Alticor Inc. v. Duong Ho
Claim Number: FA2008001909084
Complainant is Alticor Inc. (“Complainant”), represented by Amber Underhill of Warner Norcross + Judd LLP, Michigan, USA. Respondent is Duong Ho (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amwayvn.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 19, 2020; the Forum received payment on August 19, 2020.
On August 20, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <amwayvn.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 25, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 2020 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@amwayvn.com.
Also on August 25, 2020, 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 21, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name <amwayvn.com>, be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the AMWAY mark established through its portfolio of trademark registrations described below and the goodwill and reputation it has acquired by extensive international use of the mark in its direct selling business.
Complainant asserts that it is the owner of over 1,800 trademark registrations in over 150 countries for marks containing the term AMWAY alone, stylized, and with logos and/or word combinations. In addition, Complainant asserts that it owns over 650 generic Top Level Domain names (“gTLD”), including <amway.com>, <amwayopportunity.com>, < amwaylive.com>, <amwayproduct.com>, <amwayhome.com> and many other variations incorporating its AMWAY name and mark.
Complainant adds that it distributes products bearing the AMWAY brand and other brands of products in 100 countries and territories worldwide, with global sales totaling over USD $ 8.4 billion for the year ended December 31, 2019.
Complainant submits that it has therefore clearly established its rights in the AMWAY mark for the purposes of this Complaint. See Innomed Tech., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (“Registration of the . . . mark with the USPTO establishes Complainant’s rights in the mark.”)
Complainant alleges that the disputed domain name <amwayvn.com> is undoubtedly confusingly similar to Complainant’s famous AMWAY mark as it simply uses the mark followed by the geographic indicator “vn” to refer to “Vietnam,” which is the location of the Respondent, together with the generic top-level domain extension <.com>.
Complainant argues that it is well established that a domain name consisting of a well-known mark, combined with letters that are merely a common designation for a country, is confusingly similar to the well-known mark. See AOL Inc. v. Dopici Nasrat, FAFA1006001331870 (Forum Aug. 12, 2010) (finding the mapquestus.com domain name confusingly similar to the complainant’s MAPQUEST mark because the addition of “us” is the common designation for the United States).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name <amwayvn.com> arguing that Respondent is not now, and has never been commonly known by, nor does it have any other legitimate rights in, the name AMWAY, nor is Respondent using the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
Complainant adds that it never authorized Respondent to use the AMWAY mark in any domain name. Complainant further asserts that Respondent is not a subsidiary or affiliate of Complainant nor is it currently one of Complainant’s authorized distributors.
Referring to screenshots of the website to which the disputed domain name resolves which are exhibited in an annex to the Complaint to illustrate that Respondent is using the entity name “Amway Vietnam” in the copyright line at the bottom of the website and thereby falsely holding itself out as “Amway Vietnam”.
Complainant complains that not only is Respondent not “Amway Vietnam” but that Complainant has an actual subsidiary called Amway Vietnam Co., Ltd. and uses this name on its various websites, including its Vietnam website <www.amway.com.vn>, to discuss and promote its business in Vietnam.
Complainant additionally argues that if Respondent fails to respond in this proceeding, such failure may be construed as an admission by Respondent that it lacks rights in legitimate interests in the disputed domain name. Solidvision, Inc. v. Domain Deluxe, FA 374615 (Forum Jan. 20, 2005).
Complainant alleges that the disputed domain name was registered and is being used in bad faith.
Complainant argues that Respondent chose and registered the disputed domain name that incorporates Complainant’s AMWAY mark in order to divert Internet traffic seeking Complainant.
Complainant submits that AMWAY is a coined word having no meaning other than as Complainant’s trademark, and argues that as a result, the only purpose Respondent could have for adopting the <amwayvn.com> domain name would be to illegitimately profit from the association of the domain name with Complainant. Pancil LLC v. Domain Deluxe, D2003-1035 (WIPO March 5, 2004) (“Since Starfall has no meaning whatsoever the Panel finds it inconceivable that Respondent chose the contested domain name without knowledge of Complainant’s activities and the name and trademark under which Complainant is doing business.”)
Complainant adds that Respondent is clearly portraying itself as a subsidiary or affiliate of Complainant, when it is not. In fact, Respondent is using the name of an actual subsidiary on the website as seen in the screenshots exhibited with the Complaint.
