Alticor Inc. v. Amwayco c/o Yong Zhang
Claim
Number: FA0504000467762
Complainant is Alticor Inc. (“Complainant”), represented
by R. Scott Keller, of Warner Norcross & Judd LLP, 900 Fifth Third Center, 111 Lyon Street, N.W., Grand Rapids, MI
49503. Respondent is Amwayco c/o Yong Zhang (“Respondent”),
Room 201, No. 51, Branch No. 21, No. 45, Shui Cheng Road, Shanghai, Shanghai,
200336.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <amwaypower.com>, registered with Bizcn.com,
Inc.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
26, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 28, 2005.
On
April 27, 2005, Bizcn.om, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <amwaypower.com> is registered with Bizcn.com,
Inc. and that Respondent is the current registrant of the name. 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 29, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 19, 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@amwaypower.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 25, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Louis E. Condon
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <amwaypower.com>
domain name is confusingly similar to Complainant’s AMWAY mark.
2. Respondent does not have any rights or
legitimate interests in the <amwaypower.com> domain name.
3. Respondent registered and used the <amwaypower.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Amway
Corporation was founded in 1959. In
2000, Amway Corporation changed its name to Alticor Inc. and changed the name
of one of its subsidiaries to Amway Corporation. Complainant is one of the world’s largest direct selling
companies. Through a network of more than
3.6 million independent business owners, Complainant distributes products under
the AMWAY trademark and other brands of products in over 80 countries and
territories.
Complainant
holds 47 trademark registrations with the United States Patent and Trademark
Office for its AMWAY mark (e.g., Reg. No. 1,338,634 issued June 4, 1985. Complainant
also holds over 2,600 trademark registrations in over 100 countries for marks
containing the AMWAY name.
Respondent
registered the <amwaypower.com> domain name on May 30, 2004. Respondent is using the disputed domain name
to sell and distribute Complainant’s products in China.
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 with the United
States Patent and Trademark Office and through continuous use of the mark in commerce. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning.”); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark).
Respondent’s <amwaypower.com> domain name is confusingly similar to Complainant’s AMWAY
mark. Respondent’s domain name
incorporates Complainant’s mark in its entirety and adds the word “power” to
the mark. The addition of the word
“power” to Complainant’s mark does not negate the confusingly similar aspects
of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd.
v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of the
complainant combined with a generic word or term); see also Pfizer, Inc. v.
Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject
domain name incorporates the VIAGRA mark in its entirety, and deviates only by
the addition of the word “bomb,” the domain name is rendered confusingly
similar to the complainant’s mark); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000)
(finding that the domain name <bodyshopdigital.com> is confusingly
similar to the complainant’s THE BODY SHOP trademark).
Additionally,
Respondent’s <amwaypower.com> domain name is confusingly similar
to Complainant’s AMWAY mark because the domain name incorporates Complainant’s
mark in its entirety and adds the generic top-level domain “.com.” The addition of a generic top-level domain
to Complainant’s mark does
not negate the confusingly similar aspects of Respondent’s domain name pursuant
to Policy ¶ 4(a)(i). See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name
<gaygames.com> was identical to the complainant's registered trademark
GAY GAMES); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr.
30, 2001) (finding that <mysticlake.net> was plainly identical to the
complainant’s MYSTIC LAKE trademark and service mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent has no rights or legitimate interests in the <amwaypower.com>
domain name. The burden shifts to
Respondent to show that it does have rights or legitimate interests once
Complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure to respond to the Complaint, it is
assumed that Respondent does not have rights or legitimate interests in the
disputed domain name. See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding
that where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (finding that once the complainant asserts that the
respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to the respondent to provide credible evidence that
substantiates its claim of rights or legitimate interests in the domain name); see
also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the
respondents’ failure to respond can be construed as an admission that they do
not have rights or legitimate interest in the domain names).
The Panel may
accept all reasonable allegations and inferences in the Complaint as true
because Respondent has not submitted a response. 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 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).
Respondent is
not using the <amwaypower.com> domain name in connection with a
bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not
making a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because
Respondent is using a domain name that is confusingly similar to Complainant’s
AMWAY mark to sell and distribute Complainant’s products. See G.D. Searle & Co. v. Mahoney, FA
112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the
disputed domain name to solicit pharmaceutical orders without a license or
authorization from the complainant does not constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(i)); see also Nike, Inc. v. Dias,
FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona fide” offering of
goods or services where the respondent used the complainant’s mark without
authorization to attract Internet users to its website, which offered both the
complainant’s products and those of the complainant’s competitors); see also
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, as well as
others’ goods, is not bona fide use).
Respondent has
offered no evidence and, nothing in the record suggests, that Respondent is
commonly known by the <amwaypower.com> domain name, despite
listing its name as “Amwayco c/o Yong Zhang” in the WHOIS contact
information. Furthermore, Complainant
has never authorized or licensed Respondent to use its AMWAY mark. Thus, Respondent has not established rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail"); 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); see also Yoga Works, Inc. v.
Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by”
the <shantiyogaworks.com> domain name despite listing its name as
“Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel
that Respondent was ever ‘commonly known by’ the disputed domain name prior to
its registration of the disputed domain name”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
is capitalizing on the goodwill of the AMWAY mark by using the <amwaypower.com> domain name to
direct Internet users to a commercial website featuring Complainant’s
products. Since the disputed domain
name is confusingly similar to Complainant’s mark, a consumer searching for
Complainant could become confused as to Complainant’s affiliation with the
resulting website. Therefore,
Respondent’s opportunistic and commercial use of the disputed domain name
represents bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that, if the respondent profits
from its diversionary use of the complainant's mark when the domain name
resolves to commercial websites and the respondent fails to contest the complaint,
it may be concluded that the respondent is using the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where the respondent directed Internet users
seeking the complainant’s site to its own website for commercial gain).
Furthermore, Respondent had
actual or constructive knowledge of Complainant’s rights in the AMWAY mark due
to Complainant’s registration of the mark with the United States Patent and
Trademark Office as well as the international recognition associated with
Complainant’s mark. Thus, the Panel
concludes that Respondent’s registration of the <amwaypower.com> domain name
with actual or constructive knowledge of Complainant’s rights in the AMWAY mark
is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See 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 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 and thus Respondent registered the domain name in bad faith).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <amwaypower.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
June 8, 2005
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