ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Alticor Inc. v. Privacy Protection, Hosting Ukraine LLC / Колюка Виктор Александрович / Kolyuka Viktor Aleksandrovich Case No. D2021-4140 1. The Parties The Complainant is Alticor Inc., United States of America ("US"), represented by Baker & McKenzie, Ukraine. The Respondent is Privacy Protection, Hosting Ukraine LLC, Ukraine / Колюка Виктор Александрович / Kolyuka Viktor Aleksandrovich, Ukraine. 2. The Domain Name and Registrar The disputed domain name
is registered with Hosting Ukraine LLC (ua.ukraine) (the "Registrar"). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on December 9, 2021. On December 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 14, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 14, 2021. On December 14, 2021, the Center sent an email communication regarding the language of the proceeding in both Russian and English. On December 14, 2021, the Complainant confirmed its request to proceed in English, and the Respondent did not submit any comments. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced in both Russian and English on January 5, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 26, 2022. The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on February 10, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Further Procedural Considerations Under paragraph 10 of the Rules, the Panel is required to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, and also that the administrative proceeding takes place with due expedition. Since the Respondent's mailing address is stated to be in Ukraine (whether this is indeed accurate is not clear), which is subject to an international conflict at the date of this Decision that may impact case notification, it is appropriate for the Panel to consider, in accordance with its discretion under paragraph 10 of the Rules, whether the proceeding should continue. Having considered all the circumstances of the case, the Panel is of the view that it should. The Panel notes that the courier was not able to deliver the written notice to the Respondent's address in Ukraine since the Respondent's postal address - as provided by it to the Registrar - is missing adequate details; the Panel notes however that the Complaint together with the amendment to the Complaint were delivered to the Respondent's email address provided by the Registrar. The Panel further notes that a fair opportunity to respond was further ensured, in the circumstances, by the additional time the Respondent had available to reply to the contentions of the Complainant. It is moreover noted that, for the reasons which are set out later in this Decision, the Panel has no doubt whatsoever that the Respondent registered and has used the disputed domain name in bad faith and with the intention of unfairly targeting the Complainant's goodwill in its trademark and misleading consumers. The Panel concludes that the Parties have been given a fair opportunity to present their case, and so that the administrative proceeding takes place with due expedition the Panel will proceed to a Decision accordingly. 5. Factual Background The Complainant owns the US Trademark AMWAY No. 72090731 registered on June 13, 1961 covering goods in Class 3, namely cleaners and cleaning compounds, specifically, abrasive and polishing cleaners, and International Trademark No. 1244776 registered on November 25, 2014 covering goods and services in Classes 30 and 35, namely cleaners and cleaning compounds, specifically, abrasive and polishing cleaners. In Ukraine, the Complainant owns trademark No. 4423 for AMWAY filed on January 25, 1991 and registered on April 15, 1994 for goods in Classes 3, 5, 16, 21, 25, and 35, including bleaching preparations and other substances for laundry use; preparations for cleaning, polishing, degreasing and abrasive treatment; soap; perfumes, essential oils, cosmetics, hair lotions; tooth powders and pastes; Ukrainian Trademark No. 172590 filed on January 8, 2013 for AMWAY and device elements, registered on June 25, 2013 for services in Class 35, including advertising case management, business administration, services for processing and receiving orders for goods from catalogues sent by mail; Ukrainian Trademark No. 42641 filed on October 1, 2002 for AMWAY and device elements, registered on August 16, 2004 for a wide range of goods and page 3 services in Classes 3, 5, 10, 11, 16, 21, 29, 30, 32, and 35, including laundry care products, cleaning and polishing preparations for household use, cosmetics and toiletries. The Complainant owns over 750 active trademark registrations in over 150 countries for marks containing the term AMWAY alone, stylized, and with logos and/or word combinations. The Complainant also owns over 650 generic Top Level domain names, including (registered on October 9, 1995), (registered on December 4, 1997), (registered on December 22, 1999), (registered on April 13, 2005), (registered on May 12, 2010) and many other AMWAY domain name variations. The disputed domain name was registered on August 8, 2021. The disputed domain name resolved to a website on which Amway branded goods were offered for sale, and that replicated the Amway trademarks and copyright material belonging to the Complainant (even bearing the words "c 2021 Amway Online"). 