WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alticor Inc. v. Whois Privacy Protection Service, Internet Invest, Ltd. dba Imena.ua / Zlata Odelis, Private person

Case No. D2021-4139

1. The Parties

The Complainant is Alticor Inc., United States of America (“United States”), represented by Baker & McKenzie, Ukraine.

The Respondent is Whois Privacy Protection Service, Internet Invest, Ltd. dba Imena.ua, Ukraine / Zlata Odelis, Private person, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <am-waylike.com> is registered with Internet Invest, Ltd. dba Imena.ua (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 12, 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 in English and Ukrainian to the Parties indicating the registration agreement for the disputed domain name is in Ukrainian and inviting the Parties to submit their preferences as to the language of the proceeding. On December 14, 2021, the Complainant confirmed its request that English should be the language of the proceeding. The Respondent submitted no comments on the language of the proceeding.

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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in both English and Ukrainian, and the proceedings commenced on December 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2022.

The Center appointed Taras Kyslyy as the sole panelist in this matter on February 11, 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. Factual Background

The Complainant is a direct selling company, and has marketed its AMWAY brand products for over 60 years. The Complainant was founded in 1959. The Complainant’s product line is made up of more than 350 products, including cosmetics, skin-care products, hair-care products, dietary food supplements, nutritional foods, air and water treatment systems, detergents, all-purpose cleaners and others. The AMWAY mark has also been used on a variety of services, including hotel and real estate services.

Through a network of more than one million independent business owners, the Complainant distributes its products in 100 countries and territories worldwide, with global sales totaling over USD 8.4 billion for the 2019 performance year.

The AMWAY brand is extensively used and promoted through advertising in various media, on the Complainant’s country-specific websites, and on social media sites such as Facebook, Twitter, and Instagram with almost 430 thousand followers on Facebook, nearly 373 thousand followers on Instagram and nearly 101 thousand followers on Twitter.

The Complainant owns over 650 generic Top-Level Domain names, including <amway.com> (registered on October 09, 1995), <amwayopportunity.com> (registered on December 04, 1997), <amwaylive.com> (registered on December 22, 1999), <amwayproduct.com> (registered on April 13, 2005), <amwayhome.com> (registered on May 12, 2010) and many other AMWAY domain name variations.

The Complainant is the owner of numerous trademark registrations in various countries including, for instance Ukrainian trademark registration No. 4423, registered on April 15, 1994.

The disputed domain name was registered on September 30, 2019 and resolved to a website in Russian and English offering for sale the Complainant’s products. At the time of the Decision, the disputed domain name resolves to inactive webpage.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety, containing identical letters appearing in the same order as in the Complainant’s trademark. Save for the disputed domain name generic Top-Level Domain (“gTLD”), the word “like”, and hyphen, there is nothing at all in the disputed domain name to differentiate it from the Complainant’s trademark. The gTLD “.com” may be disregarded when assessing the confusing similarity. The fact of including a hyphen between the words “am” and “waylike” does not make a sufficient difference between the disputed domain name and the Complainant’s trademark. The presence of the additional term “like” being a non-distinctive element of the disputed domain name, would not prevent a finding of confusing similarity.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent fails to pass the Oki Data test. The Respondent is not affiliated with nor authorized by the Complainant to use the Complainant’s trademark, including in the disputed domain name, or to sell the Complainant’s products. The Respondent has not been commonly known by the disputed domain name, which could demonstrate its rights or legitimate interests. The Respondent is using the disputed domain name to confuse, defraud, and misleadingly divert consumers of the Complainant for its own benefit.

The disputed domain name was registered and is being used in bad faith. The use of the disputed domain name confusingly similar to the Complainant’s famous trademark is evidence of bad faith. The only purpose the Respondent could have for adopting the disputed domain name would be to illegitimately profit from the association with the Complainant. The 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, which confirms the bad faith. The Respondent is clearly portraying itself as a subsidiary or affiliate of the Complainant, when it is not an official shop of the Complainant and is not authorized to sell online the Complainant’s products. The Respondent intentionally registered and used the disputed domain name domain, without consent from the Complainant, to confuse and mislead visitors to its website. At the website at the disputed domain name the Respondent placed a list of the Complainant’s registered trademarks, which confirms the Respondent was aware of the Complainant’s rights on its trademarks. The website at the disputed domain name website looks like an official website of the Complainant, which adds to the finding that it is seeking commercial gain in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of Proceedings

The language of the Registration Agreement for the disputed domain name is Ukrainian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.

However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).

In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties.

