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Generic Top Level Domain Name (gTLD) Decisions |
Alticor Inc. v. Anton Suprun a/k/a
Dinamika Inc.
Claim
Number: FA0410000341230
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,
Michigan 49503. Respondent is Anton Suprun a/k/a Dinamika Inc. (“Respondent”),
47337 Middle Bluff Place, Patomac Falls, Virginia 20165.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <amway-ru.com>, registered with Register.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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on October 13, 2004; the
Forum received a hard copy of the
Complaint on October 18, 2004.
On
October 14, 2004, Register.com confirmed by e-mail to the Forum that the domain
name <amway-ru.com> is registered with Register.com and that
Respondent is the current registrant of the name. Register.com has verified
that Respondent
is bound by the Register.com 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
October 22, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 11, 2004 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@amway-ru.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 Forum transmitted
to the parties a Notification of Respondent Default.
On
November 19, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed
the Honorable Charles K.
McCotter, Jr. (Ret.) 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."
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 makes the following assertions:
1. Respondent’s <amway-ru.com>
domain name is confusingly similar to Complainant’s AMWAY mark.
2. Respondent does not have any rights or
legitimate interests in the <amway-ru.com> domain name.
3. Respondent registered and used the <amway-ru.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. At the end of fiscal year
2003, Complainant’s worldwide sales totaled over $4.5 billion.
The AMWAY
product line includes more than 450 personal care, nutrition and wellness, home
care, home living, and commercial products.
Complainant owns
over 30 U.S. registrations for its AMWAY mark, including registration numbers
1,338,634 (issued June 4, 1985 for
“oil additive”), 1,526,319 (issued Feb. 28,
1989 for “water softening compound; water hardness test strips”), 845,230
(issued Mar.
5, 1968 for “empty soap dispensers, plastic bottles and tubes,
shopping bags, paperboard boxes, laundry bags and trays”), 716,672
(issued June
13, 1961 for “cleaners and cleaning compounds, specifically, abrasive and
polishing cleaners”), and 707,656 (issued
Nov. 29, 1960 for “waxes and
polishes, particularly furniture polishes and floor waxes”). Complainant also owns over 2,600 trademark
registrations in over 100 countries for marks containing the term AMWAY,
including 12 registrations
issued by the Russian Trademark Office.
Respondent
became an authorized independent business owner (“IBO”) of Complainant’s
company in 1998 and distributed Complainant’s
AMWAY products in Hungary. On October 26, 1998, Respondent registered
the domain name <amway.ru>.
Respondent registered the domain name <amway-ru.com> on
March 22, 2001. However, Complainant’s
IBOs are strictly prohibited from using Complainant’s trademarks in connection
with Internet websites. Complainant
warned Respondent about its unauthorized use of Complainant’s AMWAY trademark
in a suspension letter dated May 4, 2001
(Exhibit F). Respondent ignored Complainant’s warnings. On July 19, 2001, Complainant sent another
warning to Respondent that stated Respondent’s Amway membership would be
revoked unless
Respondent stopped its unauthorized activity within two weeks
(Exhibit G). In August 2001,
Complainant terminated Respondent’s IBO status due to the unauthorized activity
on the part of Respondent.
Sometime in
2003, Respondent offered the <amway-ru.com>domain name
registration for sale at the domain name <amway.ru>. Complainant anonymously contacted Respondent
through a third-party intermediary seeking to purchase the domain name. Respondent agreed to sell the domain name
registration for $1,000.00. Respondent
has never attached the domain name <amway-ru.com> to an active
website.
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 pursuant to paragraph 4(a)(i) of the
Policy as the result of its numerous registrations
of the mark with various
legitimate governmental authorities worldwide.
See Janus Int’l Holding Co.
v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption); 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).
The domain name <amway-ru.com> incorporates Complainant’s AMWAY mark in
its entirety. Respondent has merely
added a hyphen to separate Complainant’s mark from the letters “ru,” a common
abbreviation for the country code
of Russia.
