Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. v. Danilo Gallo
Claim Number: FA0711001106491
Complainant is Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. (“Complainant”), represented by Susan
Hwang, 333 South Hope Street, 48th Floor, Los Angeles, CA 90071. Respondent is Danilo Gallo (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ecuadorherbalife.com>, registered with Enom, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 5, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 15, 2007.
On November 6, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <ecuadorherbalife.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 November 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 10, 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@ecuadorherbalife.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 13, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a prominent
Complainant has used the
HERBALIFE mark for many years to promote these products, and currently holds
registered trademarks with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 1,254,211, issued October 18, 1983) as well as the
Ecuadorian Patent and Trademark Office (Reg. No. 385-96, issued July 18, 2006).
Respondent, Danilo Gallo, registered the <ecuadorherbalife.com> domain name on March 26, 2007.
Respondent is not commonly known by the <ecuadorherbalife.com> domain name, and has never been licensed or authorized to use the HERBALIFE trademark or to promote Complainant’s products.
Respondent’s <ecuadorherbalife.com> domain name is confusingly similar to Complainant’s HERBALIFE mark.
Respondent does not have any rights or legitimate interests in the domain name <ecuadorherbalife.com>.
Respondent registered and uses the <ecuadorherbalife.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark 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.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has submitted evidence of its trademark
registrations for the HERBALIFE mark in the
As to the point of confusing similarity, Respondent’s <ecuadorherbalife.com> domain name
contains Complainant’s HERBALIFE mark in its entirety and merely adds the
geographic identifier “
It is also well established that the addition of a gTLD is irrelevant under the Policy because all domain names require a top-level domain. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Therefore, we find that Respondent’s <ecuadorherbalife.com> domain name is confusingly similar to Complainant’s HERBALIFE trademark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have rights or legitimate interests in the <ecuadorherbalife.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to show that it nonetheless has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See, for example, G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where a complainant asserts that a respondent does not have rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent does not have rights or legitimate interests in a contest domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
Complainant has successfully established a prima facie case in support of its allegations. The burden is therefore shifted to Respondent. Although Respondent has not responded to the Complaint, so that we may, without more, conclude that Complainant prevails on this issue, we will examine the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
We first note in this connection that Complainant alleges,
and Respondent does not deny, that Respondent is not commonly known by the <ecuadorherbalife.com> domain name,
and has never been licensed or authorized to use the HERBALIFE mark or promote
Complainant’s products. Moreover, the pertinent
WHOIS information identifies Respondent as “Danilo Gallo,” and we find no other
evidence in the record indicating that Respondent is commonly known by the
disputed domain name. Therefore, we conclude
that Respondent is not commonly known by the <ecuadorherbalife.com>
domain name, and thus lacks rights and legitimate interests pursuant to Policy
¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat.
Arb. Forum July 7, 2006) (concluding that a
respondent was not commonly known by disputed domain names where the WHOIS
information, as well as other information in the record, gave no indication
that that respondent was commonly known by the disputed domain names, and a
complainant had not authorized that respondent to register a domain name
containing its registered mark); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding
that a respondent was not commonly known by the <shoredurometer.com> and
<shoredurometers.com> domain names because the WHOIS information listed
Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the registrant of
the disputed domainss and there was no other evidence in the record to suggest
that that respondent was commonly known by the domain names there in dispute).
We also observe that Complainant alleges, and Respondent does not contest, that Respondent is using the <ecuadorherbalife.com> domain name to sell Complainant’s products without Complainant’s authorization. Respondent is thus evidently trying to profit by capitalizing on the goodwill associated with Complainant’s HERBALIFE mark. Therefore, we conclude that Respondent’s use of the <ecuadorherbalife.com> domain name constitutes neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell a complainant’s goods without that complainant’s authority, is not a bona fide use); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that the unauthorized use of a complainant’s mark to sell its perfume is not a bona fide use).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
We have already concluded that Respondent uses the <ecuadorherbalife.com> domain name to offer for sale Complainant’s products without Complainant’s authorization. Therefore, Respondent’s registration and use of the disputed domain name has been done in bad faith pursuant to Policy ¶ 4(b)(iii). See 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).”); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring to a complainant the <fossilwatch.com> domain name from a respondent not authorized to sell that complainant’s goods).
Moreover, Respondent’s use of the <ecuadorherbalife.com> domain name is likely to cause confusion among customers searching for Complainant’s products, because such Internet users may mistakenly believe that Complainant is affiliated with or endorses Respondent’s sale of its products on the website that resolves from the disputed domain name. Respondent presumably benefits from the unauthorized use of Complainant’s HERBALIFE mark by improperly gaining revenue from this venture. Therefore, Respondent’s registration and use of the <ecuadorherbalife.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where a respondent used a disputed domain name to sell a complainant’s products without permission and misled Internet users by implying that that respondent was affiliated with that complainant); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <ecuadorherbalife.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 18, 2007
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