WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Case No. DUA2021-0030

1. The Parties

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

The Respondent is Kuprienko Olga Anatolevna, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <amway-glavnaya.com.ua> (“Disputed Domain Name”) is registered with Freehost.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 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 21, 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 January 6, 2022 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 January 6, 2022.

On January 6, 2022, the Center sent an email communication regarding the language of the proceeding in both English and Ukrainian. On the same day, 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”).

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 January 14, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2022.

The Center appointed Igor Alfiorov as the sole panelist in this matter on February 23, 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.

From March 2022 to this date, the WIPO Center was not in a position to accept .UA filings. On July 1, 2023 upon instructions of the .UA Registry, WIPO domain name dispute resolution service for .UA is available again. Accordingly, the decision in the present case is being issued to the Parties.

4. Further Procedural Considerations

Under paragraph 10 (b) of the .UA 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, 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.

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 address mentioned incorrectly; therefore the delivery was not be executed. However, the Panel notes that the Complaint together with the amendment to the Complaint were delivered to the Respondent’s email address.

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 is one of the world’s largest direct selling companies, producing a line of more than 350 high-quality products, including cosmetics, skin-care products, hair-care products, dietary food supplements, nutritional foods, air and water treatment systems, detergents, all-purpose cleaners and many others. 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.

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

The Complainant extensively uses and promotes its AMWAY trademark (the “AMWAY Trademark”) through advertising in various media, on the Complainant’s country-specific websites, and on social media sites such as Facebook, Twitter and Instagram. Thus, the Complainant and its affiliates, commonly referred to collectively as Amway, has almost 430 thousand followers on Facebook, nearly 373 thousand followers on Instagram and nearly 101.1 thousand followers on Twitter.

The Amway products have also been recognized worldwide in top publications. As a result of the Complainant’s efforts, product sales, and press coverage, the AMWAY Trademark has become well-known and respected by consumers in many countries around the world.

The Complainant owns over 750 active AMWAY Trademark registrations in over 150 countries, including Ukraine, among which are:

- AMWAY (word mark) under the Ukrainian Trademark Registration No. 4423, registered on April 15, 1994, in respect of goods in classes 3, 5, 16, 21, 25 and services in class 35;

- AMWAY (combined mark) under the Ukrainian Trademark Registration No. 42641, registered on August 16, 2004, in respect of goods in classes 3, 5, 10, 11, 16, 21, 29, 30, 32 and services in class 35;

- AMWAY (work mark) Ukrainian Trademark Registration No. 172590, registered on June 25, 2013, in respect of services in class 35;

- AMWAY (word mark) under the European Union Trademark Registration No. 000193888, registered on February 5, 1999 in respect of goods in classes 3, 5, 16, 21, 25 and services in class 35;

- AMWAY (combined mark) under the United States Trademark Registration No. 72090731, registered on June 13, 1961 in respect of goods in class 3.

The Complainant has a great online presence, it operates over 650 generic Top-Level domain names, including <amway.com> (registered on October 9, 1995), <amwayopportunity.com> (registered on December 4, 1997), <amwaylive.com> (registered on December 22, 1999), <amwayproduct.com> (registered on April 13, 2005), <amwayhome.com>> (registered on May 12, 2010) and many others.

The Disputed Domain Name was registered on August 21, 2019. At the date of this Decision, the website under the Disputed Domain Name is an inactive. However, according to the evidence presented by the Complainant (Annex 8 to the Complaint) at the time of the filing of the Complaint, the Disputed Domain Name was resolving to a commercial website where the products under the AMWAY Trademark were offered for sale.

6. Parties’ Contentions

A. Complainant

The Complainant asserts that its AMWAY Trademark is a world-known and recognisable brand globally that has been used around the world from 1959. The Complainant enjoys trademark protection in the United States, European Union and other countries in the world, including in Ukraine.

The Complainant asserts that the Disputed Domain Name is confusingly similar to its distinctive Trademark. The Disputed Domain Name incorporates the Complainant’s Trademark in its entirety. Adding the dictionary word “glavnaya” and hyphen, does not differentiate at all the Disputed Domain Name from the Complainant’s Trademark. The country-code Top-Level domain (“ccTLD”) “.com.ua” ccTLD in Ukraine does not detract from the core element of the Disputed Domain Name, namely, the AMWAY Trademark.

The Complainant also claims that even if the Internet users discover they were not at the Complainant’s website, they still may be led to believe that the Complainant endorsed, sponsored or affiliated itself with the goods and services offered at the website under the Disputed Domain Name because the website under the Disputed Domain Name also displayed AMWAY trademarks, designation and graphics of the Complainant’s products and accessories therefor.

