Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. v. Domain herballifeenhancer.com: Want to Buy, Lease or Develop? Email now. / R. Kumar and R. Murti
Claim Number: FA1104001381930
Complainant is Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. (“Complainant”), represented by Susan Hwang, California, USA. Respondent is Domain herballifeenhancer.com: Want to Buy, Lease or Develop? Email now. / R. Kumar and R. Murti (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <herballifeenhancer.com>, registered with FABULOUS.COM PTY LTD.
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.
Mr. Maninder Singh as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 5, 2011; the National Arbitration Forum received payment on April 5, 2011.
On April 5, 2011, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <herballifeenhancer.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 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@herballifeenhancer.com. Also on April 8, 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.
A timely Response was received and determined to be complete on April 25, 2011.
On 29.04.2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Maninder Singh as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant in its complaint has, inter-alia, raised the following contentions:-
· The Complainant – Herbalife International of America, Inc. California in its Complaint has contended that it is a wholly owned subsidiary of Herbalife International, Inc. Complainant has claimed in the complaint that its predecessor-in-interest had first used the Trademark HERBALIFE in 1980. Complainant is stated to have been engaged in the development, manufacture, promotion, distribution and sale of high quality weight loss, nutritional and personal care products, and other products to the general public under the Mark “HERBALIFE”.
· Complainant’s products are stated to be of high quality and enjoy substantial prestige in the dietary-supplement industry.
· Complainant has stated in the Complaint that each of its Trademark registrations, annexed as Exhibit-C, is effective and the Complainant is the owner of all rights to the business and goodwill appurtenant to said registrations.
· It is the claim of the Complainant that since the beginning of 1980, i.e. long before the Respondent had registered the disputed domain name “herballifeenhancer.com” in 2002, Complainant’s “herbalife” marks were widely and extensively advertised throughout the United States and the rest of the world.
· It is further the claim of the Complainant that as a result of the care and skill exercised by Herbalife, its dealers, distributors and other authorized outlets in the conduct of their business, and because of the extensive advertising and sale and public acceptance of Herbalife's products, the products bearing or sold under or with HERBALIFE marks have acquired a valuable reputation and the public recognizes the HERBALIFE® marks and identify exclusively with products of Herbalife.
· Complainant is stated to have spent and continues to spend substantial sums of money, time and effort to develop, advertise and promote its nutritional supplement, weight loss and related products, through, in part, extensive exhibits and displays at industry trade shows, distribution of catalogs and brochures, word of mouth by its distributors, and advertising on its Internet website at <herbalife.com>.
· It is also the claim of Complainant that its products have featured in numerous articles published in health-related publications, a list of which has been attached with the present Complaint as Exh.B.
· It is the contention of the Complainant that on March 3, 2011, it had sent a cease and desist notice to Respondent intimating that its disputed domain name <herballifeenhancer.com>, is infringing upon the HERBALIFE® marks of the Complainant.
· It is the contention of the Complainant that the Respondent in its response dated 3rd March, 2011 (attached as Exh.D) has falsely claimed that its disputed domain name <herballifeenhancer.com>does not include the HERBALIFE® marks, and that words "herbal life" are a generic phrase and it is on the contrary that the Complainant is trying to reverse-hijack Respondent's domain name through its Herbalife mark.
(a) Contentions of the Complainant regarding the disputed domain name being identical or confusingly similar to the Trademark or Service Mark of the Complainant:
· The Complainant in its complaint contends that the disputed domain name <herballifeenhancer.com> is confusingly similar to Complainant’s Herbalife mark which is a federally registered trademark as it incorporates wholly the HERBALIFE® mark and merely adds an extra letter "l", the descriptive word "enhancer," and the generic top level domain indicator ".com".
· Complainant contends that the Respondent is wrong in arguing that "herbal life" is a generic term and does not infringe on the HERBALIFE® marks of the Complainant. The addition of an extra "l", and the fact that both "herballife" and Herbalife are pronounced identically establish that Respondent has not sufficiently distinguished the disputed domain name from Complainant's HERBALIFE marks, despite what Respondent argues.