According to section 4.5.1 of the WIPO Overview 3.0 previous panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.

The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Respondent must be familiar with the English language since (i) the Respondent translates English descriptions of the Complainant’s goods and (ii) the disputed domain name is comprised of English words. The Complainant also believes that the language of the proceedings shall be English, otherwise due to additional costs and undue delay the Complainant would be unfairly disadvantaged by being forced to translate the Complaint to Ukrainian.

The Panel further notes that the website at the disputed domain name was also available in English. No objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Ukrainian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Ukrainian and English that the Respondent is invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference, but did not do so.

The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Ukrainian.

Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.

B. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in its registered trademark.

The gTLD “.com” in the disputed domain name is viewed as a standard registration requirement and may be disregarded for the purposes of the confusing similarity test (see, e.g., Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).

According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that in the present case the disputed domain name incorporates the entirety of the Complainant’s trademark.

According to section 1.8 of the 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. The Panel finds that in the present case the addition of a hyphen and word “like” do not prevent a finding of confusing similarity.

Considering the above the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.

Furthermore, the Respondent provided no evidence that it holds rights or legitimate interests in the disputed domain name.

The Respondent is not commonly known by the disputed domain name, which could demonstrate its rights or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).

The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875).

According to section 2.8.1 of the WIPO Overview 3.0 resellers, distributors using a domain name containing complainant’s trademark to undertake sales related to the complainant’s goods may be making a bona fide offering of goods and thus have a legitimate interest in such domain name. Outlined in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the “Oki Data Test”), the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods at issue;

(ii) the respondent must use the site to sell only the trademarked goods;

(iii) the site must accurately and prominently disclose the registrant’s relationship with trademark holder; and

(iv) the respondent must not try to “corner the market” in domain names reflecting trademark.

The Panel finds that the Respondent failed to satisfy at least the third above requirement and did not in any way disclose its actual relationship with the Complainant, and thus failed to pass the Oki Data Test. The Respondent’s use of the disputed domain name misleads consumers into thinking that the website is operated by or affiliated with the Complainant. As such, the Respondent’s use of the disputed domain name cannot be considered bona fide.

The disputed domain name incorporates the AMWAY trademark of the Complainant in its entirety and it is its distinctive element. Since AMWAY is a well-known trademark, and the disputed domain name is associated with the website offering AMWAY products, the Panel finds that the Respondent must have been aware of the AMWAY trademark when it registered the disputed domain name, and that it chose to target the AMWAY trademark because of the likelihood that it will attract traffic to the Respondent’s website. In the Panel’s view, such conduct cannot be regarded as giving rise to rights or legitimate interests on the part of the Respondent to register and use the disputed domain name (see, e.g., LEGO Juris A/S v. Andrei Novakovich, WIPO Case No. D2016-1513).

The Respondent has no rights or legitimate interests in the disputed domain name resolving to an inactive website at the time of the Decision (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore, WIPO Case No. D2016-1302).

Noting the risk of implied affiliation between the disputed domain name and the well-known trademark of the Complainant, the Panel finds that there is no plausible fair use to which the disputed domain name could be put that would not have the effect of being somehow connected to the Complainant (see, e.g., Instagram, LLC v. Super Privacy Service LTD c/o Dynadot / Zayed, WIPO Case No. D2019-2897).

Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

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, which supports a finding of bad faith (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).

According to section 3.1.4 of the WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in the United States and internationally. Thus, the Panel finds that the disputed domain name incorporating the Complainant’s famous trademark was registered in bad faith.

According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”. In this case, the disputed domain name was resolving to a website featuring the Complainant’s trademark and falsely pretended to be the Complainant’s official local website to intentionally attract Internet users by creating likelihood of confusion with the Complainant’s trademark as to the source of the website and its products. The Panel finds the above confirms the disputed domain name was registered and used in bad faith.

The Respondent ignored its possibility to comment to the contrary or provide any explanation to prove its good faith while registering and using the disputed domain name.

Although at the time of this decision the disputed domain name resolves to inactive webpage, its previous bad faith use and lack of explanation of possible good faith use from the Respondent makes any good faith use of the disputed domain name implausible. Thus, the current passive holding of the disputed domain name does not prevent a finding of bad faith (see, e.g., Abbott Diabetes Care Inc. v. Privacy Protection, Hosting Ukraaine LLC / Виталий Броцман (Vitalii Brocman), WIPO Case No. DPW2017-0003).

Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy.

7. 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 <am-waylike.com> be transferred to the Complainant.

Taras Kyslyy
Sole Panelist
Date: February 19, 2022