The Complainant is Alticor Inc., of United States of America (“United States”), represented by Baker & McKenzie, Ukraine.
The Respondent is Шмакова Таисия Викторовна (Shmakova Taisiya Viktorovna), Ukraine.
The disputed domain name <my-amway.com.ua> (the “Disputed Domain Name”) is registered with Internet Invest, Ltd. dba Imena.ua. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2021. On November 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 10, 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 November 17, 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 November 18, 2021.
The Center sent an email communication in both English and Ukrainian regarding the language of the proceeding on November 17, 2021. On November 18, 2021, the Complainant confirmed its request to proceed in English. The Respondent did not submit any response regarding the language of the proceeding.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of .UA Domain Name Dispute Resolution Policy (the “.UA Policy”), the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”).
In accordance with the .UA Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in both English and Ukrainian, and the proceedings commenced on November 26, 2021. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was December 16, 2021. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on December 20, 2021.
The Center appointed Mariya Koval as the sole panelist in this matter on December 27, 2021. 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 .UA Rules, paragraph 7.
The Complainant, being founded in 1959, is one of the world’s largest direct selling companies, which product line is made up 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. 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 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:
- 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;
- 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;
- Ukrainian Trademark Registration No. 172590, registered on June 25, 2013, in respect of services in class 35;
- 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;
- 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 November 13, 2018 and resolves to a commercial website in Russian where the products under the AMWAY Trademark are offered for sale.
The Complainant contends that its AMWAY Trademark has been used around the world from 1959; it is world-renown and, as such, is instantly recognizable brand globally.
The Complainant asserts that the Disputed Domain Name is confusingly similar to its distinctive Trademark because of 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; adding the dictionary word "my" to the Disputed Domain Name fails to negate confusing similarity; the country-code Top-Level domain (“ccTLD”) ".com.ua" is an identifier for the second level country code domain name in Ukraine domain name zone and does not detract from the core element of the Disputed Domain Name, namely, the AMWAY Trademark.
The Complainant also contends that the website, to which the Disputed Domain Name resolves, displays the AMWAY Trademark and graphics of the Complainant’s products and accessories therefor.
The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name in view of the following:
- the Respondent must be fully aware that the Trademark is a well-known global brand, owing to its fame and global advertising, marketing and sales of Amway products all over the world by the Complainant exclusively under the Trademark;
- in spite of the Respondent does distribute the Amway products on the website under the Disputed Domain Name, this may not be characterized as bona fide;
- the Respondent is not affiliated with nor authorized by the Complainant to use the Trademark, including in the Disputed Domain Name, or to sell the Complainant’s product. 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 under the Disputed Domain Name copies certain of the Complainant’s copyrighted graphics and the Disputed Domain Name itself misrepresents to visitors that it is, in fact, affiliated with the Complainant and its line of products sold under the Trademark;
- the Respondent does corner the market in the Disputed Domain Name that reflect the AMWAY Trademark in the Ukrainian domain zone because the Disputed Domain Name fully incorporates the Trademark and substantially limits the alternative registrations in the Ukrainian domain zone for the Complainant`s official distributors in Ukraine;
- the Respondent has not been commonly known by the Disputed Domain Name;
- the Respondent is also not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain, and so its actions do not fall within .UA Policy.
The Complainant further alleges that the Respondent has registered and is using the Disputed Domain Name in bad faith. The only purpose the Respondent could have for adopting the Disputed Domain Name would be to illegitimately profit from its association with the Complainant. The Respondent is clearly impersonating itself as a subsidiary or affiliate of the Complainant, when it is not.
The Respondent intentionally registered and uses the Disputed Domain Name, without consent from the Complainant, to confuse and mislead visitors to its website. The Respondent was put on actual notice of the Complainant’s rights in its Trademarks through the Complainant’s extensive prior use of the AMWAY Trademark which long predate the Disputed Domain Name registration by the Respondent. Therefore, the Respondent knowingly and intentionally used the Trademark in violation of the Complainant’s rights in its Trademark.
Furthermore, the Respondent notes on the front page of the website under the Disputed Domain Name a list of trademarks registered by the Complainant. This confirms beyond any doubt that the Respondent is well aware of the Complainant’s rights in the Trademark.
The website under the Disputed Domain Name 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 authorization which only adds to the finding that it 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 official websites of the Complainant in Ukraine strongly indicates opportunistic bad faith.
The Respondent did not reply to the Complainant’s contentions.
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.