It is established that the addition of a hyphen in a domain name is of
little significance. Likewise, the
addition of an abbreviation for a common designation of a country has been
found to be insufficient to alleviate the
confusing similarity that arises by
incorporating a third-party mark in a domain name. Therefore, the domain name <amway-ru.com> is
confusingly similar to Complainant’s AMWAY mark pursuant to paragraph 4(a)(i)
of the Policy. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the
addition of the country-code '.us' fails to add any distinguishing
characteristic to the domain name, the <tropar.us> domain name is
identical to Complainant's TROPAR mark); see also MFI UK Ltd. v. Jones,
D2003-0102 (WIPO May 8, 2003) (finding the domain name <mfiuk.com>
confusingly similar to Complainant’s MFI mark because the
addition of the
letters “UK” were merely a common designation of the United Kingdom, which was
where Complainant engaged in business);
see also Toyota
Motor Sales U.S.A. Inc. v. Clelland, FA
198018 (Nat. Arb. Forum Nov. 10, 2003) (“Hyphens fail to alleviate the identical nature of a combination of
words existing in a domain name from that of a registered mark.”);
see also Sports
Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a
distinct characteristic capable of overcoming a Policy ¶ 4(a)(i)
confusingly
similar analysis.”).
Complainant has established
Policy ¶ 4(a)(i).
The lack of a
Response allows the Panel to accept all reasonable allegations set forth in the
Complaint that pertain to paragraph
4(a)(ii) of the Policy as true unless
clearly contradicted by the evidence. See
Allergan Inc. v. MedBotox Inc., FA
170639 (Nat. Arb. Forum Sept. 9, 2003) (“Respondent has not challenged the allegations in the Complaint.
Under these circumstances it is appropriate for the Panel to accept
all
reasonable allegations and inferences in the Complaint as true.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond
allows a presumption that Complainant's allegations are true unless
clearly
contradicted by the evidence).
Furthermore, the
failure of Respondent to respond to the Complaint may be construed as an
implicit admission that Respondent lacks
rights and legitimate interests in the
disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no
legitimate interest
in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit
admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s
reasonable
allegations are true.”).
Since
registering the domain name <amway-ru.com> in March 2001, Respondent
has failed to attach an active website to the domain name. It is established that such passive holding
is insufficient to demonstrate that the domain name is used in connection with
a bona
fide offering of goods or services pursuant to paragraph 4(c)(i) of the
Policy or a legitimate noncommercial or fair use pursuant
to paragraph
4(c)(iii) of the Policy. See TMP
Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the domain
name does not establish rights or legitimate interests pursuant
to Policy ¶
4(a)(ii).”); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000)
(finding no rights or legitimate interests where Respondent failed to submit a
Response to the Complaint
and had made no use of the domain name in question); see
also Am. Home Prod. Corp. v.
Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or
legitimate interests in the domain name <solgarvitamins.com> where
Respondent
merely passively held the domain name).
Nothing in the
record sufficiently indicates that Respondent is commonly known by the domain
name <amway-ru.com> pursuant to paragraph 4(c)(ii) of the
Policy. The fact that Respondent has
failed to attach an active website to the domain name is sufficient to indicate
that Respondent is not
commonly known by the domain name pursuant to paragraph
4(c)(ii) of the Policy. See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when 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").
Moreover,
Respondent was not authorized to use Complainant’s AMWAY mark in a domain name
pursuant to its contractual agreement to
distribute Complainant’s
products. Such unauthorized use does
not evidence rights or legitimate interests in the disputed domain name
pursuant to paragraph 4(a)(ii)
of the Policy.
