Alticor Inc. v. Marina M Agisheva
Claim Number: FA1311001530224
Complainant is Alticor Inc. (“Complainant”), represented by Kenneth A. Coleman of Warner Norcross & Judd LLP, Michigan, USA. Respondent is Marina M Agisheva (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amway-v-sochi.com>, registered with ONLINENIC, INC.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 15, 2013; the National Arbitration Forum received payment on November 18, 2013.
On November 18, 2013, ONLINENIC, INC. confirmed by e-mail to the National Arbitration Forum that the <amway-v-sochi.com> domain name is registered with ONLINENIC, INC. and that Respondent is the current registrant of the name. ONLINENIC, INC. has verified that Respondent is bound by the ONLINENIC, INC. 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 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 16, 2013 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-v-sochi.com. Also on November 26, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), as Panelist.
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.
Complainant
a) Complainant is one of the world’s largest direct selling companies, and Complainant was founded in 1959. Complainant distributes its products through a network of over three million independent business owners in more than eighty countries, including China.
b) Complainant has rights in the AMWAY mark, used in connection with personal care, nutrition and wellness, home care, home living, and commercial products. Complainant owns registrations for the AMWAY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 707,656 registered Nov. 29, 1960).
c) Respondent’s <amway-v-sochi.com> domain name is confusingly similar to Complainant’s AMWAY mark. The disputed domain name incorporates Complainant’s mark in its entirely while adding the letter “v,” the geographic term “Sochi,” and two hyphens.
d) Respondent does not have any rights or legitimate interest in the <amway-v-sochi.com> domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its mark in any way.
e) Respondent registered and is using the <amway-v-sochi.com> domain name in bad faith.
Respondent is using the disputed domain name to sell Complainant’s products. The products listed on the resolving website include Complainant’s nutrilite, artistry, zoom, and icook products.
Respondent is portraying itself as a subsidiary or affiliate of Complainant when it is not in any way affiliated with Complainant.
Respondent had knowledge of Complainant’s AMWAY mark prior to registering the disputed domain name because Complainant’s mark is well-known and famous.
Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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(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 it has rights in the AMWAY mark, used in connection with personal care, nutrition and wellness, home care, home living, and commercial products. Complainant states it owns registrations for the AMWAY mark with the USPTO (Reg. No. 707,656 registered Nov. 29, 1960). The Panel notes that Respondent resides or operates in a different country than that in which Complainant holds its trademark registrations; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has rights in the AMWAY mark pursuant to Policy ¶ 4(a)(i) via a valid tradmark registration with the USPTO.
Complainant alleges that Respondent’s <amway-v-sochi.com> domain name is confusingly similar to Complainant’s AMWAY mark. Complainant notes that the disputed domain name incorporates Complainant’s mark in its entirely while adding the letter “v,” the geographic term “Sochi,” and two hyphens. The disputed domain name also includes the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a letter to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). The Panel agrees that the addition of “v” remains non-distinctive even if Respondent intended it to imply the Czech term “in.” See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel finds that the addition of a geographic term to a trademark in a disputed domain name does not negate a finding of confusing similarity. See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”). Additionally, the Panel finds that the addition of a gTLD and hyphens are irrelevant for the purposes of confusing similarity analysis. See 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). Therefore, the Panel finds that Respondent’s <amway-v-sochi.com> domain name is confusingly similar to Complainant’s AMWAY mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends Respondent does not have any rights or legitimate interest in the <amway-v-sochi.com> domain name. Complainant claims Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “Marina M Agisheva” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the AMWAY mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <amway-v-sochi.com> domain name under Policy ¶ 4(c)(ii).
In paragraph 20 of its complaint, Complainant states that Respondent is using the disputed domain name to sell Complainant’s products, including its nutrilite, artistry, zoom, and icook products. In previous cases, Panels have found that selling a complainant’s products via a confusingly similar domain name does not demonstrate a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Polycom, Inc. v. Telcom & Data Inc, FA 1245498 (Nat. Arb. Forum Mar. 16, 2009) (“The Panel finds that Respondent’s unauthorized sale of Complainant’s goods is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) , nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).”) Therefore, the Panel finds that Respondent is not making bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because Respondent is selling Complainant’s goods.
Complainant has proven this element.
Complainant claims Respondent registered and is using the <amway-v-sochi.com> domain name in bad faith. In paragraph 20 of its complaint, Complainant states that Respondent is using the disputed domain name to sell Complainant’s products. The products listed on the resolving website include Complainant’s nutrilite, artistry, zoom, and icook products. In previous cases, panels have found that using a confusingly similar domain name to sell a complainant’s goods demonstrates bad faith under Policy ¶ 4(b)(iv). See Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”). Therefore, the Panel finds that Respondent registered and is using the <amway-v-sochi.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is selling Complainant’s goods.
Complainant asserts that Respondent is portraying itself as a subsidiary or affiliate of Complainant when it is not in any way affiliated with Complainant. In previous cases, panels have found that a respondent is acting in bad faith when the respondent is attempting to pass itself off as a complainant by giving the impression that the complainant endorsed or sponsored the respondent. See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). Therefore, the Panel finds that Respondent registered and is using the <amway-v-sochi.com> domain name in bad faith because Respondent is attempting to pass itself off as being affiliated with Complainant.
Complainant contends Respondent had knowledge of Complainant’s AMWAY mark prior to registering the disputed domain name because Complainant’s mark is well-known and famous. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). The Panel determines Respondent was well aware of Complainant’s mark, and the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proven this element.
Complainant 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-v-sochi.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: December 31, 2013
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