· Complainant in this regard has referred to and relied upon the following decisions : -
(i) Herbalife International of America, Inc. a wholly owned subsidiary of Herbalife International, Inc. v. Ahmad Sidani, FA 1320691 (Nat. Arb. Forum June 6, 2010)- holding that Respondent's <herballife-sarl.com> disputed domain name is confusingly similar to Complainant's HERBALIFE mark because it only included an extra letter, a hyphen, the descriptive word "sarl" and the generic top level domain ".com", none of which distinguish the domain name);
(ii) 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).";
(iii) Victoria's Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) - finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark and renders the domain name confusingly similar to complainant's mark);
(iv) Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) - finding that a domain name which is phonetically identical to Complainant's mark satisfies f 4(a)(i) of the Policy);
(v) VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) - finding that the pronunciation and spelling between the domain name <venesign.com> and the Complainant's mark, VERISIGN, are so close that confusion can arise in the mind of the consumer);
(vi) Dow Jones & Co. v. Power click, Inc., D2000-1259 (WIPO Dec. 1, 2000) - holding that the deliberate introduction of errors or changes, such as the addition of a fourth "w" or the omission of periods or other such generic typos do not change the Respondent's infringement on a core trademark held by Complainant.
· The Complainant contends that the addition of the descriptive term "enhancer" and the addition of the generic top level domain ".com", which is a required element of every domain name, does not sufficiently distinguish Respondent's disputed domain name from Complainant's mark. In order to substantiate his arguments, the Complainant relies upon the decision of this Forum in an earlier case filed by the Complainant in the similar facts and circumstances - Herbalife International of America, Inc. a wholly owned subsidiary of Herbalife International, Inc. v. onle c/o onle fre, FA 1319972 (Nat. Arb. Forum May 20, 2010)– and wherein it has been held that –
"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.... 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."
· Complaint argues that the Respondent in the present case has registered the disputed domain name with Complainant's HERBALIFE mark, coupled with an extra letter "l", the descriptive term "enhancer" and only added the common top-level domain ".com". Thus, the domain name is confusingly similar to the HERBALIFE* marks because none of these terms is sufficient to overcome a finding of confusing similarity.
· The Complainant alleges that Respondent’s claim that Complainant's HERBALIFE® mark is generic, is false. It has been contended by the Complainant that on account of extensive advertising, sale, there is a wide-spread public acceptance of the products of HERBALIFE. Such extensive advertisement and sales of these products bearing / sold under or in connection with the HERBALIFE® mark – have acquired a valuable reputation. The public recognizes the HERBALIFE® and identifies the products of HERBALIFE exclusively.
· Complainant claims that it has valid incontestable rights in the HERBALIFE® mark. Respondent had a duty to select a mark that is not confusingly similar to Complainant's mark.
(b) Contentions regarding Respondent having no rights or legitimate interests in the disputed domain name:
· Complainant claims that Respondent has no right to use the HERBALIFE® mark in the disputed domain name <herballifeenhancer.com>. and that the Respondent does not own any federal trademark or service mark registration for the HERBALIFE® marks. Further, Respondent has not been authorized by Complainant to register any domain names incorporating the Complainant’s HERBALIFE® marks.
· Respondent is not commonly known by the name “Herbalife”. WHOIS records identify Respondent as "Domain herballifeenhancer.com: Want to Buy, Lease or Develop? Email now." Further, the authorized representatives of the disputed domain name <herballifeenhancer.com>, are identified as "R. Kumar and R. Murti" not Herbalife. The WHOIS registrant information supports a finding that Respondent is not commonly known by the disputed domain name <herballifeenhancer.com>under Policy 4(a)(ii).
· In this regard Complainant has relied upon the decision of this Forum in - Tercent Inc. v. Lee Yi, - FA 139720 (Nat. Arb. Forum Feb. 10, 2003) holding "nothing in Respondent's WHOIS information implies that Respondent is “commonly known by” the disputed domain name" as one factor in determining that Policy If 4(a)(ii) does not apply.
