Alticor Inc. v. Le Thi Na
Claim Number: FA2011001920897
Complainant is Alticor Inc. (“Complainant”), represented by Amber Underhill of Warner Norcross + Judd LLP, Michigan, USA. Respondent is Le Thi Na (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sanphamamway.com>, registered with P.A. Viet Nam Company Limited.
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 November 16, 2020; the Forum received payment on November 16, 2020.
On November 19, 2020, P.A. Viet Nam Company Limited confirmed by e-mail to the Forum that the <sanphamamway.com> domain name is registered with P.A. Viet Nam Company Limited and that Respondent is the current registrant of the name. P.A. Viet Nam Company Limited has verified that Respondent is bound by the P.A. Viet Nam Company Limited 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 November 23, 2020, the Forum served the Complaint and all Annexes, including a Vietnamese Written Notice of the Complaint, setting a deadline of December 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@sanphamamway.com. Also on November 23, 2020, the Vietnamese 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 December 17, 2020, 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.
The Registration Agreement is written in Vietnamese, therefore the language of the proceedings would ordinarily be in Vietnamese. Although Complainant did not submit a Vietnamese language Complaint, Respondent registered a domain name with English words associated with an English language-based company. Moreover, there is no Vietnamese meaning of the word “Amway”. Therefore, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Vietnamese language Commencement Notification, and, absent a Response, the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is a “direct selling” company that sell various cosmetic, skin, and hair and dietary supplements throughout the world. Complainant has rights in the AMWAY mark through its registrations with the United States Patent and Trademark Office (“USPTO”). (e.g. Reg. 724,606, registered Nov. 28, 1961).
2. Respondent’s <sanphamamway.com>[i] domain name is confusingly similar to Complainant’s AMWAY mark, as it incorporates the mark in its entirety and adds the Vietnamese term “san pham,” as well as the “.com” generic top-level domain (“gTLD”).
3. Respondent lacks rights and legitimate interests in the <sanphamamway.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized or licensed Respondent to use its AMWAY mark in the domain name.
4. Complainant does not use the domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead attempts to pass off as a distributor of Complainant’s products.
5. Respondent registered and uses the <sanphamamway.com> domain name in bad faith. Respondent attempts to pass off as Complainant or an affiliate of Complainant, and registered the domain name with 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 <sanphamamway.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 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 rights in the AMWAY mark through its registrations with the USPTO. (e.g. Reg. 724,606, registered Nov. 28, 1961). Registration with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel holds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <sanphamamway.com> domain name is confusingly similar to Complainants AMWAY mark. Adding generic words along with the “.com” gTLD is generally insufficient in differentiating a domain name from the mark it incorporates under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). The domain name incorporates Complainant’s AMWAY mark in its entirety and adds the generic words “san pham.” which Complainant has shown means “products” in Vietnamese, as well as the “.com” gTLD. Therefore, Respondent’s <sanphamamway.com> domain name is confusingly similar to Complainant’s mark under 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 <sanphamamway.com> domain name. 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 (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 argues that Respondent does not have rights or legitimate interests in the <sanphamamway.com> domain name because Respondent is not commonly known by the domain name and is not affiliated with Complainant or permitted to use Complainant’s AMWAY mark. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in the domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record lists the registrant as “Le Thi Na.” Complainant contends, without contradiction in the record, that it did not authorize Respondent’s use of the AMWAY mark. Therefore, the Panel holds that Respondent is not commonly known by the <sanphamamway.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <sanphamamway.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a domain name incorporating the mark of the Complainant to pass off as Complainant or its affiliate, and selling Complainant’s products on the domain name’s resolving website is not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Complainant provides screenshots of the <sanphamamway.com> domain name’s resolving website, which features Complainant’s products for sale along with language and a set up that, according to Complainant, deceptively implies Respondent is an official and authorized affiliate. The record shows that Respondent is not an authorized affiliate or distributor of Complainant’s products. Thus, Respondent does not use the <sanphamamway.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <sanphamamway.com> domain name in bad faith by attempting to pass off as an authorized distributor of Complainant. Under Policy ¶ 4(b)(iv), using a domain name’s resolving website to pass off as a Complainant or an affiliate of a Complainant is considered bad faith attraction for commercial gain. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Complainant provide a screenshot of the <sanphamamway.com> domain name’s resolving website, which features Complainant’s products for sale along with Complainant’s AMWAY mark, and language that appears to imply a relationship between Complainant and Respondent. Thus, the Panel holds that Respondent registered and uses the <sanphamamway.com> domain name in bad faith by attempting to pass off as an authorized distributor of Complainant.
Finally, Complainant argues that Respondent had knowledge of Complainant’s rights in the AMWAY mark at the time of registering the <sanphamamway.com> domain name. Actual knowledge of a complainant’s rights in a mark can demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Trademark registrations of the AMWAY mark as well as Complainant’s commercial presence and reputation demonstrate that Respondent did have actual knowledge of Complainant’s right in its mark, which would support a finding of bad faith under Policy ¶ 4(a)(iii).
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 <sanphamamway.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 28, 2020
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