Alticor Inc. v. Yong Zhang
Claim
Number: FA0504000450803
Complainant is Alticor Inc. (“Complainant”), represented
by R. Scott Keller, of Warner Norcross and Judd LLP,
900 Fifth Third Center, 111 Lyon Street, N.W., Grand Rapids, MI 49503. Respondent is Yong Zhang (“Respondent”), Shanghai, Shanghai Shanghai 200336, CN.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <1amway.com> and <2amway.com>,
registered with Bizcn.com, Inc.
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge has no known conflict in serving as Panelist in this
proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
4, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 5, 2005.
On
April 21, 2005, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain names <1amway.com> and <2amway.com>
are registered with Bizcn.com, Inc. and that Respondent is the current
registrant of the names. Bizcn.com,
Inc. has verified that Respondent is bound by the Bizcn.com, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
April 25, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 16, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@1amway.com and postmaster@2amway.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On
May 18, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Sandra Franklin
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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <1amway.com>
and <2amway.com> domain names are confusingly similar to
Complainant’s AMWAY mark.
2. Respondent does not have any rights or
legitimate interests in the <1amway.com> and <2amway.com>
domain names.
3. Respondent registered and used the <1amway.com>
and <2amway.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Alticor Inc., is one of the world’s largest direct selling companies. Complainant has marketed various products
under the AMWAY mark since 1959, including cosmetics, skin care products, hair
care products, dietary food supplements, nutritional foods, air and water treatment
systems, detergents, all-purpose cleaners and car care products. Through a network of more than 3.6 million
independent business owners (“IBOs”), Complainant distributes AMWAY products in
more than eighty countries and territories.
Complainant’s global sales exceeded $6.2 billion in 2004.
Complainant has
registered the AMWAY mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 1,056,259 issued January 11, 1977). Additionally, Complainant has registered the
AMWAY mark in many jurisdictions worldwide, including China (Reg. No. 1,008,313
issued May 21, 1997).
Respondent was
previously an authorized IBO who distributed Complainant’s products in
Australia. However, under the standard
distributorship agreement signed by Respondent, IBOs are specifically
prohibited from using the AMWAY mark in an sort of public display, such as
business cards, telephone directories or domain names.
Respondent
registered the <1amway.com> and <2amway.com> domain
names on July 19, 2004. Respondent’s
domain names resolve to a website that sells only Complainant’s products.
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."
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.
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.
Complainant has
established rights in the AMWAY mark through registration of the mark with the
USPTO and with trademark authorities worldwide. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive). The respondent has the
burden of refuting this assumption. See
also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding
that ICANN Policy ¶ 4(a)(i) does not require a complainant to demonstrate
“exclusive rights,” but only that the complainant has a bona fide basis
for making the Complaint in the first place).
Respondent’s <1amway.com>
and <2amway.com> domain names are confusingly similar to
Complainant’s mark as they incorporate the mark in its entirety and add the
numerals “1” and “2,” respectively, and the generic top-level domain
“.com.” See Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31,
2000) (finding that the addition of the numeral 4 in the domain name
<4icq.com> does nothing to deflect the impact on the viewer of the mark
ICQ and is therefore confusingly similar); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) (finding that a domain name which differs by only one letter from a
trademark has a greater tendency to be confusingly similar to the trademark
where the trademark is highly
distinctive); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
May 27, 2003) (“The addition of a top-level domain is irrelevant when
establishing whether or not a mark is identical or confusingly similar, because
top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable allegations and
assertions set forth by Complainant as true and accurate. See 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.”); see also Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to
[contest complainant’s allegations] is tantamount to admitting the truth of
complainant’s assertion in this regard.”).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain names, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
construe Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <1amway.com> and <2amway.com>
domain names pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Respondent is
using the confusingly similar domain names to operate a website that sells
Complainant’s products. Such use is not
a use in connection with 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). See Nat’l Collegiate Athletic Ass’n v. Halpern,
D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the
complainant’s goods without the complainant’s authority is not a bona fide
use); see also Toyota Jidosha Kabushiki Kaisha v. Double Time Jazz, FA
113316 (Nat. Arb. Forum July 10, 2002) (“Respondent cannot use Complainant’s
trademark in a domain name when Respondent, even though selling Complainant’s
goods, has no permission to use the trademark as the domain name.”).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain names or authorized to register domain names featuring
Complainant’s AMWAY mark. In fact,
Respondent was specifically barred from using the AMWAY mark in domain names
pursuant to the IBO agreement between Complainant and Respondent. Thus, the Panel finds that Respondent has
not established rights or legitimate interests in the <1amway.com> and
<2amway.com> domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in the respondent’s WHOIS
information implies that the respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining whether Policy ¶ 4(c)(ii) applies); see
also Allen-Edmonds Shoe Corp. v. Takin’ Care of Bus., D2002-0799 (WIPO Oct. 10, 2002)
(“[W]ithout a specific agreement between the parties, the reseller does not
have the right to use the licensor’s trademark as a domain name.”); see also
Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests where the respondent was not commonly known by the mark
and never applied for a license or permission from the complainant to use the
trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the confusingly similar domain names to operate a website that sells
Complainant’s products. The Panel finds
that such use constitutes disruption and is evidence of bad faith registration
and use 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 Johnson & Johnson v. Rx
USA, FA 112609 (Nat. Arb. Forum June 13,
2002) (finding bad faith where the respondent used the disputed domain name to
operate a website to sell the complainant’s REMICADE drug).
Because Respondent’s <1amway.com> and <2amway.com>
domain names are confusingly similar to Complainant’s AMWAY mark, consumers
accessing Respondent’s domain name may become confused as to Complainant’s
affiliation with the resulting website.
Therefore, Respondent’s commercial use of the disputed domain names
constitutes bad faith registration and use pursuant to 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))”; see also Fanuc
Ltd v. Mach. Control Servs.,
FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated
Policy ¶ 4(b)(iv) by selling used Fanuc parts and robots on the website at
<fanuc.com> because customers visiting the site were confused as to the
relationship between the respondent and the complainant).
Furthermore,
Respondent registered the <1amway.com> and <2amway.com>
domain names with actual or constructive knowledge of Complainant’s rights in
the AMWAY mark due to Complainant’s registration of the mark with the USPTO and
Chinese trademark authorities as well as to the immense international fame the
mark has acquired. Moreover, the Panel
infers that Respondent registered the domain names with actual knowledge of
Complainant’s rights in the mark due to the fact that Respondent was at one
time an IBO for Complainant as well as to the obvious connection between
Respondent’s website and Complainant’s products. Registration of domain names that are confusingly similar to
another’s mark despite actual or constructive knowledge of the mark holder’s
rights is tantamount to bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18. 2000) (finding that the respondent had actual and constructive
knowledge of the complainant’s EXXON mark given the worldwide prominence of the
mark); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum
Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register
of the USPTO, a status that confers constructive notice on those seeking to
register or use the mark or any confusingly similar variation thereof.”); see
also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19,
2002) (“It can be inferred that Respondent had knowledge of Complainant’s rights
in the CELEBREX mark because Respondent is using the CELEBREX mark as a means
to sell prescription drugs, including Complainant’s CELEBREX drug”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <1amway.com> and <2amway.com>
domain names be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
May 31, 2005
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