Alticor Inc. v. Top Domain
Claim Number: FA2007001903804
Complainant is Alticor Inc. (“Complainant”), represented by Amber Underhill of Warner Norcross + Judd LLP, Michigan, USA. Respondent is Top Domain (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amway.club>, registered with 1API GmbH.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 10, 2020; the Forum received payment on July 10, 2020.
On July 15, 2020, 1API GmbH confirmed by e-mail to the Forum that the <amway.club> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 July 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 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@amway.club. Also on July 15, 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 August 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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
Complainant, Alticor Inc., is known for its line of Amway branded products that are distributed worldwide through a network of independent business owners. Complainant has rights in the trademark AMWAY based on registration with the United States Patent and Trademark Office (“USPTO”). Respondent’s <amway.club> domain name is confusingly similar to Complainant’s mark because it simply adds the “.club” generic top level domain (“gTLD”) to Complainant’s AMWAY mark.
Respondent does not have rights or legitimate interests in the <amway.club> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the AMWAY mark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent is not an authorized distributor of Complainant’s products.
Respondent registered and uses the <amway.club> domain name in bad faith. Respondent purposefully uses the disputed domain name to profit from an association with Complainant since Complainant’s AMWAY mark is coined and has no other meaning. Additionally, Respondent uses the disputed domain name to create a false impression that it is an authorized distributor of Complainant’s products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) The disputed domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the disputed domain name; and
(3) The disputed domain name was registered and is being used by Respondent 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”).
PRELIMINARY ISSUE – IDENTIFICATION OF PROPER COMPLAINANT
A fundamental principle of any formal legal dispute, such as that contemplated by the Policy, is that the complaining party must demonstrate its standing to bring such dispute. In the Policy, this standing requirement is embodied in ¶ 4(a)(i) which requires evidence of “a trademark or service mark in which the complainant has rights.” Although the Policy does not have as strict evidentiary requirements as courtroom litigation, it is incumbent upon a complainant, and its representative, to adequately support such a critical element of proof as the owner of asserted trademark rights. This is often done in the form of a trademark registration certificate. However, where the name of the complainant, as designated in the filed complaint, differs from the name of the trademark owner that is listed in the submitted registration certificate, a question arises as to the relationship between the two and, thus, the standing of the complainant to bring the filed dispute. See CMG Worldwide, Inc. v. Pitanguy Plastic Surgical Clinic, FA 155888 (Forum June 3, 2003) (holding that as the complainant provided no evidence to the panel that it has any arrangement to represent the actual trademark holder, or that any rights in the relevant trademark had been assigned or licensed to the complainant, the complainant did not have standing to bring a claim under the UDRP). Here, Complainant identifies itself as Alticor, Inc. yet the trademark registration certificate it has submitted into evidence displays the owner of the AMWAY trademark as Amway Sales Corporation. No mention of this latter entity is made in the Complaint and no evidence of an assignment of the submitted trademark registration is provided.
Nevertheless, exercising its own discretion to conduct the independent investigation of publicly available information afforded by the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the Rules, this Panel has reviewed the assignment records of Complainant’s asserted Trademark Registration No. 724606 at the USPTO website. In March 6, 1964 the registration was assigned from Amway Sales Corporation to Amway Corporation and on November 14, 2000 a change of name from Amway Corporation to Alticor, Inc. was recorded. In light of this information, the Panel is satisfied that the case may now proceed with Alticor, Inc. as the named Complainant
