Alticor Inc. v. Mantas Laumelis / Amway
Claim Number: FA1107001397558
Complainant is Alticor Inc. (“Complainant”), represented by R. Scott Keller of Warner Norcross & Judd LLP, Michigan, USA. Respondent is Mantas Laumelis / Amway (“Respondent”), Lithuania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amway-prekes.info>, registered with Tucows Inc. (R139-LRMS).
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 7, 2011; the National Arbitration Forum received payment on July 8, 2011.
On July 7, 2011, Tucows Inc. (R139-LRMS) confirmed by e-mail to the National Arbitration Forum that the <amway-prekes.info> domain name is registered with Tucows Inc. (R139-LRMS) and that Respondent is the current registrant of the name. Tucows Inc. (R139-LRMS) has verified that Respondent is bound by the Tucows Inc. (R139-LRMS) 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 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 2011 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-prekes.info. Also on July 13, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" 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 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:
Complainant is a world-wide direct selling company, operating since 1959.
Complainant owns the AMWAY mark and uses it in connection with the marketing of its personal care, nutrition, wellness, home care, home living and commercial products.
Complainant holds registrations for its AMWAY trademark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 707, 656, registered November 29, 1960).
Respondent registered the disputed <amway-prekes.info> domain name on September 2, 2010.
The website resolving from Respondent’s domain name contains information about Complainant’s products and offers those products for sale under the AMWAY mark.
Respondent’s <amway-prekes.info> domain name is confusingly similar to Complainant’s AMWAY mark.
Respondent is not commonly known by the <amway-prekes.info> domain name.
Complainant sells its products through a network of authorized independent business owners (“IBO’s”) but has no record of an IBO with Respondent’s contact information.
Respondent does not have any rights to or legitimate interests in the <amway-prekes.info> domain name.
Respondent registered and uses the contested <amway-prekes.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same 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."
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the AMWAY trademark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that a complainant had established rights in marks where the marks were registered with a trademark authority); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005):
Complainant has established rights in the … mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’).
Complainant is not required to register its mark in the country in which Respondent resides in order to demonstrate rights in the mark. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in the mark in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for purposes of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of a respondent’s place of business).
Respondent’s <amway-prekes.info> domain name is confusingly similar to Complainant ‘s AMWAY trademark. The disputed domain name uses the entire AMWAY mark and adds only a hyphen, the generic top-level domain (“gTLD”) “.info,” and the generic word “prekes,” which translates from Lithuanian into English as “merchandise” or “goods.” These alterations of the mark in forming the domain name do not adequately distinguish the domain from the mark. See, for example, Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
See also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to a complainant’s ICQ mark, leakes the <neticq.com> domain name confusingly similar to the mark).
Thus, the Panel finds that Respondent’s <amway-prekes.info> domain name is confusingly similar to Complainant’s AMWAY trademark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent does not have rights to or legitimate interests in the <amway-prekes.info> domain name. Under Policy ¶ 4(a)(ii), Complainant is obliged to make out a prima facie case on this point, whereupon the burden shifts to Respondent to demonstrate that it has such rights or interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), holding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
Complainant has demonstrated a prima facie case in support of its allegations under this head of the Policy. Owing to Respondent’s failure to respond to the allegations of the Complaint, we may properly conclude that Respondent lacks rights to and legitimate interests in the contested domain name under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, a respondent failed to invoke any circumstance which could demonstrate rights to or legitimate interests in a domain name).
Nonetheless we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by observing that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the <amway-prekes.info> domain name and that Complainant has not authorized Respondent to use the AMWAY trademark in a domain name. Although the pertinent WHOIS information identifies Respondent as “Mantas Laumelis / Amway,” and although Complainant sells its products through a network of authorized independent business owners (“IBO’s”), there is no dispute that Complainant has no record of an IBO with Respondent’s contact information. Therefore, notwithstanding that Respondent’s domain name registration contact information includes Complainant’s AMWAY mark, without supporting evidence, we must conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that a respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that, although a respondent listed itself as “AIM Profiles” in its WHOIS contact information, there was no other evidence in the record to suggest that that respondent was actually commonly known by a disputed domain name).
We also note that Complainant alleges, without objection from Respondent, that Respondent uses the <amway-prekes.info> domain name to redirect Internet users to a website selling Complainant’s goods under Complainant’s AMWAY trademark. Respondent’s use of a domain name confusingly similar to Complainant’s mark to sell Complainant’s goods without authorization is not 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). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that using domain names to sell a complainant’s goods without that complainant’s authority is not a bona fide use of the domains); see also G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding that a respondent’s use of a disputed domain name to solicit pharmaceutical orders without a license or authorization from a complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed <amway-prekes.com> domain name to sell Complainant’s goods without authorization from Complainant. Registration and use of the domain for this purpose is in bad faith under 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 … mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).
Moreover, Respondent’s registration and use of the contested domain name as alleged in the Complaint creates a likelihood of confusion among Internet users as to the possibility of Complainant’s sponsorship of the disputed domain name and resolving website content. Respondent attempts to profit from this confusion by generating sales of Complainant’s goods. The registration and use of the domain in this manner is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for a complainant’s website to its own website, likely profiting in the process); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question was obviously connected with a complainant’s marks, thus creating a likelihood of confusion for a respondent’s commercial gain).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <amway-prekes.info> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 12, 2011
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