· Complainant alleges that the Respondent has not used and is not using the <herballifeenhancer.com> domain name in connection with any bona fide offering of goods or services under Policy 4(c)(i), or a legitimate noncommercial or fair use under Policy 4(c)(iii), because use of Complainant's trademark in a domain name that is a "parked" website offering hyperlinks to websites offering competing nutritional, health and herbal supplement products, through the confusingly similar domain name, and offering the website for sale, is not a bona fide offering of goods or services or a legitimate non-commercial or fair use.
· Complainant contends in the complaint that Respondent's disputed domain name resembles to the <herballifeenhancer.com> website, a "parked" website containing many links that lead to external websites also advertising competing nutritional, health and herbal products. Respondent appears to be receiving a "click-through" referral fee for advertising links provided on the website. Such use is not a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate non-commercial or fair use under Policy 4(c)(iii). In order to substantiate his contentions, the Complainant has referred to and relied upon the following decisions : -
(i) Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. v. MultipleNames.com, FA 1219822 (Nat. Arb. Forum Sept. 26, 2008)- holding that when the "disputed domain names resolve to parked websites that contain a series of links to third-parties, many of whom are direct competitors of Complainant" and it is presumed Respondent receives financial benefits from referral fees for the links, the use is not a bona fide offering of goods or services pursuant to Policy 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii);
(ii) Bank of Am. Corp. v. Northwest Free City. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) holding that - "Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not 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)";
(iii) Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) - holding that the operation of a pay-per-click website at a confusingly similar domain name was 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));
(iv) TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) - holding that the respondent's diversionary use of the complainant's marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant's competitors, was not a bona fide offering of goods or services);
(v) Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent's website, which is blank but for links to other websites, is not a legitimate use of the domain name).
(vi) Hoffmann-La Roche Inc. v. Truskowski, FA 808287 (Nat. Arb. Forum Nov. 14, 2006) – holding that "the operation of a 'parking page' in connection with the disputed domain name does not constitute a bona fide offering of goods or services as contemplated by [UDRP] Policy 4(c)[i] or a legitimate noncommercial or fair use as contemplated by UDRP Policy 4(c)[iii].";
(vii) Netbooks, Inc. v. Lionheat Publ'g, FA 1069901 (Nat. Arb. Forum Oct. 18, 2007) – holding that - "The Panel also notes that Respondent is responsible for the content of any website using the domain name at issue");
(viii) MEDIATIS S.A. v. Packalo S.A.RL. Cyberger & Stan Virgiliu, D2007-0312 (WIPO June 12, 2007) holding that - "The website to which the domain name resolved, although active, only consisted in a parking page, hosted by Sedo and containing sponsored links to competitors of the Complainant. This use does not qualify as a bona fide offering of goods or services. Neither does it qualify as a non-commercial or fair use of the domain name."
· It is further the contention of the Complainant that the disputed domain name resembles to a website called<herballifeenhancer.com> that is being offered for sale. The Complainant claims that Respondent's website prominently displays that - "The domain <herballifeenhancer.com> may be for sale by its owner!" and when clicking the hyperlink, the user is directed to the Sedo website where it states that "herballifeenhancer.com (HERBALLIFEENHANCER.COM) is for sale." In order to substantiate his argument, the Complainant has referred to Exhibits-G & E attached with the present Complaint. The Complainant further contends that the WHOIS records state in the name section that those who "Want to Buy, Lease or Develop?" the domain name should email Respondent (Exh. A). Complainant further contends that such use by the Respondent illustrates that it lacks rights and legitimate interests in the disputed domain name under Policy 4(c)(ii) because the use is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use. In this regard, reliance has been placed by the Complainant to the following decisions : -
(i) Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. v. Noori Net, FA 1372476 (Nat. Arb. Forum Mar. 23, 2011)- holding that a website containing both hyperlinks to websites offering competing goods and displaying on the website that the website is for sale, illustrates that respondent lacks rights and legitimate interests in the disputed domain name under Policy 14(c)(ii);
(ii) Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) - holding that under the circumstances, the respondent's apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name;
(iii) Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) - holding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights.