Complainant asserts rights in the AMWAY mark based on registration with the USPTO. Registration of a trademark with the USPTO is a valid showing of rights to support the threshold standard embodied in Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”) Complainant provides a copy of one of its USPTO registrations for the AMWAY mark. It also provides a screenshot from the USPTO listing other registrations that include the word AMWAY, however, this list does not identify the owner(s) of such registrations. Nevertheless, as the evidence available to the Panel supports the Complainant’s ownership of at least one trademark registration, the Panel finds that Complainant has rights in the AMWAY mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <amway.club> domain name is confusingly similar to Complainant’s mark because it simply adds the “.club” gTLD to Complainant’s AMWAY mark. The addition of a gTLD to a mark is insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Novartis AG v. ruanhuanhuan, FA 1574397 (Forum Sept. 19, 2014) (finding that the <alcon.club> domain name is confusingly similar to the ALCON mark, as the addition of the top-level domain “.club” is not enough to defeat the identical nature of the disputed domain name pursuant to Policy ¶ 4(a)(i)). As the second level of the disputed domain name is identical to Complainant’s AMWAY mark and the “.club” TLD is not a sufficiently distinguishing element, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have rights or legitimate interests in the <amway.club> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the AMWAY mark. In considering this issue, WHOIS information can be used to show that a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”) Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA 1620789 (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 identifies the registrant of the disputed domain name as “Top Domain” and no available information suggests that Respondent is known otherwise or that Complainant has authorized Respondent to use the AMWAY mark. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or for a legitimate noncommercial or fair use as Respondent is not an authorized distributor of Complainant’s products. A few decisions have been identified stating the proposition that, regardless of whether a respondent is an authorized distributor, use of a complainant’s mark in a disputed domain name without authorization does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See, e.g., Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (“the resolving page states, ‘Your Fadal Machine Parts Depot Powered by Independent Technology Services,’ and features Complainant’s parts for sale. The Panel finds that Respondent’s use of the <fadaldepot.com> domain name to sell products related to Complainant without authorization does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); Allen-Edmonds Shoe Corp. v. Takin’ Care of Business, D2002-0799 (WIPO Oct. 10, 2002) (“even where a reseller is an authorized reseller, without a specific agreement between the parties, the reseller does not have the right to use the licensor’s trademark as a domain name.”) Further, Complainant has cited a number of prior decisions for this proposition but many of them involve the added fact that the respondent, as a present or former product distributor, is under a contractual obligation to refrain from using the complainant’s trademark in a domain name or website. See Herbalife Int’l Inc. v.
SHOPHERBALIFE.COM a/k/a Cleverson Ezora, FA 281593 (Forum July 19, 2004) (“Although Respondent was at one time an authorized distributor of Complainant’s products, Complainant asserts that, Respondent was never authorized to register and use a domain name that incorporated Complainant’s HERBALIFE mark.”); Alticor Inc. v. Gregory Smith, FA 1548551 (Forum Apr. 21, 2014) (“Respondent was formerly an independent distributor of AMWAY goods, and thus well aware of an agreement he signed forbidding him from using the AMWAY mark in any manner without Complainant’s prior approval.”)
Against this backdrop, the Panel finds it difficult to adopt an absolute position that a distributor, whether authorized or not, has no rights to use a complainant’s trademark under any conditions. This leaves no room for such things as nominative fair use and contradicts the holding in the seminal decision of Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) which took a more equitable approach with its now widely accepted four-factor test to consider whether a domain name’s inclusion of a trademark and use by a claimed distributor is bona fide.
However, incorporated into the third element of the Oki Data test is the prescription that “[t]he site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.” Id. This touches on the question of whether a respondent is clear regarding its relationship (or lack thereof) with a complainant or if it is passing itself off as, or impersonating the complainant by using the disputed domain name. Here, Complainant has provided screenshots of Respondent’s website showing Respondent offering what appear to be Complainant’s AMWAY branded products for sale and noted that Respondent is not an authorized distributor of Complainant’s products. The screenshots show images of a number of products and the text on the website appears to be in the Greek language and character set. Complainant claims that “Respondent’s website at amway.club offers information about Complainant’s products and offers Complainant’s products for sale in association with the AMWAY mark and other trademarks owned by Complainant, including, among others, NUTRILITE, ARTISTRY, AMWAY HOME and SATINIQUE.” As Complainant has not submitted into evidence any images of its own products the Panel is not in a position to conclude that Respondent’s website displays images of such products. Further, as the website appears to be in the Greek language and no translation thereof has been submitted, the Panel is not in a position to determine if any notice is provided regarding the nature of any relationship between Respondent and Complainant.
