national arbitration forum

 

DECISION

 

Alticor Inc. v. Jiucheng Zhu

Claim Number: FA0612000861139

 

PARTIES

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 Jiucheng Zhu (“Respondent”), # 52 Yan Jia Li, Hangzhou, Zhejiang, 310000, CN.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <amwayau.com>, registered with Network Solutions, Inc.

 

PANEL

The undersigned certifies that she has 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 as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically December 5, 2006; the National Arbitration Forum received a hard copy of the Complaint December 6, 2006.

 

On December 6, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <amwayau.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. verified that Respondent is bound by the Network Solutions, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On December 19, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 8, 2007, 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@amwayau.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 15, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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."  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      The domain name that Respondent registered, <amwayau.com>, is confusingly similar to Complainant’s AMWAY mark.

 

2.      Respondent has no rights to or legitimate interests in the <amwayau.com> domain name.

 

3.      Respondent registered and used the <amwayau.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Alticor Inc., is a direct selling company that markets and promotes more than 450 products under the AMWAY mark, including personal and home care products.  Complainant promotes its products under the AMWAY mark through various media, including promotional literature, direct mailings, brochures, videos, presentations and Internet websites.  Complainant owns the registrations for over 1,110 generic top-level domain names and over 600 country-code top-level domain names incorporating the AMWAY mark, including <amway.com> and <amway-au.com>.

 

In China, where Respondent resides, Complainant has continuously used the AMWAY mark since 1995, and has greatly increased its sales in recent years, going from $750 million dollars in the year 2002 to more than $2 billion dollars in sales in both 2004 and 2005.

 

Complainant holds approximately 2,400 trademark registrations for the AMWAY mark and variations of the mark with trademark authorities in some 140 countries.  In China alone, Complainant holds more than fifty trademark registrations with the Chinese Trademark Office (including Reg. No. 1,008,313 issued May 21, 1997). 

 

Respondent registered the <amwayau.com> domain name November 17, 2003, and uses it to operate a website selling products unrelated to Complainant’s AMWAY mark.

 

DISCUSSION

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 will draw such inferences as the Panel 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.”).

 

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 to and/or Confusingly Similar

 

Complainant submitted extrinsic evidence in this proceeding of its valid trademark registrations in China, where Respondent resides, as well as in numerous other countries around the world.  The Panel finds that these trademark registrations conclusively establish Complainant’s rights in the AMWAY mark pursuant to Policy ¶ 4(a)(i).  See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (“Complainant’s numerous registrations for its HONEYWELL mark throughout the world are sufficient to establish Complainant’s rights in the HONEYWELL mark under the Policy ¶ 4(a)(i).”); see also Miller Prods. Co. v. Grozinger, FA 823231 (Nat. Arb. Forum Dec. 5, 2006) (“Rights in a trademark can be shown in several ways, including by way of a U.S. trademark registration.  A trademark registration constitutes prima facie evidence of its ownership and validity of the mark.”).

 

The <amwayau.com> domain name contains Complainant’s entire registered AMWAY mark and merely adds the geographic identifier “au,” which stands for “Australia.”  Complainant holds the domain name registration for <amway-au.com>, as well as many other domain names containing the abbreviation “au,” and Complainant markets its products in Australia.  As a result, Respondent failed to distinguish the confusing similarity between the <amwayau.com> domain name and Complainant’s AMWAY mark by simply adding “au.” The Panel finds that the disputed domain name is confusingly similar to the mark under Policy ¶ 4(a)(i).  See MFI UK Ltd. v. Jones, D2003-0102 (WIPO May 8, 2003) (finding the <mfiuk.com> domain name confusingly similar to the complainant’s MFI mark because the addition of the letters “UK” were merely a common designation for the United Kingdom); see also Expedia, Inc. v. Mandanice, FA 146598 (Nat. Arb. Forum Apr. 7, 2003) (finding that the <expedia-uk.com> domain name was confusingly similar to the complainant’s EXPEDIA mark under Policy ¶ 4(a)(i)).

 

The Panel holds that Complainant satisfied ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant established that it has both rights to and legitimate interests in the mark contained in its entirety within the disputed domain name.  Moreover, Complainant alleged that Respondent has no such rights to and legitimate interests in the <amwayau.com> domain name.  Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See 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.”); see also Document Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”).

 

Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <amwayau.com> domain name.  See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).  However, the Panel examines the record to determine if the record shows that Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Respondent registered the domain name under the name “Zhu Jiucheng,” and no evidence in the record suggests that Respondent is commonly known by the <amwayau.com> domain name.  Respondent has not established rights or legitimate interests in the <amwayau.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Systems, LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where no evidence in the record, including the WHOIS information, suggests that respondent was commonly known by the disputed domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that respondent was not commonly known by <shoredurometer.com> and <shoredurometer.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and no other evidence in the record suggested that the respondent was commonly known by the domain names in dispute).

 

Respondent’s website at the <amwayau.com> domain name offers products for sale that are wholly unrelated to Complainant.  The Panel presumes that Respondent is commercially benefiting from making sales at this website.  As a result, Respondent is diverting Internet users seeking Complainant’s AMWAY products to its own website for commercial gain.  This is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).

 

The Panel holds that Complainant satisfied ICANN Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

 

Complainant further alleges that Respondent registered and used a domain name containing Complainant’s protected mark in bad faith.  Respondent’s website at the <amwayau.com> domain name offers various products for sale that are unrelated to Complainant’s products under the AMWAY mark.  In AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006), the respondent registered the <theotheraol.com> and <theotheraol.net> domain names and was using them to redirect Internet users to its own unrelated website for commercial gain.  The panel held that respondent was taking advantage of the confusing similarity between the disputed domain names and the complainant’s AOL mark and found bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  In this case, Respondent is engaging in similar conduct by promoting products unrelated to Complainant through a confusingly similar domain name.  Consequently, the Panel finds that Respondent acted in bad faith in registering and using the disputed domain name, pursuant to Policy ¶ 4(b)(iv).  See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).

 

The Panel holds that Complainant satisfied ICANN Policy ¶ 4(a)(ii). 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <amwayau.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: January 29, 2007.

 

 

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