Herbalife International of America, Inc., a wholly
owned subsidiary of Herbalife International, Inc. v. AHF domains
Claim Number: FA0707001045812
Complainant is Herbalife International of America, Inc., a wholly
owned subsidiary of Herbalife International, Inc. (“Complainant”), represented by Jade
L. Zike, 1901 Ave. of the Stars, Ste. 1600, Los Angeles, CA 90067. Respondent is AHF domains (“Respondent”), 344 S. 1680 W.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <teamshapeworks.com>, registered with Godaddy.com, Inc.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 25, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 30, 2007.
On July 26, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <teamshapeworks.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 August 8, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 28, 2007 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@teamshapeworks.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 31, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <teamshapeworks.com> domain name is confusingly similar to Complainant’s SHAPEWORKS mark.
2. Respondent does not have any rights or legitimate interests in the <teamshapeworks.com> domain name.
3. Respondent registered and used the <teamshapeworks.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Herbalife
International of America, Inc., a wholly owned subsidiary of Herbalife
International, Inc., holds a trademark registration with the United States
Patent and Trademark Office (“USPTO”) for the SHAPEWORKS mark (Reg. No.
3,117,937 issued July 18, 2006).
Complainant filed the application for SHAPEWORKS on November 20,
2003. Complainant has used the
SHAPEWORKS mark in connection with the development, distribution, manufacture
and sale of nutritional, weight loss products to the public since March of 2004.
Respondent registered the <teamshapeworks.com> domain name on September 4, 2004. Respondent is using the disputed domain name to redirect Internet traffic to Respondent’s website, which offers Complainant’s goods and services for sale without the authorization to do so from Complainant.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 asserts rights in the SHAPEWORKS mark under
Policy ¶ 4(a)(i) through registration of the mark with
the USPTO. While Complainant’s
SHAPEWORKS mark was not registered until after Respondent registered the <teamshapeworks.com> domain name, the
Panel finds that Complainant’s rights in the SHAPEWORKS mark date back to the
date of filing for the registered trademark.
Therefore, the Panel finds that Complainant has established rights in
the SHAPEWORKS mark through registration of the mark with the USPTO. See Planetary Soc’y v. Rosillo,
D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of
Complainant’s trademark rights date back to the application’s filing date); see
also Hershey Co., Hershey Chocolate & Confectionery Corp. & Hershey Can.
Inc. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (“Complainant
asserts rights in the KISSES trademark through registration of the mark with
the…USPTO…. As such rights date back to the filing date
of the trademark application and predate Respondent’s registration…Complainant
has established rights in the KISSES mark for purposes of satisfying Policy ¶
4(a)(i).”); see also UnitedHealth Group Inc. v.
Hassan, FA 947081 (Nat. Arb. Forum
May 17, 2007) (holding that where the complainant had several trademark
registrations with the USPTO, “[t]he Panel had no difficulty in finding that
Complainant has established rights in the marks for purposes of Policy ¶
4(a)(i).”).
Respondent’s <teamshapeworks.com> domain name is confusingly similar to Complainant’s SHAPEWORKS mark as it uses the mark in its entirety and simply adds the word “team” and the generic top-level domain (“gTLD”) “.com” to the mark. The Panel finds that the addition of the generic word “team” does not differentiate the mark sufficiently to distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). The Panel further finds that the addition of the gTLD “.com” is irrelevant to the determination of whether the <teamshapeworks.com> domain name is confusingly similar. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have rights or legitimate interests in the mark under Policy ¶ 4(a)(ii). Complainant’s assertion establishes a prima facie case, which shifts the burden to Respondent to show that Respondent does have rights or legitimate interests in the mark under Policy ¶ 4(a)(ii). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”); see also Washington CeaseFire v. Private Registration, FA 985159 (Nat. Arb. Forum June 27, 2007) (“Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel may assume that Respondent has no rights or legitimate interests here because the Respondent failed to respond to the Complaint. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will consider all evidence before determining whether Respondent has rights or legitimate interests in the <teamshapeworks.com> domain name under Policy ¶ 4(c).
Complainant contends that Respondent is using the disputed domain name to redirect Internet users to Respondent’s website, which offers for sale Complainant’s goods and services without the permission of Complainant. The Panel finds that such use by Respondent is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
Finally, Respondent offers no evidence and no evidence is present in the record to indicate that Respondent is commonly known by the <teamshapeworks.com> domain name. Respondent’s WHOIS information identifies Respondent as “AHF Domains.” Therefore, the Panel finds that Respondent has failed to establish rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent has registered and is using the <teamshapeworks.com> domain name, which is confusingly similar to Complainant’s SHAPEWORKS mark, to redirect Internet users to Respondent’s website, which offers for sale Complainant’s goods and services without Complainant’s consent. The Panel finds that such use by Respondent constitutes disruption of Complainant’s business, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Further, Respondent is using the <teamshapeworks.com> domain name to redirect Internet users to Respondent’s website for the assumed profit of Respondent. The Panel finds that Internet users seeking Complainant’s products may become confused as to Complainant’s affiliation with the disputed domain name. Presumably, Respondent is profiting from this confusion. Therefore, the Panel finds that Respondent’s use of the <teamshapeworks.com> domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <teamshapeworks.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: September 12, 2007
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