Alticor Inc. v. Dmitrij Bondarchuk
Claim Number: FA1311001530228
Complainant is Alticor Inc. (“Complainant”), represented by Kenneth A. Coleman of Warner Norcross & Judd LLP, Michigan, USA. Respondent is Dmitrij Bondarchuk (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <youamway.com>, registered with CENTER OF UKRAINIAN INTERNET NAMES.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Antonina Pakharenko-Anderson 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 21, 2013, CENTER OF UKRAINIAN INTERNET NAMES confirmed by e-mail to the National Arbitration Forum that the <youamway.com> domain name is registered with CENTER OF UKRAINIAN INTERNET NAMES and that Respondent is the current registrant of the name. CENTER OF UKRAINIAN INTERNET NAMES has verified that Respondent is bound by the CENTER OF UKRAINIAN INTERNET NAMES 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 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 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@youamway.com. Also on November 21, 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.
The Respondent has not filed a formal Response to Complainant’s Domain Name Dispute Complaint in the above referenced case. Respondent sent a Russian language e-mail to the Forum on November 22, 2013. Thus, the complaint defaulted on December 12, 2013.
On January 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Antonina Pakharenko-Anderson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i. Respondent is not now, and never has been, commonly known by, nor does it have any other legitimate rights in, the names AMWAY or YOUAMWAY.
ii. It is well-recognized that status as a distributor of Complainant’s products would not give Respondent any right to or legitimate interests in registering a domain name containing the AMWAY mark.
i. Respondent’s registration of the domain name to divert persons looking for Complainant on the Internet constitutes bad faith.
ii. Complainant’s AMWAY mark is well known and famous worldwide.
B. Respondent
Respondent registered the <youamway.com> domain name on December 28, 2012.
On November 22, 2013 the Respondent sent an e-mail to the National Arbitration Forum in the Russian language asking to explain in simple terms what the NAF wants from the Respondent. However, Respondent did not submit any document identified as a formal or compliant Response.
A. Preliminary Procedural Issue: Language of the Proceedings
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.
The language of the Registration Agreement is Russian, thereby initially making the language of the proceedings in Russian. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification.
The Panel is satisfied that the Complainant has taken all reasonable steps to bring the present proceeding to the attention of the Respondent. In particular, the Panel notes that the Complainant has submitted the Complaint both in the English and Russian language to the National Arbitration Forum to initiate the present proceeding. The Respondent has then been notified of the Complaint and its contents in the Russian language. However, the Respondent has failed to respond to the Complainant’s contentions. The Panel finds that the Respondent’s failure to respond to the Complaint might not be the result of the Respondent’s inability to understand the Complaint filed against him but an indication that he could not provide a satisfactory response to the allegations contained in the Complaint lodged by the Complainant.
The Panel, after review of the applicable rules on language of the proceedings under the UDRP and after taking into account all the relevant elements, and specifically factoring the absence of a Response, concludes that it is appropriate to conduct the remainder of the proceedings in the English language. The Panel has discretion to determine the correct language of the proceeding based upon the circumstances of the case. See Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006‑0432. Based upon the circumstances here, we find no prejudice or unfairness to the Respondent in proceeding and rendering the Panel’s decision in the English language. While the Registration Agreement is in Russian, the National Arbitration Forum communicated a number of accommodations to the Respondent to allow it to respond in Russian, and the National Arbitration Forum appointed a Russian speaker to the Panel. Nevertheless, the Respondent did not submit a response to the Complaint.
B. Findings of Fact
Complainant is one of the world’s largest direct selling companies, for which it uses its AMWAY mark. Complainant’s product line includes more than 450 personal care, nutrition and wellness, home care, home living, and commercial products such as cosmetics, detergents, and car care products as well as hotel and real estate services. The evidences produced by the Complainant show that the Complainant is the owner of a series of the United States Patent and Trademark Office (“USPTO”) registrations for the AMWAY mark with the earliest registration being Reg. No. 707,656 registered Nov. 29, 1960. Complainant also holds various registrations of an AMWAY series worldwide.
Respondent registered the <youamway.com> domain name on December 28, 2012.
WHOIS information identifies “Dmitrij Bondarchuk” as the registrant of the <youamway.com> domain name (“Respondent”). Respondent is not in any way affiliated with or authorized by Complainant.