· Complainant contends that the Respondent's use of the disputed domain name is not in connection with a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate non-commercial or fair use under Policy 4(c)(iii). There is also no evidence that, prior to this action, Respondent had any intention to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use in the future. Complainant further alleges that the Respondent does not appear to have any reason to register the disputed domain name except to intentionally create an impression of its association with Complainant Herbalife with a view to direct viewers to the website and from there, offer to sell competing products and services and provide links to Complainant's competitors. Complainant’s mark “Herbalife” has been a worldwide famous name in nutritional and health products long before the Respondent registered the disputed domain name <herballifeenhancer.com> in the year 2002. Respondent was well aware of Complainant Herbalife at the time when registration of the disputed domain name <herballifeenhancer.com>and apparently in order to exploit the goodwill of the HERBALIFE® mark it had registered the disputed domain name. Thus, the Respondent does not have a right or legitimate interest in the disputed domain name.
(c) Contentions regarding bad faith registration and use of the disputed domain name by Respondent :
· Complainant contends that the Respondent has registered the domain name primarily for the purpose of disrupting the business of Complainant’s Herbalife products. The disputed domain name <herballifeenhancer.com>resolves to a "parked" website being offered for sale, registered the disputed domain name to trade-off Complainant's goodwill, and contains links for other websites, presumably to generate revenue for Respondent from "click-through" fees (Exh.G). The Complainant further alleges that although, the disputed domain name resolves to a website advertising that it may be for sale, but when one clicks on the hyperlink, the user is directed to the Sedo website which states that the disputed domain name "herballifeenhancer.com” is for sale." Further, the WHOIS records also identify the website as being for sale. This further evidence of bad faith registration and use by the Respondent. The Respondent in this regard has referred to and relied upon the following decisions : -
(i) Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. v. Noori Net, FA 1372476 (Nat. Arb. Forum Mar. 23, 2011) - holding that a website that is being offered for sale is evidence of bad faith registration and use under Policy 4(b)(i);
(ii) Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) - holding bad faith when the respondent offered domain names for sale).
· The Complainant further alleges that the Respondent used Complainant's mark to register the disputed domain name in order to trade off the goodwill of Complainant's products. Respondent's content on Respondent's resolving website aims to create confusion among Internet users for Respondent's commercial gain. This activity in connection with the disputed domain name constitute bad faith registration and use pursuant to Policy 4(b)(iv). The Complainant has placed reliance upon the decision in the case of - Herbalife International of America, Inc. a wholly owned subsidiary of Herbalife International, Inc. v. Ahmad Sidani, FA 1320691 (Nat. Arb. Forum June 2, 2010) - holding that Respondent's use of "Herbal Life" and use of Complainant's mark to register the disputed domain name constituted bad faith registration since the Respondent was using the goodwill of Complainant. Further, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Herbalife's HERBALIFE® marks. There is no reason for Respondent to use Complainant's HERBALIFE mark except to create confusion and to act in bad faith by diverting Internet users to Respondent's website. Respondent is using the disputed domain name located at <herballifeenhancer.com> and resolving website to post hyperlinks to websites that compete with Complainant in the health and dietary supplement industry. Respondent's <herballifeenhancer.com> website is intended to attract users trying to find information about Herbalife's HERBALIFE® products. Once there, the website provides links to the websites of Complainant's competitors. Internet users looking for Complainant's dietary products might be confused by Respondent's website and hyperlinks and could end up purchasing products from Complainant's competitors. Such use evidences bad faith use and registration pursuant to ICANN Policy 4(a)(iii). In this regard Complainant has relied upon the following decisions : -
(i) Herbalife International of America, Inc. a wholly owned subsidiary of Herbalife International, Inc. v. Triplece Ltda. c/o aldo andres castanieda gutierrez, FA 1174429 (Nat. Arb. Forum May 27, 2008) - holding that Respondent's attempt to profit from the goodwill associated with Complainant's marks by creating a likelihood of confusion regarding the Complainant's affiliation with the content, constituted bad faith registration and use pursuant to Policy 4(b)(iv);
(ii) Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) – holding that "As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy 4(b)(iv)".
