Alticor Inc. v. wang gangxing
Claim Number: FA1311001531654
Complainant is Alticor Inc. (“Complainant”), represented by Kenneth A. Coleman of Warner Norcross & Judd LLP, Michigan, USA. Respondent is wang gangxing (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amwayzhuoyue.com>, registered with Beijing Innovative Linkage Technology Ltd d/b/a dns.com.cn.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 25, 2013; the National Arbitration Forum received payment on November 26, 2013. The Complaint was submitted in both English and Chinese.
On December 10, 2013, Beijing Innovative Linkage Technology Ltd dba dns.com.cn confirmed by e-mail to the National Arbitration Forum that the <amwayzhuoyue.com> domain name is registered with Beijing Innovative Linkage Technology Ltd dba dns.com.cn and that Respondent is the current registrant of the name. Beijing Innovative Linkage Technology Ltd dba dns.com.cn has verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd dba dns.com.cn 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 December 10, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 30, 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@amwayzhuoyue.com. Also on December 10, 2013, the Chinese language 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 January 2, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.
A. Complainant
Complainant makes the following contentions:
Policy ¶ 4(a)(i)
a. Complainant uses the AMWAY mark in connection with its network of more than 3 million independent business owners who sell a wide range of products under the AMWAY mark, including cosmetics, hair care products, and many others.
b. Complainant owns rights in the AMWAY mark through registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 707,656 registered November 29, 1960). See Complainant’s Exhibit A.
c. The <amwayzhuoyue.com> domain name is confusingly similar to Complainant’s AMWAY mark because the domain name fully appropriates the mark and merely adds the generic term “zhuoyue” and the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
d. Respondent is not commonly known as <amwayzhuoyue.com>, nor is Respondent a licensed distributor of AMWAY products.
e. The disputed domain name resolves to a website that offers for sale beauty products, clothing, jewelry, cell phones, and various other items, many of which directly compete with products offered by Complainant under its AMWAY mark. See Complainant’s Exhibit B.
Policy ¶ 4(a)(iii)
f. The disputed domain name misleads Complainant’s potential customers to Respondent’s website, which in turn sells goods that compete with Complainant’s AMWAY goods. See Complainant’s Exhibit B.
g. Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv), because the disputed domain name misleads consumers and is being used for Respondent’s commercial benefit.
h. Respondent registered the <amwayzhuoyue.com> domain name with actual notice of Complainant’s rights in the AMWAY mark, and has thus demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that conducts a well known and successful business with a network of more than 3 million independent business owners who sell a wide range of products under the AMWAY mark, including cosmetics and hair care products.
2. Complainant owns rights in the AMWAY trademark through registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 707,656 registered November 29, 1960).
3. Respondent registered the disputed domain name on June 18, 2013. It resolves to a website that offers for sale beauty products, clothing, jewelry, cell phones, and various other items, many of which directly compete with products offered by Complainant under its AMWAY mark.
LANGUAGE OF THE PROCEEDINGS
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant states that it uses the AMWAY mark in connection with its network of more than 3 million independent business owners who sell a wide range of products under the AMWAY mark, including cosmetics, hair care products, and many others. Complainant owns rights in the AMWAY mark through registrations of the mark with the USPTO (e.g., Reg. No. 707,656 registered November 29, 1960). See Complainant’s Exhibit A. The Panel notes that it has previously been held that a complainant establishes its rights in a mark under Policy ¶ 4(a)(i) through evidence of its registration of the mark with the USPTO. See, e.g., Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). It has also been held that a complainant does not need to register its mark in the respondent’s country of origin in order to sufficiently demonstrate its rights in the mark under the Policy. See, e.g., Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel holds that Complainant’s registration of the AMWAY mark with the USPTO sufficiently establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i) even though Respondent appears to reside in China.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s AMWAY trademark. Complainant alleges that the <amwayzhuoyue.com> domain name is confusingly similar to Complainant’s AMWAY mark because the domain name fully appropriates the mark and merely adds the generic term “zhuoyue” and the gTLD “.com.” The Panel notes that it has previously been determined that a domain name’s gTLD is irrelevant for the purposes of a confusing similarity analysis under the Policy. See, e.g., Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel also notes that previous panels have found that a domain name is confusingly similar to a complainant’s mark where the disputed domain name fully appropriates the mark and affixes a generic word. See, e.g., 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)). In the instant proceedings, Complainant alleges that the term “zhuoyue” is a generic word. Although Complainant does not offer a translation or definition of the term “zhuoyue,” the Panel reasonably concludes that the term is a Chinese word that is either generic or descriptive as was the case in Am. Express Co., supra. In any event, the dominant feature of the domain name is the part incorporating the word “amway” and an internet user is therefore more likely than not to regard it as an official domain name of the Amway company. The Panel thus concludes that the disputed domain name’s addition of the term “zhuoyue” does not sufficiently distinguish the disputed domain name from Complainant’s AMWAY mark, and thus holds that the <amwayzhuoyue.com> domain name is confusingly similar to Complainant’s AMWAY mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s AMWAY trademark and to use it in its domain name, adding only the Chinese word “zhuoyue”;