Complainant submits that Respondent is clearly passing himself off as a subsidiary of Complainant or as being affiliated with Complainant and argues that Respondent’s conduct in creating the false impression that it is an authorized distributor of Complainant’s products constitutes bad faith use of the disputed domain name. Laboratoires De Biologie Vegetale Yves Rocher v. Jung Choi, FA 104201 (Forum Mar. 22, 2002) (“[Complainant] is however not an ‘authorized’ retailer of the products, and it is improper to utilize a domain name implying the contrary.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a direct selling company with a wide product range including cosmetics, skin-care products, hair-care products, dietary food supplements, nutritional foods, air and water treatment systems, detergents and cleaning products.
Complainant holds a large international portfolio of trademark registrations for the AMWAY mark and marks including the word AMWAY, including of 33 active registrations and 8 pending trademark applications in the United States, the earliest of which is:
United States registered trademark AMWAY, registration number 724,606, registered on the Principal Register on November 28, 1961 for goods in international class 3.
Complainant and its subsidiaries have an established Internet presence with a large number of Internet domain names, hosting Complainant’s principal website at <www.amway.com>. Complainant has a subsidiary in Vietnam, which is the territory of Respondent, and hosts a related website www.amway.com.vn.
The disputed domain name <amwayvn.com> was registered on April 9, 2019 and resolves to a website that purports to offer a range of goods including cosmetics, healthcare and domestic cleaning products at discounted prices.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request for verification of the registration details of the disputed domain name in the course of this proceeding.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has adduced clear, convincing and uncontested evidence that it has rights in the AMWAY mark established through its portfolio of trademark registrations described above and in the goodwill in the mark acquired its extensive international use, including in Vietnam and on the Internet, in its direct selling business that has grown to have a revenue of USD $ 8.4 billion for the year ended December 31, 2019.
The disputed domain name consists of the AMWAY mark in combination with the letters “vn” and the gTLD <.com> extension.
Complainant’s mark, which is a coined word, is the initial, dominant and only distinctive element of the disputed domain name. The letters “vn” are most likely, in context, to be taken as a geographic indicator, being the commonplace acronym for Vietnam.
In the context of this Complaint, the gTLD <.com> extension may be disregarded for the purposes of comparison for the first element confusing similarity test. It is likely to be seen by Internet users as a standard requirement for registration.
This Panel finds therefore that the disputed domain name is confusingly similar to the AMWAY trademark in which Complainant has rights and Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name <amwayvn.com> arguing
· that Respondent is not now, and has never been commonly known by the name AMWAY;
· that Respondent does not have any other legitimate rights in, the name AMWAY;
· that Complainant never authorized Respondent to use the AMWAY mark in any domain name;
· that Respondent is not a subsidiary or affiliate of Complainant;
· that Respondent is not currently one of Complainant’s authorized independent business owners, arguing that even if Respondent were an independent distributor, it would have no right to use the AMWAY mark in any domain name;
· that the screenshots of the website to which the disputed domain name resolves shows that Respondent is using the entity name “Amway Vietnam” in the copyright line at the bottom of the site and thereby falsely holding itself out as “Amway Vietnam”;
· that Respondent is not “Amway Vietnam” and Complainant has an actual subsidiary called Amway Vietnam Co., Ltd. and uses this name on its various websites, including its Vietnam website <www.amway.com.vn>, to discuss and promote its business in Vietnam;
· that if Respondent fails to respond, such failure may be construed as an admission by Respondent that it lacks rights in legitimate interests in the disputed domain name;
· that Respondent is therefore not using the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name.
Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden.
In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant’s AMWAY mark is a coined word having no meaning other than as Complainant’s trademark. It is also the dominant and the only distinctive element in the disputed domain name. When the disputed domain name was registered in 2019 it is most improbable that it was devised and chosen without the registrant being aware of Complainant, its products, services and reputation. On the balance of probabilities, the disputed domain name was chosen and registered with Complainant, its mark and its business in mind, in order to take predatory advantage of Complainant’s goodwill and reputation, for the purposes of creating confusion and misdirecting Internet traffic away from Complainant’s websites.
This is confirmed by Respondent’s use of the disputed domain name in bad faith as the address of a website purporting to offer competing products at discounted prices. In doing so Respondent has endeavored to create the impression that it has an association with Complainant.
This Panel finds therefore that on the balance of probabilities, Respondent is using the disputed domain name in bad faith in an intentional attempt to attract, Internet users to his web site for commercial gain, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of his web site.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith.
Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in its application for transfer of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amwayvn.com> domain name be TRANSFERRED from Respondent to Complainant.
___________________________________
James Bridgeman SC
Panelist
Dated: September 21, 2020
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