· Complainant, while contending bad faith registration and use on the part of Respondent, thereafter alleges that it is presumed that Respondent is receiving a referral fee and profiting from the links provided on the website as is evidenr from the following decisions : -
(i) Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. v. MullipleNames.com, FA 1219822 (Nat. Arb. Forum Sept. 26, 2008) - holding that when the Respondent presumably received referral fees from the links it provided on its website, this was evidence of Respondent's bad faith registration and use of the disputed domain name under Policy 4(b)(iv);
(ii) Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) ("Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving 'click-through-fees.";
(iii) Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) - holding that when Respondent was diverting Internet users searching for Complainant, and likely profiting, this was evidence of bad faith registration and use under Policy ]f 4(b)(iv);
(iv) University of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) ("Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent's own commercial gain is evidence of bad faith registration and use pursuant to Policy 4(b)(iv).").
· Complainant contends that Respondent's lack of legitimate interest in the HERBALIFE® mark, and the fact that Respondent is not using the domain name for any legitimate offering of goods or services or noncommercial/fair use, it is clear that Respondent has purchased the disputed domain name herballifeenhancer.com with the intent of disrupting Complainant’s Herbalife's business, and attracting - for commercial gain - Internet users to Respondent's website by creating a likelihood of confusion with Complainant’s Herbalife marks. This constitutes bad faith registration and use of the <herballifeenhancer.com> domain name.
B. Respondent
The respondent in his response to the Complaint has, inter-alia, submitted the following : -
· Respondent in his response has contended that while drawing attention to the difference in the spellings of the Complainant’s and Respondent’s domain name, has contended that its domain name <herballifeenhancer.com> is a purely generic, made up of common terms widely used by people and a trademark cannot be coined using common terms or generic phrases.
· Respondent contends that its (disputed) domain name does not contain Complainant’s mark "Herbalife".
· Respondent contends that there is no trademark for the word "herbaLLife" in <USPTO.gov> site.
· Respondent claims that it owns the disputed domain name fairly and squarely in good faith since 2002. It further claims that it even got other herbal domains like <HerbalSexEnhancer.com>, <HerbalSexEnhancers.com>, <HerbalPoint.com> etc. at the same time also.
·
Respondent
argues that many others have domain names registered
with the generic terms as "herbal life" also. Respondent further
argues that one
can own rights to "herbalife" which is a
made-up word, but one cannot own rights to generic phrase "herbal
life".
· Respondent claims that it has never tried to infringe on anyone's trademark rights. It is the allegation of the Respondent that perhaps the Complainant is trying to reverse-hijacks Respondent’s domain name using its TM threat.
· Respondent contends that there cannot be any trademark in "HerbalLife" and that is why the Complainant does not have a trademark for it. Respondent has stated in its reply that 'Herbalife' is a made-up word which is a commonly used descriptive word for which Complainant does not have any trademark.
· Respondent refutes disputed domain name <herballifeenhancer.com> containing Complainant mark 'herbalife' in it. Respondent alleges that "Herbal Life Enhancer" means that it is a domain name for providing herbal remedies to prolong or enhance one's life.
· Respondent contends that it has registered and used the domain name in good faith in 2002, i.e. about 9 years ago. it is not confusingly similar to your trademark and we have the legitimate rights and interests in the domain name.
· Respondent contends that the Complainant is harassing and threatening the Respondent with the intention to overreach and abuse the trademark using bullying tactics in order to reverse-hijack our rightful domain name from the Respondent.