6. Parties' Contentions A. Complainant The Complainant is a global direct selling company supplying more than 350 products, including cosmetics, skin-care products, hair-care products, dietary food supplements, nutritional foods, air and water treatment systems, detergents, and all-purpose cleaners. It also provides hotel and real estate services. Through a network of more than one million independent business owners, the Complainant distributes AMWAY brand and other brands of products in 100 countries and territories worldwide, with global sales totaling over USD 8.4 billion for the 2019 year ending on December 31, 2019. As indicated above, the Complainant has multiple trademark registrations for the mark AMWAY as such as well as stylized versions, both in the US and in other jurisdictions. It has traded under the AMWAY mark for many years, the first registration of the mark occurring in 1961. The mark is extensively used and promoted on the Internet including on social media, where the Complainant says it has many followers. The Complainant says that the disputed domain name is identical or confusingly similar on its face to the AMWAY trademark. The Complainant also contends that the fact of including a hyphen between the words "amway" and "online" does not make a sufficient difference between the disputed domain name and the Complainant's trademark, does not confer distinctiveness upon the disputed domain name and would not prevent a finding of confusing similarity under the first element as the consumer is likely to think that the disputed domain name constitutes a variation of the AMWAY trademark owned by the Complainant. The Complainant also points out that the addition of the word "online" does not distinguish the disputed domain name from the Complainant's trademarks. The Complainant contends that the listed Respondent and the actual Respondent have no rights or interests in the disputed domain name. The latter must, according to the Complainant, be fully aware of the reputation attaching to the AMWAY brand, due to its widespread use and promotion. The Complainant also says that although the Respondent seems to distribute AMWAY branded goods, its offerings may not be characterized as bona fide as they fails to satisfy criteria 1, 2, 3 and 4 set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Respondent was never authorized to use the AMWAY trademark in the disputed domain name, and even if the goods offered on the connected website were genuine, the Complainant does not allow use of the AMWAY, NUTRILITE, GLISTER, SATINIQUE, HYMM, ARTISTRY, OPPORTUNE or other Complainant owned trademarks on web pages without the Complainant's prior consent. Even authorized independent business owners are not allowed to use the Complainant's trademarks in this manner. Status as a distributor does not in any case, according to the Complainant, give the former the right or legitimate interest to register a domain name containing its trademark. page 4 The Respondent says on the website to which the disputed domain name resolves, that it exists for demonstration purposes only. However, although the Respondent may claim that it is simply making a nominative fair use of the trademark in its disputed domain name, the Complainant contends that this defense must fail in the circumstances of this particular case. The website "www.amway-online.shop" does not contain any indication that the actual Respondent is in no way affiliated or approved of by the Complainant. Even when users reach the "Shopping Cart" and "Checkout" pages of the relevant site, no such notice is given. Moreover, by selling and offering for sale products with the trademark AMWAY, the actual Respondent thus contradicts his own statement that the website is for demonstration purposes only. The website "www.amway-online.shop" also copies certain of the Complainant's copyrighted graphics and the domain itself misrepresents to visitors that it is, in fact, affiliated with the Complainant and its line of products sold under the AMWAY trademark. Therefore, the Respondent cannot claim that its conduct amounts to or has amounted to bona fide commercial or fair use sufficient to legitimize any right or interest in the disputed domain name, or so the Complainant contends. The Complainant also maintains that the real Respondent's use of a WhoIs privacy service indicates that the he did not want to reveal the name by which he is commonly known and did not want to be known by any name, which is related to the disputed domain name. This has been held indicative of no rights or legitimate interests accruing to a Respondent under paragraph 4(c)(ii). Given the fame attaching to the AMWAY mark, the Complainant submits that the use of the disputed domain name, which is confusingly similar to that mark is evidence of bad faith. The only purpose for adopting the disputed domain name would be to illegitimately profit from its association with the Complainant. The Respondent's use of the disputed domain name to purport to sell the Complainant's products shows that at the time of the registration