Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. v. MultipleNames.com
Claim Number: FA0808001219822
Complainant is Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc.,
(“Complainant”), represented by Susan Hwang, of Sheppard Mullin, California,
USA. Respondent is MultipleNames.com (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <erbalife.com> and <herbalif.com>, registered with Wild West Domains, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 8, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 11, 2008.
On August 11, 2008, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <erbalife.com> and <herbalif.com> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 4, 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@erbalife.com and postmaster@herbalif.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 12, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <erbalife.com> and <herbalif.com> domain names are confusingly similar to Complainant’s HERBALIFE mark.
2. Respondent does not have any rights or legitimate interests in the <erbalife.com> and <herbalif.com> domain names.
3. Respondent registered and used the <erbalife.com> and <herbalif.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Herbalife International of America, Inc., is the American subsidiary of Herbalife International, a world-wide company that creates and sells high-quality dietary and nutritional supplements. Complainant owns numerous registrations of the HERBALIFE mark for dietary and vitamin supplements, as well as various other food and cosmetic products. The HERBALIFE mark is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,969,346 issued Apr. 23, 1996).
Respondent’s <erbalife.com> domain name was registered on July 1, 2002
and its <herbalif.com> domain name was registered on April
30, 2003. Both disputed domain names
currently resolve to parked websites displaying a variety of links to
third-party websites. Most of these
displayed links direct Internet users to competitors of 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 has sufficiently established rights in the
HERBALIFE mark through registration with the USPTO pursuant to Policy ¶
4(a)(i). See VICORP Rests., Inc. v.
Triantafillos, FA 485933 (Nat. Arb. Forum July 14,
2005) (“Complainant has established rights in the BAKERS SQUARE mark by
registering it with the United States Patent and Trademark Office (“USPTO”).”); see also Reebok Int’l Ltd. v.
The <erbalife.com>
and <herbalif.com> domain names both incorporate the
generic top-level domain (“gTLD”) “.com” and a close misspelling of the
HERBALIFE mark. The <erbalife.com> domain name omits the initial letter “h,”
while the <herbalif.com> domain name omits the last letter
“e.” The omission of one letter and
inclusion of a gTLD does not adequately distinguish a disputed domain
name. Accordingly, the Panel finds the
disputed domain names to be confusing similar to Complainant’s HERBALIFE mark
pursuant to Policy ¶ 4(a)(i). See Granarolo
S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that
the <granarolo.com> domain name was confusingly similar to the
complainant’s registered G GRANAROLO mark); see
also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000)
(finding that a domain name which differs by only one letter from a trademark
has a greater tendency to be confusingly similar to the trademark where the
trademark is highly distinctive); see
also Jerry
Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr.
10, 2007) (“The mere addition of a generic top-level domain (“gTLD”)
“.com” does not serve to adequately distinguish the Domain Name from the
mark.”).
Previous panels have found a disputed domain name, which differs from a mark only for a simple misspelling such as the addition or omission of one letter to constitute typosquatting. The Panel finds the disputed domain names in this case to be examples of typosquatting and considers this to be additional evidence that they are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was evidence that the domain name was confusingly similar to the mark); see also Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to the complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent lacks
rights and legitimate interests in the disputed domain names. See VeriSign
Inc. v. VeneSign
However, Respondent has failed to submit a reply to the
Complaint. Therefore, the Panel may
presume that Respondent lacks rights and legitimate interests in the disputed
domain names. Nonetheless, the Panel
will proceed to examine the record in consideration of the factors listed under
Policy ¶ 4(c). 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 Vanguard
Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding
that because Respondent failed to submit a Response, “Complainant’s submission
has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel
accepts as true all reasonable allegations . . . unless clearly contradicted by
the evidence.”).
The WHOIS information for both of the disputed domain names
lists the alias “MultipleNames.com.”
This does not suggest that Respondent is or ever was commonly known by
either of the disputed domain names.
Without any additional information in the record, the Panel finds that
Respondent is not commonly known by either the <erbalife.com> and <herbalif.com> domain
names pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat. Arb. Forum July 17, 2006) (concluding that the
respondent was not commonly known by the <coppertown.com> domain name
where there was no evidence in the record, including the WHOIS information,
suggesting that the respondent was commonly known by the disputed domain name); see also Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply).
The disputed domain names resolve to parked websites that contain a series of links to third-parties, many of whom are direct competitors of Complainant. It may be presumed that Respondent financially benefits from these links through the use of referral fees. Absent any additional evidence, the Panel finds that Respondent’s use of the <erbalife.com> and <herbalif.com> domain names does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute 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)).
Additionally, the disputed domain names are being offered for sale through an auction. This demonstrates a willingness to sell the disputed domain names and is further evidence that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell the disputed domain name suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Both of the disputed domain names are currently being
offered for sale as part of an online auction held with the <sedo.com>
domain name. This willingness to dispose
of the disputed domain names by selling them creates the presumption that
Respondent registered and is using the disputed domain names in bad faith
pursuant to Policy ¶ 4(b)(i). See Wrenchead.com, Inc. v. Hammersla,
D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale
at an auction site is evidence of bad faith registration and use); see also Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”).
Additionally, the
disputed domain names each resolve to a parked website displaying nothing but links
to third-parties, many of whom are direct competitors of Complainant. This disruptive use of the disputed domain
names establishes that Respondent registered and is using the <erbalife.com>
and <herbalif.com> domain names in bad faith pursuant
to Policy ¶ 4(b)(iii).
See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July
24, 2006) (finding that the respondent engaged in bad faith registration and
use pursuant to Policy ¶ 4(b)(iii) by using the
disputed domain names to operate a commercial search engine with links to the
products of the complainant and to complainant’s competitors, as well as by
diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd.
v. Domain Mgmt. Servs., FA
877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under Policy ¶ 4(b)(iii)).
Moreover, as
previously stated, the Panel may presume that Respondent is commercially
benefiting from these links through the use of referral or other
“click-through” fees. As a consequence,
the Panel finds that the confusing similar <erbalife.com> and <herbalif.com>
domain names are being used for commercial benefit in an attempt to profit from
a likelihood of confusion that Internet users will experience when they enter
the disputed domain names. Therefore,
the Panel considers this to be further evidence of Respondent’s bad faith
registration and use of the disputed domain name pursuant to Policy ¶
4(b)(iv). See
And finally, both of the disputed domain names are close misspellings of Complainant’s mark, omitting either the first or last letter of the mark, and is typosquatting. The Panel determines this to be further evidence of Respondent’s bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (“Respondent’s registration and use of the disputed domain name demonstrates a practice commonly referred to as ‘typosquatting.’ This practice diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use” under Policy ¶ 4(a)(iii)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <erbalife.com> and <herbalif.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 26, 2008
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