· Respondent claims that it parks all of its domain names before developing them into bigger sites and it is a genuine use of its domain name. Respondent further claims that this domain parking by them has been held to be a genuine use as per many of the UDRP decisions.
· Respondent has alleged that if one clicks at <zfbot.com> domain analysis engine to check as to how many domain names registered which start and end with the generic descriptive keyword phrase "herballife, i.e. Herbal Life", one finds a total of 178 (128 starting with HerbalLife and 50 ending with HerbalLife) including domain names like TheHerbalLife.com etc. Many of these domain names are using parking pages including some of the domains that are owned by well known companies.
The Panel finds that the use of the domain name <herballifeenhancer.com> by the Respondent is in bad faith and the Respondent has no rights or legitimate interests in relation to the domain name.
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."
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.
· Complainant asserts it creates and sells high-quality dietary and nutritional supplements. Complainant states its uses the HERBALIFE mark in connection with its products. Complainant claims rights in the HERBALIFE mark through its registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,254,211 issued October 18, 1983). The Panel finds Complainant’s registration of the HERBALIFE mark with the USPTO proves its rights in the mark under Policy 4(a)(i). The Panel observes that this Forum in its decisions in –
(i) Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) – holding that “As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy 4(a)(i).”;
(ii) Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) - holdding that the complainant had established rights in the PAISLEY PARK mark under Policy 4(a)(i) through registration of the mark with the USPTO).
· Complainant contends that the <herballifeenhancer.com> domain name is confusingly similar to its HERBALIFE mark. Complainant claims that Respondent wholly incorporates its mark in the disputed domain name and then merely adds an extra letter “l,” the descriptive word “enhancer,” which describes the purpose of many of Complainant’s products, and the generic top-level domain (“gTLD”) “.com” to the mark. Moreover, Complainant argues that “herbal life,” the phrase in the disputed domain name, and “herbalife,” its mark, are phonetically similar. The Panel finds merit in the contention of Complainant and agrees to its contention that by addition of ‘l’ Respondent fails to adequately distinguish its domain name from Complainant’s mark. The Panel relies upon the decisions in –
(i) Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) - holding that the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy 4(a)(i).;
(ii) Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) - holding that the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy 4(a)(i);
(iii) Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Nat. Arb. Forum July 15, 2004) – holding that “Words that are spelled differently but are phonetically similar do not negate the confusing similarity of Respondent’s domain name pursuant to Policy 4(a)(i).”;
(iv) 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).
The Panel, therefore, holds that the Respondent’s <herballifeenhancer.com> domain name is confusingly similar to Complainant’s HERBALIFE mark under Policy 4(a)(i).
· While Respondent contends that the <herballifeenhancer.com> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. In this regard, the Panel finds force in the following decisions of this Forum as relevant –
(i) Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) – holding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy 4(a)(i);
(ii) David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) – holding that “Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”
· Even otherwise, the Panel would observe that there is creativity in combining two separate words namely “herbal” and “life” to create the name “herbalife”. This would qualify as an inventive word and which has acquired distinctiveness with the Complainant. The argument on behalf of the respondent that the domain name in question with individual word in the mark – being descriptive / generic would be unprotectable and, therefore, the overall mark would also be unprotectable, would not only be contrary to the principles of law applicable in the Trademarks’ regime but, in fact, would go against the Respondent itself in relation to the domain name registered by the Respondent.
· The Panel is reminded that 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. This Forum in its decisions in –
(i) Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) - holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name);
(ii) AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) – holding that “Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”
· Complainant asserts that it has not authorized Respondent to register a domain name that incorporates the HERBALIFE mark. Although the WHOIS information lists “Domain herballifeenhancer.com: Want to Buy, Lease or Develop? Email now / R. Kumar and R. Murti” as the registrant of the disputed domain name, the Panel finds that the Respondent is not actually known by the disputed domain name “herballifeenhancer.com”. Accordingly, the Panel finds that the Respondent is not commonly known by the disputed domain name under Policy 4(c)(ii). The Panel observes that this Forum in its decisions has reiterated this position –
(i) Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) - holding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”);
(ii) IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) – holding 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).