See State Farm Mut. Auto. Ins. Co.
v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“[U]nauthorized
providing of information and services under a mark owned by a third party
cannot be said to be the bona fide offering of goods or services.”); see
also Telstra Corp. v. Nuclear
Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding that Respondent lacked
rights and legitimate interests in the domain name because Respondent
was not
authorized by Complainant to use its trademarks and the mark was distinct in
its nature, such that one would not legitimately
choose it unless seeking to
create an impression of an association with Complainant).
Complainant has
established Policy ¶ 4(a)(ii).
Complainant was
authorized as an IBO for Complainant’s AMWAY business in 1998. Respondent did not register the disputed
domain name until March 22, 2001.
Therefore, Respondent had actual notice of Complainant’s AMWAY mark
prior to registering the domain name that is confusingly similar
to
Complainant’s mark. Registering a
domain name one knows to be similar to another’s mark has been found to be
evidence of bad faith registration and use.
See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135,
1148 (9th
Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be
similar to another, one can infer an intent to confuse.");
see also 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 Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr.
24, 2002) (finding that because the link between Complainant’s mark and the
content advertised on Respondent’s
website was obvious, Respondent “must have
known about the Complainant’s mark when it registered the subject domain
name”).
Respondent
listed the <amway-ru.com> domain name registration for sale on the
website attached to Respondent’s other registered domain name <amway.ru>. This fact, combined with the fact that
Respondent has not connected the disputed domain name to an active website,
suggests that Respondent
did not intend to actually use the disputed domain
name except to sell it to a potential purchaser interested in a domain name
that
includes the term “amway.” More
likely than not, such an “interested” purchaser would be Complainant, or one of
Complainant’s competitors, given the domain name
includes Complainant’s
trademark in its entirety. Respondent
agreed to sell the domain name registration for $1,000.00, which is in excess
of any out-of-pocket expenses associated
with the domain name, especially
because there had been no apparent efforts to build an attached website. Therefore, Respondent is in violation of paragraph
4(b)(i) of the Policy because Respondent registered the disputed domain name
primarily
to sell it to Complainant, or a competitor of Complainant’s business,
for valuable consideration in excess of any documented out-of-pocket
expenses
directly related to the domain name. See Koninklijke Philips Elec. N.V. v. Duplica Hugo Coppens, D2001-0312 (WIPO May 11, 2001) (finding that
Respondent violated Policy ¶
4(b)(i) based on correspondence between Respondent and Complainant and where the domain name was being offered for sale at GreatDomains.com for
the price of $1,000); see
also World Wrestling Fed’n Entmt., Inc.
v. Bosman, D99-0001
(WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith
because it offered to sell the domain name
for valuable consideration in excess
of any out-of-pocket costs); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26,
2000) (finding that Respondent demonstrated bad faith when it requested
monetary compensation beyond
out-of-pocket costs in exchange for the registered
domain name).
Moreover,
Respondent was a distributor of Complainant’s products and was not authorized
to use Complainant’s AMWAY mark in a domain
name. Therefore, Respondent’s registration of a domain name that
incorporated Complainant’s mark is evidence of bad faith registration and
use
pursuant to paragraph 4(a)(iii) of the Policy.
See Procter & Gamble Co. v. Hlad, FA 126656 (Nat. Arb. Forum
Nov. 20, 2002) (finding that the disputed domain name was registered and used
in bad faith where Respondent,
a distributor of Complainant’s products who was
not a licensee of Complainant, used Complainant’s mark in its domain name,
suggesting
a broader relationship with Complainant and fostering the inference
that Respondent was the creator of Complainant’s products rather
than a mere
distributor); see also Assoc. Materials, Inc. v. Perma Well, Inc., FA
154121 (Nat. Arb. Forum May 23, 2003) (finding that Respondent’s actual
knowledge of Complainant’s rights in the ULTRAGUARD mark,
inferred from the
fact that Respondent was a distributor of Complainant, along with Respondent
being on notice of its own lack of
rights evidenced that the domain name was
registered and used in bad faith).
Complainant has
established 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-ru.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
November 29, 2004
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