of the disputed domain name the Respondent clearly knew and targeted the Complainant's prior registered and famous trademark AMWAY, which confirms bad faith. The Respondent is also portraying itself as a subsidiary or affiliate of the Complainant, which it is not. The Complainant contends that the website to which the disputed domain name resolves is unambiguously designed to look like an official website of the Complainant. The Respondent uses original marketing materials and images of the Complainant's products on this website without the Complainant's authorization which only adds further support to a finding that the Respondent is seeking commercial gain in bad faith. The fact that the disputed domain name is connected to a website that is clearly intended to look like the official websites of the Complainant in Ukraine strongly indicates opportunistic bad faith B. Respondent The Respondent did not reply to the Complainant's contentions. 7. Discussion and Findings Language of the Proceedings The Panel is to consider all relevant circumstances to determine the language of the proceedings in accordance with paragraph 11(a) of the Rules. The language of the registration agreement in this case is Russian. However, it appears that the Respondent is familiar with English. It appears from the substance of the composition of the disputed domain name that the Respondent, who registered that domain name, understands English. The website to which the disputed domain name resolves contains translations into Russian of English language descriptions of AMWAY products. The website purports to be the official AMWAY website in Ukraine. The Respondent has not reacted to the filing of the Complaint or in any manner, and has not made a case for conducting proceedings in a different language, in particular in Russian. In the circumstances it appears that the Respondent will suffer no injustice from the proceedings, in particular the issuing of this decision, being in English. page 5 B. Identical or Confusingly Similar The disputed domain name is not identical to the AMWAY trademark of the Complainant. However, it contains that trademark in clearly visible and recognizable form, all the more so because it is separated from the term "online" by a dash. The addition of the term "online" does not detract from a finding of confusing similarity, as per section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), "where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element". Therefore, the Panel holds that the disputed domain name is confusingly similar to the AMWAY trademark of the Complainant. C. Rights or Legitimate Interests The Respondent has made no comments on any of the contentions of the Complainant and has used a privacy service to disguise his identity in the first instance. The Respondent has not been authorized to use the AMWAY marks in a commercial sense, or to establish a website that looks like an official website of the Complainant. The Respondent may be entitled to on-sell genuine AMWAY goods but is not entitled to replicate AMWAY marks and copyright materials using the disputed domain name and in its website without the approval or consent of the Complainant. The Respondent has sought to masquerade as the official representative (see above regarding the copyright notice), or an official website of the Complainant, where that is in no way the case. Nothing that the Respondent has done, therefore, is of a nature to vest rights or legitimate interests in it. The Respondent is not known by the term AMWAY nor does it use that term in a legitimate business. Given the distinctiveness and reputation attaching to the mark AMWAY, it is difficult to imagine how the Respondent could in any case lay a legitimate claim to it. Therefore, the Panel holds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. D. Registered and Used in Bad Faith The Respondent is not affiliated in any way with the Complainant and has no authorization to register the disputed domain name, incorporating its registered trademark, or to establish a website linked to that disputed domain name that contains copyright material, and displays the trademarks, of the Complainant. It is inconceivable given the composition of the disputed domain name, and the reputation of the AMWAY trademarks at the time of its registration, that the Respondent was in honest ignorance of the Complainant's rights. Establishing a website that pretends to be an official website of the Complainant, with no authority whatever to do so, is not in good faith. The Respondent does not simply sell official AMWAY goods on its website while making it clear that its online operation is not affiliated with, authorized by, or the representative website of the Complainant in Ukraine. The Respondent is attempting to generate the impression of official endorsement or authorization of the Complainant where that does not in fact exist. Therefore, the Panel holds that the disputed domain name is registered and used in bad faith. 8. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant. William A. Van Caenegem William A. Van Caenegem Sole Panelist Date: July 22, 2022
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