· Complainant alleges the <herballifeenhancer.com> domain name resolves to a parked website that contains hyperlinks to third-party sites that offer nutritional, health, and herbal products that compete with Complainant’s business. Complainant further alleges Respondent profits from its use of the disputed domain name through the receipt of click-through fees. In support of its allegations, Complainant submits screen shots of the resolving website that displays a page that lists hyperlinks with titles like “Health products,” “Natural health,” and “Supplements Up to 60% Off,” “Health Supplement,” and “Top 3 Weight Loss Pills.” Based on the evidence in the record, the Panel finds that the Respondent uses the disputed domain name to operate a pay-per-click website that provides hyperlinks for Complainant’s competitors. The Panel concludes that the Respondent does not use the <herballifeenhancer.com> domain name for a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate non-commercial or fair use under Policy 4(c)(iii). In this regard the Panel relies upon the following decisions of this Forum –
(i) Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) - holding that the operation of a pay-per-click website at a confusingly similar domain name was 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);
(ii) ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) thereby rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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).
· Complainant also claims Respondent is offering the disputed domain name for sale. Complainant alleges the resolving website displays the message, “The domain herballifeenhancer.com may be for sale by its owner!” The Panel finds that Respondent’s general offer to sell the <herballifeenhancer.com> domain name to the public provides evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy 4(a)(ii). In this regard the Panel refers to the decision of this Forum in –
(i) Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) – holding that “UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”;
(ii) Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) - holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
· The Panel finds that Respondent has made a general offer to sell the disputed domain name to the public. The Panel, therefore, holds that Respondent has engaged itself in registration and use in bad faith under Policy 4(b)(i). The Panel in this regard, relies upon the following decisions of this Forum in –
(i) Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) – holding that “Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy 4(b)(i).”);
(ii) Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) - holding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”.
· Complainant claims Respondent registered the <herballifeenhancer.com> domain name primarily for the purpose of disrupting Complainant’s business. As previously discussed, the disputed domain name resolves to a website that provides hyperlinks for Complainant’s competitors. Therefore, the Panel finds that Respondent’s domain name disrupts Complainant’s business, which amounts to registration and use in bad faith under Policy 4(b)(iii). In this regard, the following decisions of this Forum are relevant and have been relied upon by this Panel : -
· Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) - concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy 4(b)(iii);
· Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) - holding bad faith registration and use pursuant to Policy 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors.
· As discussed earlier, Complainant alleges Respondent profits from its use of the disputed domain name through the receipt click-through fees. Furthermore, Complainant avers that Respondent’s <herballifeenhancer.com> domain name is confusingly similar to Complainant’s HERBALIFE mark. Based on the evidence on the record, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Therefore, the Panel holds that the Respondent has engaged in registration and use in bad faith under Policy 4(b)(iv). The Panel relies upon the following decisions of this Forum in this regard : -
(i) T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) - holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy 4(b)(iv);
(ii) MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) - holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme.
· Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating the present dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <herballifeenhancer.com> domain name, of its rights to use the disputed domain name. However, Respondent does not make any specific allegations to support its allegation. The Panel observes that Complainant has satisfied Policy 4(a)(i), or any or all of the elements of Policy 4(a). The Panel finds that Complainant has not engaged in reverse domain name hijacking as alleged by the Respondent. In this regard, the Panel finds the following decisions of this Forum to be relevant to the present case and accordingly relies upon them : -
(i) World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) – holding that “Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”);
(ii) Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
· The Panel also finds that this Forum in its following decisions has held that even if a Panel finds that Complainant has failed to satisfy its burden under the Policy (which is not the position in the present case where the Complainant has discharged the burden) , this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim.
(i) ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) - holding that “Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”;
(ii) Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) - noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy 4(a) was absent.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <herballifeenhancer.com> domain name be TRANSFERRED from Respondent to Complainant.
Maninder Singh, Panelist
Dated: May 12, 2011
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