Complainant sells its products through a network of authorized independent business owners (“IBOs”). To the best of Complainant’s knowledge, Respondent is not now, nor has it ever been, an IBO authorized by Complainant to sell its products.
Complainant has not granted to the Respondent the consent for the use of it trademark in the domain name.
The Panel finds that the proceedings have been conducted in accordance with the Policy and the Rules. Having reviewed the series of communications as set out above under the section on procedural history, the Panel concludes that the National Arbitration Forum has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules.
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.
According to Paragraph 14 (a) of the Rules, where there is a failure by the respondent to provide a response to the allegations of the complainant, as in the present case, the Panel shall make a decision on the administrative proceedings on the basis of the complaint and, in accordance with Paragraph 14 (b) of the Rules, shall “draw such inferences there from as it considers appropriate” (See also, Caterpillar Inc. v. Spiral Matrix/ Kentech, Inc.,/Titan Net / NOLDC, Inc, WIPO Case No. D2006‑0808). On the other hand, the Panel should not decide in the complainant’s favor solely because of the Respondent’s default (See Oxygen Media Corporation v. Spiral Matrix, WIPO Case No. D2006‑0521 and Cortefiel S.A. v. Miguel García Quintas, WIPO Case No. D2000‑0140), but shall, under paragraph 15(a) of the Rules, “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”.
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.”).
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such provision, the Complainant must prove two limbs, i.e. it enjoys the trademark right; and the disputed domain name is identical with or confusingly similar to its trademark or service mark.
The Panel finds that the Complainant successfully proves these two aspects of its case. Firstly, the Complainant enjoys the trademark right over the mark AMWAY through both the trademark registrations and extensive and continuing use. Secondly, the disputed domain name, which consists of “youamway”, is confusingly similar to the Complainant’s trademark AMWAY.
The following supports the Panel’s opinion.
Registration of a trademark, independent of whether the registration is in the country in which the respondent resides, satisfies the Policy ¶ 4(a)(i) required showing of rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
It has been established by the Panel that the Complainant holds a series of U.S. federal trademark registrations, and oldest one is Reg. No. 707,656 registered Nov. 29, 1960. The AMWAY trademark is also protected in other jurisdictions worldwide.
Therefore, the Panel finds that Complainant has rights in the AMWAY mark under Policy ¶ 4(a)(i).
In assessing the degree of similarity between the Complainant’s mark and the Respondent’s domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the Respondent’s domain names is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase the Complainant’s products.
The disputed domain name comprises an exact reproduction of the Complainant’s trademark AMWAY with the prefix ”you” being the common word taken from the everyday English language and adds the gTLD “.com”. The AMWAY mark is a coined word with no descriptive significance to the products and/or services offered under it. It is a highly distinctive mark and it has been reproduced in its entirety in the Respondent’s domain name. The Panel finds that this is the most prominent part of the Respondent’s domain name which will attract consumers’ attention. The Panel finds that the prefix “you” as a generic word and adding the gTLD “.com” does not serve to distinguish it from the Complainant’s AMWAY mark.
Thus, bearing in mind in particular the distinctive character of the AMWAY mark; the dominant component of the Respondent’s domain names; and the visual, aural and similarities between them, the Panel therefore finds that the disputed domain name <youamway.com > is confusingly similar to Complainant’s mark as the disputed domain name merely includes “you” as a generic word and adds the gTLD “.com” to the easily recognized AMWAY mark. Previous panels have found both of these changes to be insufficient to undo confusing similarity. See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Under the consensus view of WIPO decisions under the Policy, the content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant to the finding of confusing similarity (Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110). For this reason, it is not necessary to compare the contents of the Complainant’s and the Respondent’s websites for the purpose of paragraph 4(a)(i) of the Policy.
Therefore, the Panel finds that Respondent’s <youamway.com> domain name is confusingly similar to the AMWAY mark under Policy ¶ 4(a)(i).
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted the Complainant’s contention.
The Panel finds that Respondent is not now, and has never been, commonly known by the disputed domain name as the WHOIS record for the <youamway.com> domain name lists “Dmitrij Bondarchuk” as the domain name registrant.
