Alticor Inc. v. Prutsanai Mahakapong / Corbiztar Co., Ltd.
Claim Number: FA1209001463662
Complainant is Alticor Inc. (“Complainant”), represented by Kenneth A. Coleman of Warner Norcross & Judd LLP, Michigan, USA. Respondent is Prutsanai Mahakapong / Corbiztar Co., Ltd. (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amway.tv>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 21, 2012; the National Arbitration Forum received payment on September 21, 2012.
On September 22, 2012, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <amway.tv> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 September 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 2012 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@amway.tv. Also on September 25, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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" 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 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’s Allegations
1. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the AMWAY mark (e.g., Reg. No. 707,656 registered Nov. 29, 1960).
2. According to the WHOIS information for Respondent, the owner of the<amway.tv> domain name is listed as “Prutsanai Magakapong/ Corbiztar Co., Ltd.”
3. Respondent is not authorized by Complainant to sell its products.
4. Respondent’s <amway.tv> domain name is a pay-per-click site offering various links to foreign exchange and currency trading, education, automobile, and automobile insurance sites.
5. Respondent’s <amway.tv> domain name is confusingly similar to Complainant’s AMWAY mark.
6. Respondent is not commonly known by the AMWAY mark or the <amway.tv> domain name.
7. Respondent does not have rights or a legitimate interest in registering the <amway.tv> domain name.
8. Respondent’s resolving website does not constitute a bona fide offering of goods or services or a legitimate commercial use of Complainant’s AMWAY mark or the disputed domain name.
9. Respondent is attempting to associate itself with Complainant in order to profit from Complainant’s established business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes that Respondent registered the disputed domain name on November 19, 2009.
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(e), 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 (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.”).
Complainant asserts that it has rights in the AMWAY mark pursuant to Policy ¶ 4(a)(i) due to its trademark registrations with the USPTO (e.g., Reg. No. 707,656 registered Nov. 29, 1960). Evidence of a trademark registration with the USPTO satisfies the requirement of demonstrating rights in a given mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007). The Panel notes that it is irrelevant whether a complainant has registered its trademark in the country of the respondent’s residence. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). The Panel therefore determines that Complainant has proven rights in the mark for the purposes of Policy ¶ 4(a)(i).
Complainant further claims that the <amway.tv> domain name is identical to Complainant’s AMWAY mark. The Panel finds that the addition of the country code top-level domain (“ccTLD”) “.tv” is insufficient to distinguish this domain name from an otherwise identical mark. See World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from the complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent.”). The Panel concludes that because the <amway.tv> domain name contains Complainant’s AMWAY mark in its entirety with the addition of the (“ccTLD”) “.tv,” the <amway.tv> domain name is identical to Complainant’s AMWAY mark pursuant to Policy ¶ 4(a)(i).
Complainant claims, and this Panel finds, that the operation of a pay-per-click website at a confusingly similar domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel notes that some of the links featured on the website resolving from the <amway.tv> domain name include “Find Forex Trading on Scour,” “Forex Trading,” “Online Forex Trading,” “ High School Diploma Online,” “Reorder Checks,” “Culinary Arts,” “Penny Stocks,” “ Used Cars,” and “ Currency Trading.” Using a confusingly similar domain name to profit from links of third parties does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). Thus, the Panel finds that Respondent’s use of the disputed domain name to feature pay-per-click links does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant contends that in light of the fame and notoriety of Complainant's AMWAY mark, it is inconceivable that Respondent could have registered the <amway.tv> domain name domain name without knowledge of Complainant's rights in the mark. The Panel agrees with Complainant and finds that Respondent’s inferred knowledge of Complainant's rights in its well-known mark prior to registering the disputed domain name, and incorporation of that exact mark in its domain name, is adequate evidence of bad faith registration under Policy ¶ 4(a)(iii).
Complainant asserts that Respondent is attempting to portray itself as a subsidiary or affiliate of Complainant when it is not. The Panel agrees that Respondent’s actions are likely to cause confusion as to Respondent’s affiliation with Complainant’s business. The Panel also notes that the links present on Respondent’s website resolving from the <amway.tv> domain name are likely pay-per-click links from which Respondent will profit. Registration of a confusingly similar domain name containing Complainant’s mark in order to attract consumers to a website offering links to third-party websites in order to profit from those links constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Thus, Complainant has also satisfied 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 <amway.tv> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: November 6, 2012
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