Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. v. onle c/o onle fre
Claim Number: FA1004001319972
Complainant is Herbalife International of America, Inc., a wholly
owned subsidiary of Herbalife International, Inc. (“Complainant”), represented by Susan
Hwang, California, USA.
Respondent is onle c/o onle fre (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <herbalifeclinic.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on April 19, 2010.
On April 19, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <herbalifeclinic.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 April 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@herbalifeclinic.com. Also on April 22, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 19, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <herbalifeclinic.com> domain name is confusingly similar to Complainant’s HERBALIFE mark.
2. Respondent does not have any rights or legitimate interests in the <herbalifeclinic.com> domain name.
3. Respondent registered and used the <herbalifeclinic.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 multiple trademark registrations for its HERBALIFE
mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,969,346 issued April
23, 1996) in connection with its well-known marketing of nutritional foods and
dietary supplements.
Respondent, onle c/o onle fre, registered the disputed domain name on August 1, 2007. The disputed domain name resolves to a website that contains adult oriented videos with text in a foreign language. The resolving website also features pop-up advertisements for “Ringtone Hot’s Unlimited Club subscription service” and “Ringtone Hot’s Jokes subscription service.”
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.
Respondent, onle c/o onle fre, registered the disputed domain name on August 1, 2007.
Complainant asserts rights in its HERBALIFE mark based on
its registration of the mark with the USPTO (e.g., Reg. No. 1,969,346 issued April
23, 1996). Previous panels have held
that a mark need not be registered in the country where Respondent operates and
that registration in with any federal trademark authority establishes
Complainant’s rights in the mark. See KCTS Television Inc. v.
Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does
not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s
mark is registered in a country other than that of the respondent’s place of
business); see also Renaissance
Hotel Holdings, Inc. v. Renaissance
Complainant argues that Respondent’s <herbalifeclinic.com> domain name is confusingly similar to Complainant’s HERBALIFE mark. Respondent’s disputed domain name incorporates the entirety of Complainant’s mark and adds the descriptive term “clinic” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a descriptive term is not sufficient to overcome a finding of confusing similarity between the disputed domain name and Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy). The Panel also finds that the addition of a gTLD is irrelevant for the purposes of Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <herbalifeclinic.com> domain name is confusingly similar to Complainant’s HERBALIFE mark.
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and
legitimate interests in the disputed domain name. Complainant must first make a prima facie case in support of its
allegations, then the burden shifts to Respondent to prove it has rights or
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel
finds that based on the arguments made in the Complaint, Complainant has
established a prima facie case in
support of its contentions and Respondent has failed to submit a Response to
these proceedings. The Panel can infer
from Respondent’s failure to submit a Response that Respondent lacks rights or
legitimate interests in the disputed domain name. 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 F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417
(WIPO Feb. 1, 2007) (“Proper analysis of
paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts
from the Complainant to the Respondent once the Complainant has made out a
prima facie case that the Respondent has no rights or interests in the domain
names.”); see also 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.”).
Complainant asserts that Respondent is not commonly known by
the disputed domain name. The WHOIS
information for the disputed domain name indicates that the registrant is “onle c/o onle fre”
which Complainant contends is not similar to the disputed domain
name. Without evidence to the contrary,
the Panel finds Respondent is not commonly known by the disputed domain name
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
Respondent’s <herbalifeclinic.com> domain name was registered on August 1, 2007. The disputed domain name resolves to a website that contains adult oriented videos with text in a foreign language. The resolving website also features pop-up advertisements for ringtone and joke subscription services. The Panel finds that Respondent’s use of the disputed domain name to link Internet users seeking Complainant’s goods to adult oriented content is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the confusingly similar disputed domain name to intentionally misdirect Internet users to a website that displays adult oriented content as well as pop up advertisements is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv) as Respondent presumably profits from this use. See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (finding that the respondent registered the <holidayinnakron.com> domain name and linked it to an adult oriented website. The panel stated, “[W]hatever the motivation of Respondent, the diversion of the domain names to a [adult oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
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 <herbalifeclinic.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: May 20, 2010
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