The Complainant asserts that the Respondent has no rights or legitimate interests in the Disputed Domain Name and its actions are not a bona fide offering of goods or services and fails to satisfy criteria of the “Oki Data test”. The Respondent must be fully aware that the Complainant’s Trademark is well-known global brand. The Respondent is not related in any way to the Complainant’s business and not authorised by the Complainant to use the Trademark, including in the Disputed Domain Name, or to sell the Complainant’s products. The website under the Disputed Domain Name does not contain any indication that the Respondent is in any way affiliated or approved of by the Complainant. The website does not mention the Actual Respondent’s relationship with the Complainant. The Respondent is not commonly known by the Disputed Domain Name and specifically uses the WhoIs privacy service to not reveal its name by which it is commonly known. The Disputed Domain name is used to corner the market in domain names that reflect Trademark in the ccTLD “.com.ua”. Therefore, The Respondent is not making a legitimate noncommercial or fair use of the website under the Disputed Domain Name without intent for commercial gain. Instead, the Respondent is using Disputed Domain Name to confuse, defraud, and misleadingly divert consumers of the Complainant for its own benefit.

The Complainant further asserts that the Disputed Domain Name was registered and/or being used in bad faith. The fact that the Disputed Domain Name is confusingly similar to the worldwide-known AMWAY trademark already serves as an evidence of bad faith. Particularly, the website under the Disputed Domain name includes a list of Trademarks registered by the Complainant which serves to confirm that the Respondent was well aware of the Complainant`s rights on the Trademark. The Respondent’s only purpose to adopt the Disputed Domain Name would be to illegitimately profit from the association of the domain name with the Complainant. As mentioned in the Annex 8 to the Complaint, the Respondent has clearly portrayed itself as a subsidiary or affiliate of the Complainant indicating on the website under the Disputed Domain Name that it is “Official Internet Shop Amway Ukraine”, when it is not an official or authorised store of the Complainant’s products under the AMWAY Trademark. The Respondent intentionally registered and uses the Disputed Domain Name, without consent from the Complainant, to confuse and mislead visitors to its website. The website under the Disputed Domain Nameis 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 authorization, which only adds to the finding that it is seeking commercial gain in bad faith. The purpose to make the website under the Disputed Domain Name look like an official website 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

7.1. Language of Proceedings

In accordance with paragraph 11 of the .UA Rules, 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 Registrar confirmed that the language of the Registration Agreement for the Disputed Domain Name is Ukrainian.

The Complainant requested that English to be the language of this proceedings and provided the following arguments:

- The Respondent is familiar with the English language given that it translates all product descriptions and product information from English (main language of the official Complainant’s websites) to Russian and Ukrainian.

- The word “amway” in the Disputed Domain Name is a word that appears only in the English language. The Respondent’s familiarity with the English language is evident in its ability to intentionally create and use the Disputed Domain Name, which includes the word “Amway”.

- It would not be fair or equitable to require the Complainant to go to the unnecessary time and expense of translating its pleadings into another language;

- At the same time, choosing the English language will encourage fair and expeditious resolution of this dispute. Moreover, eliminating translation of the Complaint to Ukrainian in the situation where the Respondent understands English will conserve resources of the Parties.

The Complainant is obviously not able to understand and communicate in Ukrainian. Forcing the Complainant to translate the Complaint and annexes thereto, would result in unfair additional expenses for the Complainant and would delay this proceeding. The Disputed Domain Name and ccTLD comprise Latin script. The Panel has taken into account the fact the Respondent, having such a possibility to use the Cyrillic script, chose the Latin script for the Disputed Domain Name. The term “Amway” has no meaning in the Ukrainian language.

Moreover, the Respondent, having received the Center’s communication regarding the language of the proceeding, also in both English and Ukrainian, did not object regarding the language of the proceeding.

Having considered all circumstances of this case, the Panel concludes under paragraph 11(a) of the .UA Rules that English shall be the language of the proceeding.

7.2. Substantive elements

Paragraph 4(a) of the .UA Policy binds the Complainant to prove each of the following three elements to succeed:

- (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

- (ii) the respondent has no rights or legitimate interests in the disputed domain name; and

- (iii) the disputed domain name has been registered or is being used in bad faith.

Taking into consideration many similarities between the .UA Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and, where appropriate, will decide consistent with the consensus views captured therein.

A. Identical or Confusingly Similar

The Complainant demonstrated and proved rights in the AMWAY Trademark given a large number of registrations in various jurisdictions, including Ukraine and long use of its Trademark worldwide.

The Disputed Domain Name incorporates the AMWAY Trademark in its entirety, combined with the hyphen, the dictionary word in Russian “glavnaya” (meaning “main” in English), and ccTLD “.com.ua”.

According to the established practice confirmed by numerous decisions under the .UA Policy and taking into account section 1.7 of the WIPO Overview 3.0, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark.

Following 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. Also, addition of a hyphen is typically irrelevant to the consideration of confusing similarity between a trademark and a domain name. In this case, the addition of the dictionary word in Russian “glavnaya” and hyphen to the AMWAY Trademark does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s Trademark.

