Herbalife International of America, Inc. a wholly owned subsidiary of Herbalife International, Inc. v. herblife llc
Claim Number: FA1007001337426
Complainant is Herbalife International of America, Inc. a wholly
owned subsidiary of Herbalife International, Inc. (“Complainant”), represented by Susan
Hwang, California, USA.
Respondent is herblife llc (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <herblifeonline.com>, registered with GoDaddy.com, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 23, 2010.
On July 26, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <herblifeonline.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 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@herblifeonline.com by e-mail. Also on August 20, 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 September 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <herblifeonline.com> domain name is confusingly similar to Complainant’s HERBALIFE mark.
2. Respondent does not have any rights or legitimate interests in the <herblifeonline.com> domain name.
3. Respondent registered and used the <herblifeonline.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 global provider of vitamins, minerals, dietary
supplements and health care products.
Complainant owns several trademark registrations with the United States
Patent and Trademark Office ("USPTO") for its HERBALIFE mark (e.g., Reg. No. 1,254,211 issued October
18, 1983).
Respondent, herblife llc, registered the <herblifeonline.com> domain name on February 8, 2005. Respondent’s disputed domain name resolves to Respondent’s website that sells health care products in competition with 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.
The Panel finds that Complainant has established rights in
its HERBALIFE mark under Policy ¶ 4(a)(i) through its trademark registrations
with the USPTO (e.g., Reg. No. 1,254,211 issued October 18, 1983). See
Trip Network Inc. v. Alviera, FA
914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal
trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were
adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also
Complainant contends that the <herblifeonline.com> domain name is confusingly similar
to Complainant’s HERBALIFE mark because the domain name contains Complainant’s
entire mark, absent the letter “a” while adding the generic term “online” and
the generic top-level domain (“gTLD”) “.com.”
The Panel agrees and finds that Respondent’s disputed domain name is
confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i) where it deletes one letter from Complainant’s mark and
adds the generic term “online” and the gLTD “.com.” See Hallelujah Acres, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Complainant must produce a prima facie case in support of its contentions. Upon Complainant’s production of a prima facie case the burden of proof transfers to Respondent to prove that it has rights and legitimate interests in the dispute domain name. 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 Policy.”). The Panel finds that Complainant has submitted a prima facie case and that the burden of proof has been properly shifted to Respondent. However, due to Respondent’s failure to respond to these proceedings, the Panel finds that it may assume that the allegations made by Complainant are true unless clearly contradicted by the evidence on record. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). Nevertheless, the Panel will evaluate the evidence on record to determine if Respondent has rights and legitimate interests in the <herblifeonline.com> domain name under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by
the <herblifeonline.com>
domain name. The WHOIS information for
the disputed domain name identifies “herblife llc” as the registrant. The Panel finds that although Respondent
appears to be known by the disputed domain name, absent affirmative evidence
showing otherwise, Respondent is not commonly known by the <herblifeonline.com> domain name
under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent is using the
disputed domain name to market and advertise competing nutritional,
supplemental and health care products through the confusingly similar domain
name. Complainant contends that such use
is not a bona fide offering of goods
or services or a legitimate noncommercial or fair use. The Panel finds that Respondent’s use of the
disputed domain name to operate a competing website in the nutritional, dietary
and health care product market 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 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.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent registered the <herblifeonline.com> domain name to disrupt the business of Complainant by offering competing products at the confusingly similar domain name. Previous panels have found evidence of bad faith registration and use where a respondent registered a confusingly similar domain name and used it to sell products that competed with the respective complainants. 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 Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website). Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Respondent’s <herblifeonline.com>
domain name resolves to Respondent’s website that markets, advertises and sells
nutrition, supplement and health care products in competition with
Complainant. Given that Respondent sells
competing products to Internet users through the website that resolves from the
disputed domain name the Panel finds that Respondent registered and used the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of
the <saflock.com> domain name to offer goods competing with the
complainant’s illustrates the respondent’s bad faith registration and use of
the domain name, evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iv)); see also Nokia
Corp. v. Private, D2000-1271
(WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy
¶ 4(b)(iv) where the domain name resolved to a website that offered similar
products as those sold under the complainant’s famous mark).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <herblifeonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: September 8, 2010
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