national arbitration forum

 

DECISION

 

Herbalife International of America, Inc. a wholly owned subsidiary of Herbalife International v. USA Musica

Claim Number: FA1102001372548

 

PARTIES

Complainant is Herbalife International of America, Inc. a wholly owned subsidiary of Herbalife International (“Complainant”), represented by Susan Hwang, California, USA.  Respondent is USA Musica (“Respondent”), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <herbalifeheadquarters.com>, registered with GoDaddy.com, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically February 11, 2011; the National Arbitration Forum received payment February 14, 2011.

 

On February 12, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <herbalifeheadquarters.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On February 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2011, 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@herbalifeheadquarters.com.  Also on February 22, 2011, 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 March 18, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 by Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    The domain name that Respondent registered, <herbalifeheadquarters.com>, is confusingly similar to Complainant’s HERBALIFE mark.

 

2.    Respondent has no rights to or legitimate interests in the <herbalifeheadquarters.com> domain name.

 

3.    Respondent registered and used the <herbalifeheadquarters.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Herbalife International of America, Inc. a wholly owned subsidiary of Herbalife International, owns the exclusive rights to the HERBALIFE mark, which it uses in connection with its offering of herbal and nutritional supplements.  Complainant holds numerous 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, USA Musica, registered the <herbalifeheadquarters.com> domain name May 26, 2008.  Respondent attempts to pass itself off as Complainant by displaying a webpage with a similar color scheme to Complainant’s official website, selling products purporting to be those of Complainant, and offering a link to “Become a distributor” of Complainant’s products.

 

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."

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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.

 

Identical to and/or Confusingly Similar

 

By showing that it has trademark registrations with a federal trademark authority, a complainant may establish its rights in a mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also 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).”).  Here, Complainant holds numerous trademark registrations with the USPTO for its HERBALIFE mark (e.g., Reg. No. 1,254,211 issued October 18, 1983).  Therefore, the Panel finds that Complainant established its rights in the HERBALIFE mark pursuant to Policy ¶ 4(a)(i).

 

Complainant asserts that Respondent’s <herbalifeheadquarters.com> domain name is confusingly similar to its HERBALIFE mark.  The disputed domain name contains Complainant’s entire HERBALIFE mark, adds the generic term “headquarters,” and adds the generic top-level domain name “gTLD” “.com.”  Previous panels have maintained that the addition of generic terms and a gTLD do not distinguish a disputed domain name from a famous mark. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). 

 

Accordingly, the Panel finds that Respondent’s <herbalifeheadquarters.com> domain name is confusingly similar to Complainant’s HERBALIFE mark under Policy ¶ 4(a)(i).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant urges that Respondent lacks rights and legitimate interests in the disputed domain name.  Because the Panel finds that Complainant has made a prima facie case in support of its allegations, the burden of proof is shifted to Respondent to show that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). 

 

Respondent failed to respond to this complaint and the Panel is allowed to infer the Respondent does not have rights or legitimate interests in the <herbalifeheadquarters.com> domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”).  Nonetheless, this Panel still examines the record to determine if Respondent evidence suggests that Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Based on the information provided in the record, no evidence suggests that Respondent is commonly known by the <herbalifeheadquarters.com> domain name.  Further, Complainant asserts that Respondent has not been authorized to use the HERBALIFE mark.  The WHOIS information identifies the domain name registrant as “USA Musica.”  Given this information, the Panel finds that Respondent has not sufficiently established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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).

 

Respondent uses the disputed domain name in an attempt to pass itself off as Complainant by displaying a webpage similar to Complainant’s official website and by selling Complainant’s products without authorization.  The Panel finds that this does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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 pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).

 

The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent uses the disputed domain name in an unauthorized manner to sell Complainant’s products and also to display a link that offers internet users the chance to “become a distributor” of Complainant’s products.  The Panel finds that Respondent’s use is a disruption of Complainant’s business and that this evidence supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); 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 uses a confusingly similar domain name in an attempt to pass itself off as Complainant.  Respondent uses the <herbalifeheadquarters.com> domain name to display a webpage that is designed to look like Complainant’s official website and at which Respondent sells Complainant’s products.  This is likely to confuse Internet users and is likely to result in a profit for Respondent.  The Panel finds that such use supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the 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).

 

The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <herbalifeheadquarters.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Hon. Carolyn Marks Johnson, Panelist

Dated: March 28, 2011.

 

 

 

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