(b) Respondent has then used the disputed domain name to resolve to a website that offers for sale beauty products, clothing, jewelry, cell phones, and various other items, many of which directly compete with products offered by Complainant under its AMWAY mark;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant alleges that Respondent is not commonly known as <amwayzhuoyue.com>, nor is Respondent a licensed distributor of AMWAY products. The Panel notes that it has previously been held that a respondent is not commonly known by a disputed domain name where the complainant alleges that it has not authorized the respondent to use its mark and there is nothing in the record, including the WHOIS information, to suggest that the respondent is commonly known by the disputed domain name. See, e.g., 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Here, the WHOIS information identifies “wang gangxing” as the registrant of the disputed domain name, and the Panel holds that this does not suggest that Respondent is commonly known as <amwayzhuoyue.com>. The Panel also concludes that nothing else in the record suggests that Respondent is commonly known as <amwayzhuoyue.com>. Therefore, the Panel holds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii);
(e) Complainant next suggests that Respondent is not using the disputed domain name for 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), because the disputed domain name resolves to a website that offers for sale beauty products, clothing, jewelry, cell phones, and various other items, many of which directly compete with products offered by Complainant under its AMWAY mark. See Complainant’s Exhibit B. The Panel notes that according to a screenshot submitted by Complainant, the <amwayzhuoyue.com> domain name resolves to a website that offers products under the headings of “Beauty,” “Fashion,” “fine jewelry,” “Mobile Communications,” and “Flowers & Gifts.” See id. The Panel concludes that some of the products offered under the “Beauty” heading likely compete with the cosmetics and hair care products offered by Complainant under its AMWAY mark. The Panel notes that it has previously been determined that a respondent’s use of a disputed domain name to sell products that compete with those offered by the complainant is not protected as 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, e.g., Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel holds that Respondent’s use of the disputed domain name to offer beauty products that compete with Complainant’s AMWAY products is not a use protected under Policy ¶¶ 4(c)(i) or 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant suggests that Respondent has demonstrated bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii), because the disputed domain name diverts Complainant’s potential customers to Respondent’s website, which in turn sells goods that compete with Complainant’s AMWAY goods. See Complainant’s Exhibit B. As discussed above, the Panel holds that the website resolving from the <amwayzhuoyue.com> domain name offers “Beauty” products that directly compete with the cosmetic and hair care products offered by Complainant under the AMWAY mark. See id. The Panel notes that it has previously been determined that a respondent demonstrates bad faith registration and use of a disputed domain name under Policy ¶ 4(b)(iii) where the disputed domain name resolves to a website that sells products that directly compete with those offered by the complainant under the appropriated mark. See, e.g., Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant). Accordingly, as the Panel determines that the website resolving from <amwayzhuoyue.com> offers products that directly compete with Complainant’s AMWAY products, the Panel holds that Respondent has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii).
Secondly, Complainant next asserts that Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv), because the disputed domain name misleads consumers and is being used for Respondent’s commercial benefit. The Panel recalls that according to screenshots submitted by Complainant, the at-issue website appears to sell products under the headings of “Beauty,” “Fashion,” “fine jewelry,” “Mobile Communications,” and “Flowers & Gifts.” See Complainant’s Exhibit B. The Panel reasonably concludes from this evidence that some of the products offered on Respondent’s website directly compete with those offered by Complainant under the AMWAY mark. The Panel notes that it has previously been held that a respondent demonstrates bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent is exploiting an obvious connection between the disputed domain name and a complainant’s mark. See, e.g., Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Previous panels have also held that a respondent attains a commercial benefit where the disputed domain name is used to sell goods that compete with those offered by the complainant. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to…Policy ¶ 4(b)(iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”). Here, the Panel holds that there is an obvious connection between Complainant’s AMWAY mark and the <amwayzhuoyue.com> domain name, because the disputed domain name fully appropriates the AMWAY mark and merely adds the term “zhuoyue.” Furthermore, as in Gardens Alive, Inc., supra, the Panel concludes that the use of the disputed domain name to offer competing goods generates a commercial benefit for Respondent. Therefore, the Panel holds that Respondent has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv).
Thirdly, Complainant asserts that Respondent registered the <amwayzhuoyue.com> domain name with actual notice of Complainant’s rights in the AMWAY mark, and has thus demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii). Previous panels have held that a respondent demonstrates bad faith under Policy ¶ 4(a)(iii) by registering an infringing domain name with actual notice of the complainant’s rights in the appropriated mark. See, e.g., 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). Previous panels have also inferred that a respondent had such actual knowledge indicating bad faith where the appropriated mark is extremely well-known. See Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that the respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where the complainant’s BEANIE BABIES mark was famous and the respondent should have been aware of it). In the instant proceedings, the Panel accepts Complainant’s allegation that the AMWAY mark has gained such notoriety through Complainant’s continuous use of the mark for fifty years. Therefore, the Panel infers that Respondent registered the <amwayzhuoyue.com> domain name with actual notice of Complainant’s rights in the AMWAY mark, and thus demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the AMWAY mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amwayzhuoyue.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 4, 2014
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