disruption of Complainant’s business and is clear evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2
Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of
Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith
use under Policy ¶ 4(b)(iii).”); see also
Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent
registered each of the disputed domain names in order to gain customers and to
disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR
equipment.”).
Additionally, Respondent’s use of
the disputed domain name will likely cause confusion among Internet users as to
Complainant’s sponsorship of or affiliation with the resulting website. The Panel finds this to be further evidence
of Respondent’s bad faith registration and use pursuant to Policy ¶
4(b)(iv). See AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO
May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services
without Complainant's authority . . . is bad faith use of a confusingly similar
domain name.”); see also Hunter Fan Co. v. MSS,
FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the
respondent used the disputed domain name to sell the complainant’s products
without permission and mislead Internet users by implying that the respondent
was affiliated with the complainant).
Finally, the Panel infers from
Respondent’s use of the <amwayest.com> domain name that
Respondent was aware of Complainant’s rights in the AMWAY mark prior to
registration. As such the Panel finds
that registration of a confusingly similar domain name despite actual knowledge
of Complainant’s rights in a mark is evidence of bad faith registration and use
under Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual knowledge of a commonly known mark at the time of
registration); see also G.D. Searle &
Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (“[I]t can be
inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX
mark because Respondent is using the CELEBREX mark as a means to sell
prescription drugs, including Complainant’s CELEBREX drug.”).
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amwayest.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: January 22, 2007
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