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 filed a request for the English language proceeding in view of the following:
- the Respondent advertises and sells Amway branded goods on its website in Russian. The Complainant believes that the Respondent translated all product descriptions and product information from English (main language of the official Complainant’s websites) to Russian. Therefore, the Respondent is familiar with the English language;
- the Disputed Domain Name is 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;
- taking into account the clearly intentional copying of the Complainant’s well-known AMWAY Trademark by the Respondent 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;
- choosing the English language in this proceeding will encourage fair and expeditious resolution of this dispute;
- eliminating translation of the Complaint to Russian or 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.
Paragraph 10(c) of the .UA Rules sets out that the Panel shall ensure that the administrative proceeding takes place with due expedition.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
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 Panel has also taken into account that the Disputed Domain Name resolves to a website, where the various Complainant’s products are offered for sale, which cannot be considered as legitimate noncommercial or fair use of the Disputed Domain Name.
Furthermore, 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.
In accordance with paragraph 4(a)(i) of the .UA Policy it should be established that the Disputed Domain Name is identical or confusingly similar to a mark in which the Complainant has rights.
The Panel accepts that the Complainant demonstrated that it has the rights in the well-known AMWAY Trademark in view of a large number of registrations in different jurisdictions, including Ukraine, and long use of its Trademark.
The Disputed Domain Name incorporates the AMWAY Trademark in its entirety, combined with the word “my”, hyphen and ccTLD “.com.ua”. In accordance with prior decisions under the .UA Policy, 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. See AB Electrolux v. Захаров Евгений, WIPO Case No. DUA2020-0006. The Panel considers it is appropriate to apply the same rules in this proceeding regarding ccTLD “.com.ua”. Therefore, the addition of the ccTLD “.com.ua” to the Disputed Domain Name in this case does not prevent a finding of identity or confusing similarity between the Complainant’s Trademark and the Disputed Domain Name.
According to the 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 term “my” and hyphen to the AMWAY Trademark does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s Trademark.
Previous UDRP panels have recognized that 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; see bridport & cie S.A v. Privatewhois.net, Private Whois bridportadvisory.com, WIPO Case No. D2011-2262.
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.
In accordance with 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.
According to prior decisions under the .UA Policy, while the overall burden of proof in .UA proceedings is on the Complainant, the Complainant is required 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. See, e.g., Google LLC v. Aлександр Дмитрович Бутенко, WIPO Case No. DUA2020-0009.
Noting the facts and arguments set out above, the Panel finds that the Complainant has made a prima facie case. The Respondent registered the Disputed Domain Name more than 50 years after the AMWAY Trademark had been registered. There is no evidence that the Respondent owns any AMWAY Trademarks, nor that he is commonly known by the Disputed Domain Name. The Complainant also contends that the Respondent has never received an authorization to use the Complainant’s Trademark in any way. The Respondent has failed to come forward with any evidence to rebut such prima facie case.
Also, taking into consideration the long use and reputation of the Complainant’s Trademark, it is impossible to assume that the Respondent was unaware of the Complainant's Trademark at the time of registration of the Disputed Domain Name. Moreover, the evidence of the Respondent’s good awareness of the Complainant’s business and Trademark is also the fact that he is using the Disputed Domain Name for a commercial website where the products under the AMWAY Trademark are offered for sale and where, in its turn, the AMWAY Trademark and graphics of the Complainant’s products and accessories are displayed. Under these circumstances, 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.
Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test” (see section 2.8.1 of the WIPO Overview 3.0), the following cumulative requirements will be applied in the specific conditions:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
As is seen from the circumstances of this case the website under the Disputed Domain Name was designed to create an impression of the official or related Complainant’s website, without being the same. Furthermore, the website under the Disputed Domain Name has no disclaimer disclosing the Respondent’s relationship with the Complainant. Thus, the Respondent does not match the conditions of the “Oki Data test”. Finally, the Respondent was not selling only the Complainant’s products. In view of all these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the .UA Policy.
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 well-known 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 fact that the Respondent knew about the Complainant’s Trademark at the time of the registration of the Disputed Domain Name is undisputable noting that the Disputed Domain Name completely reproduces the Complainant’s Trademark and that the Respondent is using the Disputed Domain Name for a commercial website, which contains the Complainant’s Trademark, various Complainant's products and the Complainant’s copyrighted graphics. It should also be noted that the website under the Disputed Domain Name contains no information about the Respondent’s relationship with the Complainant (or lack thereof). As a result, the Panel finds that the Respondent had the Complainant’s Trademark in mind and intentionally targeted the Complainant when he registered and used the Disputed Domain Name.
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 the 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.
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. The Panel considers it is obvious 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 the website with the Complainant’s products thereon, primarily intended to disrupt the Complainant’s business. In view of the absence of any evidence to the contrary and that the Respondents did not file any formal rebutment, 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.
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 <my-amway.com.ua> be transferred to the Complainant.
Mariya Koval
Sole Panelist
Date: January 10, 2022