Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. v. Ivan Valencia
Claim Number: FA0801001128354
Complainant is Herbalife International of America, Inc., a wholly
owned subsidiary of Herbalife International, Inc. (“Complainant”), represented by Susan
Hwang, California, USA.
Respondent is Ivan Valencia (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <herbalifeargentina.com>, <herbalifebrazil.com>, <herbalifechile.com>, <herbalifecolombia.com>, <herbalifeecuador.com>, <herbalifemexico.com>, <herbalifepanama.com>, and <herbalifevenezuela.com>, registered with Wild West Domains, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On January 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 11, 2008 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@herbalifeargentina.com, postmaster@herbalifebrazil.com, postmaster@herbalifechile.com, postmaster@herbalifecolombia.com, postmaster@herbalifeecuador.com, postmaster@herbalifemexico.com, postmaster@herbalifepanama.com, and postmaster@herbalifevenezuela.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <herbalifeargentina.com>, <herbalifebrazil.com>, <herbalifechile.com>, <herbalifecolombia.com>, <herbalifeecuador.com>, <herbalifemexico.com>, <herbalifepanama.com>, and <herbalifevenezuela.com> domain names are confusingly similar to Complainant’s HERBALIFE mark.
2. Respondent does not have any rights or legitimate interests in the <herbalifeargentina.com>, <herbalifebrazil.com>, <herbalifechile.com>, <herbalifecolombia.com>, <herbalifeecuador.com>, <herbalifemexico.com>, <herbalifepanama.com>, and <herbalifevenezuela.com> domain names.
3. Respondent registered and used the <herbalifeargentina.com>, <herbalifebrazil.com>, <herbalifechile.com>, <herbalifecolombia.com>, <herbalifeecuador.com>, <herbalifemexico.com>, <herbalifepanama.com>, and <herbalifevenezuela.com> domain names 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., is a dietary and nutritional suppliments producer and
retailer. Complainant has used its mark
in business since 1980. Complainant
holds a trademark registration with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 1,254,211 issued Oct. 18, 1983). Additionally, Complainant holds a variety of
regitrations with various governmental trademark authorites.
Respondent registered the eight (8) disputed domain names between August 2002, and January 2004. The disputed domain names resolve to a website containing third-party links, some of which are in direct competition with Complainant’s business.
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’s registration of the HERBALIFE mark with the
USPTO establishes rights to the mark under Policy ¶ 4(a)(i).
See
Innomed Techs., Inc. v. DRP Servs., FA
221171 (Nat. Arb. Forum
The Panel finds the disputed domain names are confusingly similar to Complainant’s HERBALIFE mark. The only differences are the addition of geographic terms and a generic top-level domain. None of these additions are sufficient to differentiate the disputed domain names from the HERBALIFE mark pursuant to Policy ¶ 4(a)(i). See Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name <net2phone-europe.com> is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); 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 Policy ¶ 4(a)(i)
has been satisfied.
Complainant claims that Respondent has neither rights nor
legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). Complainant
has the initial burden of showing the Respondent does not have rights or
legitimate interests in the disputed domain names. Once Complainant has made a
prima facie case showing, the burden
shifts to Respondent. The Panel
finds that Complainant has met the initial burden, and therefore has made a prima facie case under Policy ¶ 4(a)(ii). See Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376
(WIPO
Because Respondent failed to answer the Complaint, the Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all 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). Nevertheless, the Panel will examine all evidence in the record to determine if Respondent does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that Respondent has never been
authorized to use the HERBALIFE mark, and that Respondent is not and has never
been commonly known by the <herbalifeargentina.com>, <herbalifebrazil.com>,
<herbalifechile.com>, <herbalifecolombia.com>, <herbalifeecuador.com>,
<herbalifemexico.com>, <herbalifepanama.com>, and <herbalifevenezuela.com>
domain names. Further, nothing
in the WHOIS contact information indicates that Respondent is commonly known by
the disputed domain names. Thus, the
Panel finds that Respondent is not commonly known by the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
Respondent is using the disputed domain names to advertise links to third-party competitors. The Panel finds that such use is not 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 DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the disputed domain
names to commercially gain by advertising links to competing services
constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
Respondent is using the
<herbalifeargentina.com>, <herbalifebrazil.com>,
<herbalifechile.com>, <herbalifecolombia.com>, <herbalifeecuador.com>,
<herbalifemexico.com>, <herbalifepanama.com>, and <herbalifevenezuela.com>
domain names for commercial gain by advertising links to competing
services, and benefiting from the likely confusion between Complainant’s mark
and the disputed domain names. The Panel
finds that the similarity between the disputed domain names and the HERBALIFE
mark are likely to create confusion as to Complainant’s source, sponsorship,
affiliation, or endorsement of the websites that resolve from the disputed
domain names under Policy ¶ 4(b)(iv). See AltaVista
Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under
Policy ¶ 4(b)(iv) where the respondent’s domain name
resolved to a website that offered links to third-party websites that offered
services similar to the complainant’s services and merely took advantage of
Internet user mistakes); see also
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 <herbalifeargentina.com>, <herbalifebrazil.com>, <herbalifechile.com>, <herbalifecolombia.com>, <herbalifeecuador.com>, <herbalifemexico.com>, <herbalifepanama.com>, and <herbalifevenezuela.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 29, 2008
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