Herbalife International of America, Inc. a wholly owned subsidiary of Herbalife International, Inc. v. Ahmad Sidani
Claim Number: FA1004001320691
Complainant is Herbalife International of America, Inc. a wholly owned subsidiary of Herbalife International, Inc. (“Complainant”), represented by Susan Hwang, California, USA. Respondent is Ahmad Sidani (“Respondent”), Lebanon.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <herballife-sarl.com>, registered with Abacus America, Inc. d/b/a Names4Ever.
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 April 22, 2010.
On April 22, 2010, Abacus America, Inc. d/b/a Names4Ever confirmed by e-mail to the National Arbitration Forum that the <herballife-sarl.com> domain name is registered with Abacus America, Inc. d/b/a Names4Ever and that Respondent is the current registrant of the name. Abacus America, Inc. d/b/a Names4Ever has verified that Respondent is bound by the Abacus America, Inc. d/b/a Names4Ever 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 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 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@herballife-sarl.com. Also on April 29, 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 26, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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" 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 <herballife-sarl.com> domain name is confusingly similar to Complainant’s HERBALIFE mark.
2. Respondent does not have any rights or legitimate interests in the <herballife-sarl.com> domain name.
3. Respondent registered and used the <herballife-sarl.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., is a marketer of nutritional foods and dietary supplements
worldwide. Complainant owns multiple
trademark registrations for the HERBALIFE mark with the United States Patent
and Trademark Office (“USPTO”) (e.g.,
Reg. No. 1,969,346 issued April 23, 1996).
Respondent, Ahmad Sidani, registered the <herballife-sarl.com> domain name on October 15, 2009. The disputed domain name resolves to a website similar to Complainant’s official site, displaying “Herbal Life” in large prominent lettering along with various contact information.
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.
The Panel finds that Complainant’s USPTO trademark registrations are sufficient evidence to establish Complainant’s rights in the HERBALIFE mark under Policy ¶ 4(a)(i), even when Respondent lives or operates outside the U.S. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)); see also 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).
Respondent’s <herballife-sarl.com>
disputed domain name is confusingly similar to Complainant’s HERBALIFE
mark. Respondent’s disputed domain name
incorporates a misspelled version of Complainant’s mark that contains an extra
letter “l” and adds the descriptive acronym “sarl” that stands for “société à
responsabilité limitée,” a hyphen, and the generic top-level domain (“gTLD”)
“.com.” The Panel finds that minor
misspellings of Complainant’s mark, such as the insertion of an additional
letter, fail to distinguish the disputed domain name from Complainant’s mark
for the purposes of Policy ¶ 4(a)(i). See Google,
Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the
complainant’s mark does not remove the respondent’s domain names from the realm
of confusing similarity in relation to the complainant’s mark pursuant to
Policy ¶ 4(a)(i).”); see also Valpak Direct
Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain
name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i).). The Panel similarly finds that adding a
descriptive term or acronym is insufficient to prevent confusing
similarity. See Victoria’s Secret
v. Plum Promotions, FA 96503 (Nat. Arb. Forum Feb. 27, 2001) (“The mere
addition of the generic term “tv” does not reduce the likelihood of confusion
under Policy 4(a)(i).”); see also Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied). The Panel finds that including a hypen and
gTLD in the disputed domain name are irrelevant, non-distinguishing
modifications under a Policy ¶ 4(a)(i) analysis. See
Teradyne, Inc. v. 4Tel Tech.,
D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the
registered mark is an insubstantial change. Both the mark and the domain name
would be pronounced in the identical fashion, by eliminating the hyphen");
see also Innomed Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are
irrelevant for purposes of the Policy).
Therefore, under Policy ¶ 4(a)(i) the Panel concludes that Respondent’s
<herballife-sarl.com> disputed
domain name is confusingly similar to Complainant’s HERBALIFE mark.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
When alleging that Respondent lacks rights and legitimate interests in the disputed domain name, Policy ¶ 4(a)(ii) requires that Complainant present an adequate prima facie case against Respondent before Respondent bears the burden of demonstrating its rights and legitimate interests. In this case, the Panel concludes that Complainant has presented an adequate prima facie case and that Respondent has failed to meet its burden since it did not respond to the Complaint. Accordingly, the Panel may infer that Complainant’s allegations are correct and find that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed). The Panel elects, however, to consider the evidence in record in light of the Policy ¶ 4(c) factors to make an independent determination on Respondent’s rights and legitimate interests in the disputed domain name.
Complainant alleges that Respondent is not commonly known by the disputed domain name since the WHOIS information indicates no nominal association as it lists the registrant as “Ahmad Sidani.” The Panel finds that the WHOIS information can be a determining factor in revealing whether a respondent is commonly known by the disputed domain and indicates in this case that Respondent has no rights and legitimate interests in the disputed domain name. 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 Policy ¶ 4(c)(ii) does not apply); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent’s website resolving from
the disputed domain name attempts to pass itself off as Complainant’s official
site. Complainant asserts that
Respondent’s website uses the same green color scheme, displays a similar logo
and slogan, and prominently features the words “Herbal Life.” Complainant alleges that Respondent’s website
includes contact information, indicating that Respondent is holding itself out
as a source of Complainant’s goods. The
Panel finds that Respondent’s efforts to pass its website off as Complainant’s
official site does not constitute a bona
fide offering of goods or services or a legitimate noncommercial or fair
use under Policy ¶¶ 4(c)(i) or 4(c)(iii).
See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s
attempt to pass itself off as the complainant by implementing a color scheme
identical to the complainant’s was evidence that respondent lacks rights and
legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii)); see also Nokia Corp. v.
Eagle, FA 1125685
(Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed
domain name to pass itself off as the complainant in order to advertise and
sell unauthorized products of the complainant was not a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use of the disputed domain name pursuant to Policy ¶
4(c)(iii).
The Panel finds
Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s website resolving from the disputed domain name likely leads Internet users to contact Respondent for Complainant’s products. Respondent is not an authorized representative of Complainant in Lebanon. The Panel finds this apparent intent to disrupt Complainant’s business indicates Respondent’s bad faith registration and use according to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also 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).”).
Respondent chose a common misspelling of Complainant’s mark
to register as the disputed domain name in order to trade off the goodwill of
Complainant’s products. Respondent’s use of “Herbal Life” and the similarities
of Respondent’s resolving website aim to create confusion among Internet users
for Respondent’s commercial gain. The
Panel finds that Respondent’s activities in connection with the disputed domain
name constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479
(Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used
the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was commercially gaining from the likelihood of confusion between
the complainant’s AIM mark and the competing instant messaging products and
services advertised on the respondent’s website which resolved from the
disputed domain name); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad
faith where the respondent used the disputed domain name to sell the
complainant’s products without permission and mislead Internet users by
implying that the respondent was affiliated with the complainant).
Respondent attempts to pass itself off as Complainant so that Internet users will contact Respondent as a source or distributor of Complainant’s goods. Respondent’s use of a similar color scheme, leaf logo and slogan, as well as prominent display of the words “Herbal Life,” is evidence of Respondent’s intent to pass itself off as Complainant. The Panel finds that Respondent’s attempts to pass itself off as Complainant reveal bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
The Panel finds 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 <herballife-sarl.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 2, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum