Alticor Inc. v. domain satici / 390401154152
Claim Number: FA1508001633813
Complainant is Alticor Inc. (“Complainant”), represented by Kenneth A. Coleman of Warner Norcross & Judd LLP, Michigan, USA. Respondent is domain satici / 390401154152 (“Respondent”), Turkey.
REGISTRAR AND <AMWAYSATINAL.COM> DOMAIN NAME
The domain name at issue is <amwaysatinal.com>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 18, 2015; the Forum received payment on August 18, 2015.
On August 18, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <amwaysatinal.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 August 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 2015 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@amwaysatinal.com. Also on August 20, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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" 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 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
a. Complainant has established rights in the AMWAY mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 707,656, registered November 29, 1960). Respondent’s <amwaysatinal.com> domain name, registered on April 29, 2015, is confusingly similar to Complainant’s AMWAY mark. The domain name incorporates Complainant’s mark in its entirety, adds the generic Turkish phrase “satinal,” and the generic top-level domain (“gTLD”) “.com.” These differences do not alleviate the confusing similarity between the domain name and Complainant’s AMWAY mark.
b. Respondent has no rights or legitimate interests in the <amwaysatinal.com> domain name. Respondent is not commonly known by the <amwaysatinal.com> domain name and has not been authorized to use the AMWAY mark in any manner. Further, Respondent’s use of the <amwaysatinal.com> domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
c. Respondent has registered and is using the <amwaysatinal.com> domain name in bad faith. Respondent’s bad faith is evident from Respondent’s attempt to falsely portray itself as an authorized retailer of Complainant’s products.
d. Lastly, Complainant’s AMWAY mark has no meaning outside of its connection with Complainant’s business and therefore it is inconceivable that Respondent registered the <amwaysatinal.com> domain name without knowledge of Complainant’s rights in the AMWAY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the AMWAY mark. Respondent’s domain name is confusingly similar to Complainant’s AMWAY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <amwaysatinal.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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 un<amwaysatinal.com> 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 contends that it has established rights in the AMWAY mark through registration with the USPTO (e.g., Reg. No. 707,656, registered November 29, 1960). Registration of a mark with the USPTO is sufficient evidence of a complainant’s rights in the mark. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”).
Complainant argues that Respondent’s <amwaysatinal.com> domain name is confusingly similar to Complainant’s AMWAY mark. Respondent’s <amwaysatinal.com> domain name incorporates the AMWAY mark in its entirety, adds the generic Turkish phrase “satinal,” and the gTLD “.com.” According to Complainant, the Turkish phrase “satinal” translates to English as “buy it.” The addition of a generic term or phrase and a gTLD to a complainant’s mark is not sufficient to differentiate an otherwise confusingly similar domain name from the mark. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the <amwaysatinal.com> domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel determines that Respondent’s <amwaysatinal.com> domain name is confusingly similar to the AMWAY mark according to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the domain name at issue in this proceeding. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the <amwaysatinal.com> domain name. To support this assertion, Complainant claims that Respondent has not been commonly known by the <amwaysatinal.com> domain name and has not been authorized by Complainant to use the AMWAY mark. WHOIS information indicates that the Respondent registered the domain as “domain satici.” This bears no resemblance to the <amwaysatinal.com> domain name. Based on the WHOIS information, a lack of authorization from the Complainant, and no information in opposition from the Respondent, the Panel concludes Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant claims that Respondent’s use of the <amwaysatinal.com> domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain name resolves to a website that prominently displays the AMWAY mark, displays information about Complainant’s products, and offers Complainant’s products for sale. The use of a domain name confusingly similar to a mark in which another has rights, to divert users seeking the holder of the mark’s legitimate website, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel finds that Respondent’s use of the <amwaysatinal.com> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims Respondent has registered and is using the <amwaysatinal.com> domain name in bad faith. Complainant asserts that Respondent’s bad faith is evident from Respondent’s attempt to falsely portray itself as an authorized retailer of Complainant’s products. Respondent’s <amwaysatinal.com> domain name resolves to a website prominently displaying the AMWAY mark, offering information about Complainant’s products, and offering Complainant’s products for sale. Such conduct is evidence of bad faith under Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant argues that the AMWAY mark has no meaning outside of its connection with Complainant’s business and therefore it is inconceivable that Respondent registered the <amwaysatinal.com> domain name without knowledge of Complainant’s rights in the AMWAY mark. The Panel agrees and there holds that Respondent registered the <amwaysatinal.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the <amwaysatinal.com> domain name").
The Panel finds 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 <amwaysatinal.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 21, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page