Alticor Inc. v. DOMAIN ADMIN / HOSTUSA
Claim Number: FA1802001773569
Complainant is Alticor Inc. (“Complainant”), represented by Amber M. Underhill of Warner Norcross & Judd LLP, Michigan, USA. Respondent is DOMAIN ADMIN / HOSTUSA (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amwayproductsglobal.com>, registered with eNom, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 26, 2018; the Forum received payment on February 26, 2018.
On February 26, 2018, eNom, LLC confirmed by e-mail to the Forum that the <amwayproductsglobal.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC 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 February 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2018 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@amwayproductsglobal.com. Also on February 27, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 23, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 contends as follows:
Complainant, Alticor Inc., is one of the world’s largest direct selling companies, and has marketed its wide variety of goods and services under its AMWAY mark for over 50 years.
Complainant owns pending applications and active registrations for its AMWAY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 716,672 registered Jun. 13, 1961).
Respondent’s <amwayproductsglobal.com> domain name is confusingly similar to Complainant’s AMWAY mark as the mark is incorporated entirely, and includes the generic or descriptive terms “products global” and generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name as Complainant has never authorized Respondent to use its mark. Per Policy ¶¶ 4(c)(i) and (iii), Respondent’s status as a distributor of Complainant’s products does not give Respondent rights and legitimate interests in the <amwayproductsglobal.com> domain name.
Respondent registered and uses the domain name in bad faith. Complainant’s AMWAY mark is coined, thus Respondent’s only purpose in registering the disputed domain name is for commercial gain bad faith. Further, Respondent’s registration and use of the domain name at issue is in bad faith because Complainant’s mark is famous. Respondent attempts to pass itself off as Complainant by creating the false impression that Respondent is an authorized distributor of Complainant’s products which constitutes bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the AMWAY mark as demonstrated by its registration of such mark with the USPTO.
Complainant’s rights in the AMWAY mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent uses the <amwayproductsglobal.com> domain name to pass itself as Complainant or feign a relationship with Complainant, for commercial gain.
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(f), 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 (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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO trademark registration for the AMWAY trademark evidences its rights in such mark for the purposes of Policy ¶ 4(a)(I). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)).
Additionally, Respondent’s domain name contains Complainant’s entire AMWAY trademark followed by the generic terms “news” and “global” all with the top level domain name “.com” appended thereto. The differences between the <amwayproductsglobal.com> domain name and Complainant’s AMWAY trademark are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. In fact the inclusion of the suggestive terms “news” and “global” in the domain name only adds to any confusion between the domain name and Complainant’s trademark. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <amwayproductsglobal.com> domain name is confusingly similar to Complainant’s AMWAY trademark. See Sanofi-Aventis v. 24-7-Commerce.com, FA0571951 (Forum Nov. 18, 2005) (Generic words such as “cheap” and “shop” are insufficient to negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).); see also, Trip Network Inc. v. Alviera, FA 914943 (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 Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the <amwayproductsglobal.com> domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies its registrant as “DOMAIN ADMIN / HOSTUSA.” The record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <amwayproductsglobal.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also, Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration)..
Furthermore, Respondent uses the at-issue domain name without authorization so that it may give the false impression that its <amwayproductsglobal.com> website is sponsored by or otherwise related to Complainant. This use of the domain name does not constitute a bona fide offering, noncommercial or fair use per Policies ¶ 4(c)(i) &(iii). See Associated Materials, Inc. v. Perma Well Inc., FA 154121 (Forum May 23, 2003) (finding that, although the respondent was a distributor of the complainant’s product, the respondent was not authorized to use complainant’s mark in its registered domain name and thus, was not using the domain name as a bona fide offering of goods and services, nor a legitimate noncommercial or fair use); see also Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to 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).”).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The non-exclusive nature of Policy ¶ 4(b) allows the Panel to consider additional factors in its bad faith analysis pursuant to Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). As discussed below, circumstances are present which although not particularly enumerated within Policy ¶ 4(b) nevertheless compel the Panel to conclude that Respondent acted in bad faith regarding the at-issue domain name pursuant to paragraph 4(a)(iii).
Respondent uses the confusingly similar domain name to portray itself as a subsidiary or affiliate of Complainant. Respondent’s ruse is furthered by displaying Complainant’s trademark and trade dress on the <amwayproductsglobal.com> website. In doing so, Respondent creates the false impression that Respondent is an authorized distributor of Complainant’s products, even though Complainant asserts that such is not the case. In failing to respond to Complainant’s claim that Respondent is not authorized to use Complainant’s trademark, Respondent tacitly admits to Complainant’s assertion. Respondent’s registration and use of the trademark laden domain name to create a false impression as to the domain name’s sponsorship indicates bad faith per Policy ¶ 4(a)(iii).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, Laboratoires De Biologie Vegetale Yves Rocher v. Jung Choi, FA 104201 (Forum Mar. 22, 2002) (“[Complainant] is however not an ‘authorized’ retailer of the products, and it is improper to utilize a domain name implying the contrary.”); see also, Labrada Bodybuilding Nutrition, Inc. v. Garrett, FA 94293 (Forum Apr. 27, 2000) (same); Great Am. Knitting Mills Res. Corp. v. Sock Co., FA 95841 (Forum Dec. 7, 2000) (stating that “[w]hile Respondent may continue to sell Gold Toe socks acquired from various sources, it is not an ‘authorized’ retailer of Gold toe socks, and it is improper to utilize domain names implying to the contrary” in finding that Respondent used the disputed domain names in bad faith).
Furthermore and although not specifically argued by Complainant, Respondent registered <amwayproductsglobal.com> knowing that Complainant had trademark rights in AMWAY. Respondent’s prior knowledge is evident given the notoriety of Complainant’s unique trademark and Respondent’s use of the AMWAY trademark on the website addressed by the at-issue domain name. It follows that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <amwayproductsglobal.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amwayproductsglobal.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 27, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page