Alticor Inc. v. TRAVIS JOHNSON
Claim Number: FA1702001718654
Complainant is Alticor Inc. (“Complainant”), represented by R. Scott Keller of Warner Norcross & Judd LLP, Michigan, USA. Respondent is TRAVIS JOHNSON (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amwayclearhelp.com>, registered with eNom, Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically February 23, 2017; the Forum received payment February 23, 2017.
On February 23, 2017, eNom, Inc. confirmed by e-mail to the Forum that the <amwayclearhelp.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. verified that Respondent is bound by the eNom, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2017, 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@amwayclearhelp.com. Also on March 2, 2017, 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 Forum received a timely Response and determined it to be complete March 21, 2017.
On March 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson, who sits here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant is a global manufacturer and retailer of personal, household, and commercial products and services. Complainant uses the AMWAY mark in conjunction with its business practices. Complainant registered the AMWAY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 707,656, registered Nov. 29, 1960). See Amend. Compl., at Attached Ex. A. Respondent’s <amwayclearhelp.com> is confusingly similar to Complainant’s AMWAY mark because it incorporates the mark in its entirety, adds generic terms (“clear” and “help”) and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in <amwayclearhelp.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the AMWAY mark in any way, nor has Complainant allowed Respondent as an affiliated. Complainant notes that even if Respondent were an authorized reseller of Complainant’s products, Complainant does not permit resellers to use the AMWAY mark. Respondent has not made a bona fide offering of goods or services or any legitimate non-commercial or fair use of the domain. Respondent’s <amwayclearhelp.com> resolves to a “Customer Support” webpage providing phone and email contact information for a company in direct competition with Complainant. See Amend. Compl., at Attached Ex. B.
Respondent registered and is using <amwayclearhelp.com> in bad faith. The disputed domain name creates confusion and diverts consumers to Complainant’s competitors. Respondent registered <amwayclearhelp.com> with constructive or actual knowledge of Complainant and its rights to the AMWAY mark.
Respondent submitted a response indicating that the registration of <amwayclearhelp.com> was not done with malicious intent. Respondent states that it discontinued use of the site and wishes to transfer ownership of the domain to Complainant.
PRELIMINARY ISSUE – CONSENT TO TRANSFER
Respondent consents to transfer the <amwayclearhelp.com> domain name to Complainant. However, after the initiation of this proceeding, eNom, Inc. placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. As a result, the Panel finds in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel should do the traditional UDRP analysis to determine if under the Policy, Respondent acted in bad faith and, if so, order an immediate transfer of the <amwayclearhelp.com> domain name rather than to allow Respondent to go forth and use somebody’s protected mark without permission. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
However, this Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. The Panel finds that the facts of the case may reveal whether the Panel should follow the “consent-to-transfer” approach or whether the Panel should determine the case on the merits. “Consent-to-transfer” is one way that cybersquatters avoid adverse findings, especially bad faith for knowingly using another’s protected mark in a domain name. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, the Panel will analyze the case under the UDRP elements.
Complainant established rights and legitimate interests in the mark contained in its entirety within the disputed domain names.
Respondent has no rights or legitimate interests in the mark or the domain name.
Respondent registered a domain name containing in its entirety Complainant’s
protected mark without a right or license to do so and with full knowledge of
Complainant’s rights in that mark.
The domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name 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 Complainant to 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.
Identical or Confusingly Similar:
Complainant is a global manufacturer and retailer of personal, household, and commercial products and services. Complainant uses the AMWAY mark in conjunction with its business practices. Complainant claims it registered the AMWAY mark with USPTO (e.g. Reg. No. 707,656, registered on Nov. 29, 1960). See Amend. Compl., at Attached Ex. A. The general consensus among panels is that USPTO registrations are sufficient to show rights in a mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Here, the Panel finds that Complainant’s USPTO registration shows rights in the AMWAY mark.
Complainant contends that Respondent’s <amwayclearhelp.com> is confusingly similar to Complainant’s AMWAY mark because it incorporates the mark in its entirety, adding generic terms (“clear” and “help”) and the “.com” gTLD. Confusing similarity exists where a disputed domain name contains complainant’s entire mark and differs only by the addition of generic or descriptive phrases and a top-level domain. The differences between the domain name and the mark put into it do not distinguish the disputed domain name from Complainant’s protected mark. Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016). Thus, the Panel agrees with Complainant that Respondent’s <amwayclearhelp.com> is confusingly similar to Complainant’s AMWAY mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a confusingly similar domain name including in its entirety Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commensuch taries, FA 741828 (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 (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 asserts that Respondent does not have rights or legitimate interests in <amwayclearhelp.com>. Complainant contends that Respondent is not commonly known by the disputed domain name. WHOIS information associated with the domain name identifies Respondent as “Travis Johnson.” “Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent is not commonly known by the [disputed domain name] in any derivation.” Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003). The Panel finds that Respondent is not commonly known by the disputed domain name where no evidence in the record, including the WHOIS information, suggests that Respondent is commonly known by the disputed domain name. Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006).
Complainant notes it did not authorize or license Respondent to use the AMWAY mark in any way and Complainant notes as well that Respondent is not an affiliate. Even if Respondent were an authorized reseller of Complainant’s products, Complainant does not permit resellers to use the AMWAY mark. Panels have found that, although the respondent was a distributor of the complainant’s product, the respondent did not have permission to use the complainant’s mark in its registered domain name and, therefore, was not using the domain name as a bona fide offering of goods or services or a legitimate noncommercial or fair use. Associated Materials, Inc. v. Perma Well, Inc., FA 154121 (Forum May 23, 2003).
Furthermore, Complainant asserts that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <amwayclearhelp.com> resolves to a “Customer Support” webpage providing phone and email contact information for a company in direct competition with Complainant. See Amend. Compl., at Attached Ex. B. Opportunistically “capitalizing on well-known marks of a [c]omplainant by attracting Internet users to its disputed domain name where [r]espondent sells competing products of [c]omplainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010). Therefore, the Panel finds that Respondent has no rights to or interests in <amwayclearhelp.com> pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent registered a disputed domain name containing in is entirety Complainant’s protected mark without right or permission; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant maintains that Respondent registered and is using <amwayclearhelp.com> in bad faith. Respondent’s <amwayclearhelp.com> is a customer service page providing contact information for a company in direct competition with Complainant. See Amend. Compl., at Attached Ex. B. Complainant contends that the disputed domain name creates confusion and diverts consumers to Complainant’s competitors. Where a respondent uses a disputed domain name to resolve to a website where Respondent offers services similar to Complainant’s to Internet users, such tactics are likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site. Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000). See also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). The Panel finds that Respondent registered and is using <amwayclearhelp.com> in bad faith under the Policy.
Finally, Complainant argues that Respondent registered <amwayclearhelp.com> with constructive or actual knowledge of Complainant and its rights to the AMWAY mark. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” the Panel finds actual knowledge by virtue of the name chosen and the use given. Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). Complainant’s mark is a famous one and its products widely distributed. It is inconceivable that Respondent would use the word AMWAY, Complainant’s protected mark, without actual knowledge. Further, based on the use made, Respondent knew of Complainant's rights in the mark and sought to compete under Complainant’s own mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). The Panel finds that circumstances indicate that Respondent had actual knowledge of Complainant's rights in its mark when it registered the domain name. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006). Such conduct supports findings of bad faith registration and use.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the instant disputed domain name containing Complainant’s protected mark in bad faith; Complainant satisfied the elements of ICANN 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 <amwayclearhelp.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
April 10, 2017
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