Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. v. Zainl K.A. Haider, P.o. Box 1080, Manama – Kingdom of Bahrain
Claim Number: FA1008001343621
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 (FAST-12785240) / Attn: uaeherbalife.com 1,500 GB Space and 15,000 Monthly Bandwidth / BlueHost.Com INC (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <uaeherbalife.com>, registered with FASTDOMAIN, INC.
PANEL
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.
David S. Safran, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 26, 2010.
On August 27, 2010, FASTDOMAIN, INC. confirmed by e-mail to the National Arbitration Forum that the <uaeherbalife.com> domain name is registered with FASTDOMAIN, INC. and that the Respondent is the current registrant of the name. FASTDOMAIN, INC. has verified that Respondent is bound by the FASTDOMAIN, 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 27, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 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@uaeherbalife.com by e-mail. Also on August 27, 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.
A timely Response was received and determined to be complete on September 2, 2010.
On September 16, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David S. Safran, as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the domain <uaeherbalife.com> is confusingly similar to its HERBALIFE trademarks in that if fully incorporates same. Complainant also contends that Respondent has no rights or legitimate interests in the domain in that its use of the Complainant’s trademarks is unauthorized, that Respondent is not using the domain in connection with the bona fide offering of goods or services and that registration and use in bad faith exists because Respondent is attempting to pass itself off as Complainant for commercial gain and for the purpose of disrupting the business of Complainant.
B. Respondent
Respondent contends that it is legitimately selling genuine HERBALIFE products in a country in which Complainant holds no trademark rights in the name and conducts no business, and that it has made no attempt to indicate that it is related to Complainant. Respondent also has pointed to what it contends are numerous other third party domains in which the word herbalife is fully incorporated.
FINDINGS
Respondent’s contentions that it is selling genuine HERBALIFE products in a country in which Complainant holds not trademark rights in the name and conducts no business has not been refuted by Complainant and the Panel finds such facts as admitted as a result. Complainant has also not refuted Respondent’s contention that the domains cited by Respondent are third party domains or that Complainant has taken no action to enforce its mark relative to the thirteen domains listed and as such the Panel finds such facts to be conceded as a result.
PRELIMINARY ISSUE: RESPONDENT’S IDENTITY
The WHOIS information for the disputed domain name identifies Respondent as: (Fast-12785240) Attn: uaeherbalife.com 1,500 GB Space and 15,000 Monthly Bandwidth. BlueHost.Com INC. The entity that responded in this matter identified itself as: Zainl K.A. Haider, P.o. Box 1080, Manama – Kingdom of Bahrain. Respondent does not argue the identity differences, and the Panel has accepted the Response’s self-identification of the Respondent, the case caption having been changed, above, accordingly. (See, UDRP Rule 10).
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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;
(2) the 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 submits evidence to show that it owns serveral 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). The Panel finds that such evidence establishes Complainant’s rights in its mark under Policy ¶ 4(a)(i) regardless of whether Complainant owns a trademark registration in the country where Respondent resides. 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 Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that the <uaeherbalife.com> is confusingly similar to Complainant’s HERBALIFE mark because the domain name only adds the geographic term “UAE” which is the abbreviation for the United Arab Emirates, and adds the generic top-level domain (“gTLD”) “.com.” Complainant contends that such additions to its mark are not sufficient to distinguish the domain name from the HERBALIFE mark. The Panel finds that Respondent’s <uaeherbalife.com> domain name is confusingly similar to Complainant’s HERBALIFE mark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”).
Since the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(iii) for the reasons indicated below, the Panel declines to analyze this element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Given that it has been taken as admitted fact that Respondent is selling genuine HERBALIFE products in a country in which Complainant holds no trademark rights in the name and conducts no business and that Complainant has taken no action to enforce its mark relative to the thirteen domains listed by Respondent (such that, absent evidence to the contrary which has not been submitted by Complainant, Respondent could have reasonably believed that it could use the domain at issue), and given that it has not been asserted by Complainant that Respondent has attempted to sell the domain name for profit, the Panel finds that it has not been established that Respondent has registered or used the <uaeherbalife.com> domain name in bad faith, it not having been established that Respondent has violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <uaeherbalife.com> domain name be RETAINED by Respondent.
David S. Safran, Panelist
Dated: September 29, 2010
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