Furthermore, Complainant claims that Respondent is not in any way affiliated with or authorized by Complainant, and Respondent is not an authorized independent business owner for Complainant’s sales network. Complainant continues to state that, even if Respondent were an authorized independent business owner seller, Respondent still would not have consent to use the AMWAY trademark in a domain name or on the resolving website. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded 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.
In light of the above the Panel finds that Respondent is not commonly known by the <youamway.com> domain name under Policy ¶ 4(c)(ii).
The Panel takes into consideration that Respondent’s <youamway.com> domain name resolves to a website where Respondent attempts to pass itself off as a distributor or affiliate of Complainant’s personal care products. See Complainant’s Exhibit B. However, the Respondent is not either listed among the registered distributors of the Complainant, or affiliated with him.
In Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006), the panel found respondent’s attempt to pass itself of as complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when respondent used the disputed domain name to present users with a website that was nearly identical to complainant’s website. Accordingly, the Panel finds that Respondent’s attempt to pass itself off as an affiliate or distributor of Complainant does not constitute a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
A number of panels have held that the burden on a complainant regarding the element provided by paragraph 4(a)(ii) of the Policy is necessarily light, because the nature of the registrant’s rights or interests, if any, in the domain name lies most directly within the registrant’s own knowledge (see Packaging World Inc. v. Zynpak Packaging Products Inc., eResolution Case No. AF-0233; Education Testing Service v. TOEFL, WIPO Case No. D2000-0044; Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703). There is also a consensus view among panels that once the complainant makes a prima facie showing that the registrant does not have rights or legitimate interests in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name (See e.g. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252).
Where, as here, the Complainant has made a prima facie showing of the Respondent’s lack of such right or interest and Respondent has failed to come forward to rebut that showing, the Panel is entitled to accept that the Complainant has established the second element in paragraph 4(a)(ii) of the Policy. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from the Respondent’s default as it considers appropriate.
The Panel therefore finds that the Respondent does not have rights or legitimate interests in the disputed domain name and that the Complainant fulfills the condition provided in paragraph 4(a)(ii) of the Policy.
Finally, the Complainant must show that the Respondent both registered and is using the domain name in bad faith. Paragraph 4(a)(iii) of the Policy.
A non-exhaustive list of what constitutes bad faith registration and use is set out in paragraph 4(b) of the Policy, including paragraph 4(b)(iv), which indicates that bad faith exists where the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. See PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700.
Complainant asserts that Respondent registered and uses the <youamway.com> domain name in bad faith.
Complainant notes that its AMWAY mark is famous worldwide and has been used in over 80 countries, including Ukraine. Through a network of more than 3 million independent business owners, Complainant distributes AMWAY products and other brands of products in more than 80 countries and territories, including Ukraine where the Respondent domiciles.
At the same time it has been established that the <youamway.com > domain name resolves to a website which offers information about Complainant’s products and offers Complainant’s products for sale in association with the AMWAY mark. The conflicting domain name resolves to the website which is silent about the registrant's relationship with the trademark owner.
Complainant claims that Respondent is not in any way affiliated with or authorized by Complainant, and Respondent is not an authorized independent business owner for Complainant’s sales network.
Complainant alleges that Respondent engaged in bad faith registration and use of its domain name pursuant to Policy ¶ 4(b)(iii). The Panel agrees because Respondent’s use of a domain name confusingly similar to Complainant’s mark, which resolves to a commercial website offering Complainant’s products for sale, likely disrupts Complainant’s business. Therefore, the Panel concludes that Respondent has engaged in bad faith registration and use of the contested domain pursuant to 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 CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Bad faith registration and use of the <youamway.com> domain name under Policy ¶ 4(b)(iv) can also be inferred based on Respondent’s use of a confusingly similar domain name to attract Internet users to a website that offers Complainant’s products for sale. The Panel may presume that Respondent profits from such use. Therefore, the Panel concludes that Respondent has engaged in bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”); see also Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that a respondent’s use of the <compaq-broker.com> domain name to sell a 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)”).
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 <youamway.com> domain name be TRANSFERRED from Respondent to Complainant.
Antonina Pakharenko-Anderson, Panelist
Dated: January 31, 2014
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