Moreover, in accordance with the established practice confirmed by numerous decisions under the .UA Policy and taking into account section 1.11 of the WIPO Overview 3.0, the applicable ccTLD in a domain name is viewed as a standard registration requirement and as such is generally disregarded under the first element confusing similarity test. Therefore, the addition of the ccTLD “.com.ua” to the Disputed Domain Name in this case does not prevent a finding of confusing similarity between the Complainant’s Trademark and the Disputed Domain Name.

In view of the above, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s Trademark and therefore, the Complainant has satisfied the first element of the .UA Policy.

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the .UA Policy the Complainant has to establish that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

Following the established practice under the .UA Policy and bearing in mind section 2.1 of the WIPO Overview 3.0, while the overall burden of proof is on the Complainant, the Complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests. If such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to come forward with such relevant evidence, the Complainant is generally deemed to have satisfied the second element.

Having studied the facts and arguments provided above, the Panel finds that the Complainant has made a prima facie case. The Disputed Domain Name was registered more than 50 years after the AMWAY Trademark had been registered and used worldwide. There is no evidence confirming that the Respondent is commonly known by the Disputed Domain Name or owns any AMWAY Trademarks. The Complainant asserts that no authorisation has been ever granted to the Respondent to use the AMWAY Trademark.

Given the long use and reputation of the Complainant’s Trademark, it is impossible to assume that the Respondent did not know the Complainant’s Trademark at the time of registration of the Disputed Domain Name. On the contrary, the use of the Complainant’s Trademark in the Disputed Domain Name for the commercial website, where the Complainant’s products were offered for sale and where the AMWAY Trademark, graphics and marketing materials were displayed confirms altogether the Respondent’s good knowledge of the Complainant’s business and Trademark. In view of the above, the Panel finds that the Respondent is not involved in a bona fide offering of goods or services or a legitimate noncommercial or fair use.

In view of the facts and arguments provided in this case, the website under the Disputed Domain Name was intentionally designed to bring an impression of the official or related to the Complainant’s website, without being the same. In particular, the Respondent indicated that the website is “Official Internet Shop Amway Ukraine” and did not have any disclaimer disclosing the Respondent’s relationships with the Complainant. Thus, the Respondent does not match the conditions of the “Oki Data test” as outlined in section 2.8.1 of the WIPO Overview 3.0 and which would confirm a bona fide offering of goods and services and legitimate interests in the Disputed Domain Name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the .UA Policy.

C. Registered or Used in Bad Faith

The Panel comes to the conclusion that the Disputed Domain Name was registered and is being used in bad faith in view of the following.

The Panel agrees with the Complainant that the AMWAY Trademark is a famous and reputed trademark. The Trademark has been registered and used in more than 150 countries for cosmetics, skin-care products, nutritional foods, air and water treatment systems, detergents, all-purpose cleaners and many others for a long time. The Disputed Domain Name was registered long after the Complainant registered its AMWAY Trademark.

In the Panel’s view, the Respondent intentionally uses the Complainant’s Trademark. It is indisputable that the Respondent knew about the Complainant’s Trademark at the time of the registration of the Disputed Domain Name given that the Disputed Domain Name reproduces the Complainant’s Trademark in its entirety and the fact that the Respondent uses the Disputed Domain Name for a commercial website, which contained the Complainant’s Trademark, various Complainant’s products and the Complainant’s copyrighted graphics. Moreover, the Panel noted that the website under the Disputed Domain Name contained no information about the Respondent’s relationship with the Complainant.

Furthermore, the Disputed Domain Name, reproducing the Complainant’s Trademark in its entirety, is evidently deceptive for consumers. The Respondent obviously chose to register the Disputed Domain Name, which is confusingly similar to the Complainant’s AMWAY Trademark, for the purpose of attracting Internet users to its competing website by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and of the products sold on it. Currently, the Disputed Domain Name does not resolve to a website. However, the evidence on file shows that the Respondent used to use the Disputed Domain Name incorporating the Complainant’s mark to direct to the website, which offered for sale products under the Complainant’s Trademark.

Further, it is well-established, that the registration of a well-known mark as a domain name may be clear indication of bad faith in itself. According to section 3.1.4 of the WIPO Overview 3.0 panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.

Moreover, in view of the provided evidence, it is obvious for the Panel that the Respondent, having registered and used the Disputed Domain Name, which is confusingly similar to the Complainant’s well-known Trademark, and also having used the Disputed Domain Name for a website with the Complainant’s products thereon, intended to disrupt the Complainant’s business.

In view of the absence of any evidence to the contrary and that the Respondent did not file any formal response, the Panel concludes the Respondent registered and is using the Disputed Domain Name in bad faith.

In view of the foregoing, the Panel finds that paragraph 4(a)(iii) of the .UA Policy has been satisfied by the Complainant and accordingly, the Disputed Domain Name has been registered and is being used in bad faith.

8. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the Panel orders that the Disputed Domain Name, <amway-glavnaya.com.ua>, be transferred to the Complainant.

Igor Alfiorov
Sole Panelist
Date: July 12, 2023