However, it is noted that the second level of the <amway.club> domain name is identical to Complainant’s AMWAY trademark with no added letters, words, or punctuation. Prior Panels have held that a domain which consists of the entirety of a trademark plus a TLD (i.e., in the form of <trademark.tld>) is unlikely to support a bona fide offering of goods or services, or to be considered a fair use as such domain, by its very nature, creates an impersonation of a complainant. Deutsche Lufthansa AG v. REDACTED FOR PRIVACY et al., FA 1827553 (Forum Feb. 14, 2019) (with respect to the domain name <lufthansa.blog>, the Panel held that “[g]iven the addition of the .blog TLD to the famous LUFTHANSA mark, consumers will expect that Complainant is the owner of the blog and responsible for any content on the site.”) Thus, even if Respondent distributes legitimate products of the Complainant, it’s use of the AMWAY mark per se leads this Panel to conclude that it does not “accurately disclose the registrant's relationship with the trademark owner” as required by Oki Data. The disputed domain name consists of the entirety of Complainant’s mark coupled only with a TLD (i.e., in the form <trademark.tld>) and this either impersonates Complainant or, at a minimum, implies that Respondent is authorized by Complainant to conduct its activities at this website. Thus, Complainant has made a prima facie case under Policy ¶ 4(a)(ii).
In the absence of any Response or other submission by Respondent to rebut Complainant’s prima facie case or to explain its use of the <amway.club> domain name, this Panel, by a preponderance of the evidence, that Respondent does not make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) of the disputed domain name.
While Complainant does not assert that Respondent had actual knowledge of the AMWAY mark when it registered the disputed domain name, it is important to examine this issue. Some attribution of knowledge of a complainant’s trademark, whether actual or based upon a conclusion that a respondent should have known of the mark, is Inherently prerequisite to a finding of bad faith under Policy ¶ 4(a)(iii). Typically, the owner of a famous trademark will assert that a disputed domain name was registered by the respondent with actual knowledge of its mark based upon the mark’s reputation. See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). Here, Complainant asserts that its “AMWAY mark is well known and famous worldwide having been in use for over 50 years. It is used in over 100 countries with annual sales in the billions of dollars.” However, Complainant provides no evidence to support this claim and so the Panel is not in a position to opine on whether Respondent must have known of the mark based upon it being famous.[i] To the Complainant’s benefit, there are other ways of demonstrating Respondent’s actual knowledge of its mark such as the content of the <amway.club> website. The screenshots submitted by Complainant show images which purport to be those of AMWAY products and it is noted that the mark is a coined term which Respondent would be unlikely to have arrived at on its own. Thus, it seems highly likely that Respondent did have actual knowledge of Complainant’s mark at the time it registered the disputed domain name.
Next, Complainant argues that Respondent registered and uses the disputed domain name in bad faith because Respondent falsely portrays itself as an authorized distributor of Complainant’s products. The use of a disputed domain name by a product distributor in a manner which falsely suggests an affiliation with a complainant may be considered evidence of bad faith per Policy ¶ 4(b)(iv). See Procter & Gamble Co. v. Hlad, FA 126656 (Forum Nov. 20, 2002) (finding that the disputed domain name was registered and used in bad faith where the respondent, a distributor of the complainant’s products who was not a licensee of the complainant, used the complainant’s mark in its domain name, suggesting a broader relationship with the complainant and fostering the inference that the respondent was the creator of the complainant’s products rather than a mere distributor); Stanley Logistics, Inc. v. Motherboards.com, FA 128068 (Forum Dec. 2, 2002) (finding that the respondent, through the use of the complainant’s mark to redirect Internet users to a website selling the complainant’s product, placed itself without the complainant’s consent in a preferred position with respect to other distributors, which caused consumer confusion and evidenced bad faith registration and use of the domain name). Here, the crux of Complainant’s bad faith argument is that “Respondent is clearly portraying itself as a subsidiary or affiliate of Complainant, when it is not. Respondent’s conduct in creating the false impression that it is an authorized distributor of Complainant’s products constitutes bad faith.” In support, Complainant provides screenshots of Respondent’s website at which are offered for sale what Complainant claims to be its products bearing the AMWAY mark and other product brands owned by Complainant. Respondent has failed to file a response or make any other submission in this case and so it does not rebut Complainant’s assertions. Therefore, based on the limited record before it, the Panel finds that Respondent registered and uses the <amway.club> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
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.club> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: August 10, 2020
[i] Ownership of trademark registrations, alone, does not demonstrate the fame of the mark nor the scope of its reputation.
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