Herbalife International of America, Inc., a
wholly owned subsidiary of Herbalife International, Inc. v. Daryll Bennett d/b/a
Aegea Tech
Claim Number: FA0911001293502
PARTIES
Complainant is Herbalife
International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc., (“Complainant”)
represented by Susan Hwang,
California, USA. Respondent is Daryll Bennett d/b/a Aegea Tech (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <herbalife.us>,
registered with Wild West Domains, Inc.
PANEL
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.
Louis E. Condon as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on November 6, 2009; the Forum received a hard
copy of the Complaint on November 10, 2009.
On November 9, 2009, Wild West Domains, Inc. confirmed by e-mail to the
Forum that the <herbalife.us>
domain name is registered with Wild West Domains, Inc. and that
Respondent is the current registrant of the name. 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 the U. S. Department of Commerce’s usTLD Dispute Resolution
Policy (the “Policy”).
On November 17, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 7, 2009 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On December 11, 2009, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed Louis E. Condon
as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <herbalife.us> domain name is identical to Complainant’s HERBALIFE mark.
2.
Respondent does not have any rights or
legitimate interests in the <herbalife.us> domain name.
3.
Respondent registered and used the <herbalife.us>
domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Herbalife International of America, Inc., is a wholly owned subsidiary of Herbalife International, Inc. Together, these entities create and sell dietary and nutritional supplements. Complainant is the owner of multiple registrations of the HERBALIFE mark, registered with the Untied States Patent and Trademark Office (“USPTP”) (e.g., Reg. No. 1,254,211 issued October 18, 1983).
Respondent, Daryll Bennett d/b/a Aegea Tech, registered
the <herbalife.us> domain name on July 16, 2008. Previously, the disputed domain name resolved
to a blog containing articles about Complainant’s competitors and links to
third-party websites that sold products and services in direct competition with
Complainant. The disputed domain name
currently resolves to a website featuring a collection of click-through links,
the majority of which promote Complainant’s competitors in the herbal wellness
industry.
DISCUSSION
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 the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 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 the 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 the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
The Panel finds Complainant has established rights in the HERBALIFE mark under Policy ¶ 4(a)(i) through its registration with the USPTO (e.g., Reg. No. 1,254,211 issued October 18, 1983). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of [UDRP] ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant
contends that Respondent’s <herbalife.us>
domain name is identical to its HERBALIFE
mark under Policy ¶ 4(a)(i). The
disputed domain name incorporates Complainant’s HERBALIFE mark in its entirety
and only deviates with the affixation of the country-code top-level domain
“.us.” The Panel finds that this
alteration is insufficient to differentiate the disputed domain name from
Complainant’s mark. Thus, the Panel
concludes that Respondent’s <herbalife.us>
domain name is identical to
Complainant’s HERBALIFE mark under [UDRP] ¶ 4(a)(i). See
Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding
that since the addition of the country-code “.us” fails to add any distinguishing
characteristic to the domain name, the <tropar.us> domain name is
identical to the complainant’s TROPAR mark);
see also Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005)
(“The domain name [<Barbie.us>] is identical to the trademark “Barbie”,
as it uses the trademark in its entirety. The only difference is the addition
of the country code “us” which for this purpose is insufficient to distinguish
the domain name from the trademark.”).
The Panel finds that Complainant has satisfied
Policy ¶ 4(a)(i).
Rights
or Legitimate Interests
Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. If the Panel finds that Complainant’s allegations establish such a prima facie case, the burden shifts to Respondent to show that it does indeed have rights or legitimate interests in the disputed domain names pursuant to the guidelines in Policy ¶ 4(c). The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the <herbalife.us> domain name pursuant to Policy ¶ 4(a)(ii). Since no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name. However, the Panel will still examine the record in consideration of the factors listed in Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out 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 paragraph 4(a)(ii) of the [UDRP].”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under [UDRP] ¶ 4(a)(ii).”).
There is no evidence in the record demonstrating that Respondent owns any service marks or trademarks that reflect the <herbalife.us> domain name. Therefore the Panel finds that Respondent does not have rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to [UDRP] ¶ 4(c)(i)).
Previously, the disputed domain name resolved
to a website purporting to be a blog on herbal supplements. The articles previously displayed at the
disputed domain name promoted Complainant’s competitors in the dietary
supplement industry and included links to purchase the products of
Complainant’s competitors. The Panel
finds that Respondent’s previous use of the disputed domain name was not in
connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or
fair use pursuant to Policy ¶ 4(c)(iv). See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and
services.”); see also 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.”).
Currently, the disputed domain name resolves to a website featuring an array of click-through links promoting the products of Complainant’s competitors in the dietary supplement and herbal products industry. The Panel presumes that Respondent is generating click-through fees through the use of these links. Thus, the Panel finds that the <herbalife.us> domain name is not being used in connected with a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (holding that the respondent’s use of the contested domain name to maintain a commercial website with links to the products and services of the complainant’s competitors did not represent a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii)); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was not a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to [UDRP] ¶ 4(c)(iii)).
The Panel finds no
evidence in the record suggesting that Respondent is commonly known by <herbalife.us> domain name. Complainant asserts
that Respondent has no license or agreement with Complainant authorizing
Respondent to use the CHI mark, and the WHOIS information identifies Respondent
as “Daryll Bennett d/b/a Aegea Tech.”
Thus, Respondent has not established rights or legitimate interests in the
disputed domain name under Policy ¶ 4(c)(iii). See 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 UDRP ¶ 4(c)(ii) does not
apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name registration information,
Respondent is not commonly known by the [<awvacations.com>] domain
name.”).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(ii).
Registration
or Use in Bad Faith
Respondent has used the disputed domain name,
at all relevant times, to disrupt Complainant’s business by diverting Internet
users to the websites of Complainant’s competitors in the dietary supplement
industry. The Panel finds this as evidence
of bad faith registration and use under Policy ¶ 4(b)(iii). See
David Hall Rare Coins v.
Complainant further
contends that Respondent has and is using the disputed domain name to
capitalize on the goodwill that Complainant has acquired in connection with its
HERBALIFE mark. The Panel presumes that
Respondent is profiting through this diversion of Internet users to
Complainant’s competitors. Thus, the
Panel finds that Respondent’s use of the disputed domain name amount to bad
faith under Policy ¶ 4(b)(iv). See Asbury
Auto. Group, Inc. v.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
DECISION
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <herbalife.us> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon Panelist
Dated: December 23, 2009
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