Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. v. (FAST-12785240) Bluehost.com Bluehost Inc
Claim Number: FA1109001408481
Complainant is Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. (“Complainant”), represented by Susan Hwang of Sheppard, Mullin, Richter & Hampton LLP, California, USA. Respondent is (FAST-12785240) Bluehost.com Bluehost Inc (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dubaiherbalife.com>, registered with FastDomain, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 21, 2011; the National Arbitration Forum received payment on September 21, 2011.
On September 21, 2011, FastDomain, Inc. confirmed by e-mail to the National Arbitration Forum that the <dubaiherbalife.com> domain name is registered with FastDomain, Inc. and that 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 disputes brought by third-parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 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@dubaiherbalife.com. Also on September 22, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 October 19, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 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 from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dubaiherbalife.com> domain name is confusingly similar to Complainant’s HERBALIFE mark.
2. Respondent does not have any rights or legitimate interests in the <dubaiherbalife.com> domain name.
3. Respondent registered and used the <dubaiherbalife.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 worldwide company selling dietary and nutritional supplements. Complainant first used the HERBALIFE mark in 1980 in connection with its nutritional and personal care products. Complainant owns numerous trademark registrations for the HERBALIFE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,254,211 registered October 18, 1983).
Respondent, (FAST-12785240) Bluehost.com Bluehost Inc, registered the <dubaiherbalife.com> domain name on May 6, 2009. The disputed domain name resolves to a website that operates as an online store selling Complainant’s products. The goods sold on the resolving website may or may not be counterfeit as Complainant has no way of policing or monitoring the sales since Respondent is not an authorized distributor of the HERBALIFE products.
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.
Complainant states that it has established rights in the HERBALIFE mark. Prior panels have determined that a complainant can establish rights in a mark via trademark registration with a national authority. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Here, Complainant holds a number of trademark registrations for the HERBALIFE mark with the USPTO (e.g., Reg. No. 1,254,211 registered October 18, 1983). The Panel concludes that Complainant has demonstrated its rights in the HERBALIFE mark, under Policy ¶ 4(a)(i), through its registration with the USPTO.
Moreover, Complainant claims that Respondent’s <dubaiherbalife.com> domain name is confusingly similar to Complainant’s HERBALIFE mark. The disputed domain name incorporates the HERBALIFE mark entirely and only adds the geographic term “dubai” and the generic top-level domain (“gTLD”) “.com.” It is well established that adding geographic terms does not avoid a finding of confusing similarity. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“[I]t 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.”). The Panel also finds that adding a gTLD does not sufficiently distinguish the disputed domain name from Complainant’s mark. See 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.”). The Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s HERBALIFE mark according to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant alleges that Respondent does not have rights or legitimate interests in the <dubaiherbalife.com> domain name. In Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007), the panel held 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.” The Panel finds that Complainant has made the requisite prima facie case. Due to Respondent’s failure to submit a response to the Complaint, the Panel may assume that Respondent has no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel chooses to examine the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant maintains that Respondent is not commonly known by the <dubaiherbalife.com> domain name. The WHOIS information identifies Respondent as “Bluehost.com Bluehost Inc,” which is dissimilar from the disputed domain name. Complainant makes no mention of having licensed or authorized Respondent to use its HERBALIFE mark within the disputed domain name. The Panel concludes that Respondent is not commonly known by the <dubaiherbalife.com> domain name, under Policy ¶ 4(c)(ii), as nothing in the record indicates otherwise. See 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); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s disputed domain name resolves to a website where Respondent operates an online store which sells Complainant’s products. Complainant claims that Respondent is not an authorized distributor of Complainant’s goods and that Respondent may or may not be selling counterfeit HERBALIFE products. The Panel finds that Respondent’s use of the confusingly similar disputed domain name to sell unauthorized goods of Complainant, in direct competition with Complainant, 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 Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant argues that Respondent registered and is using the <dubaiherbalife.com> domain name for the primary purpose of disrupting Complainant’s business. Internet users intending to purchase nutritional and dietary supplements from Complainant may find Respondent’s website and purchase the similar unauthorized and potentially counterfeit goods from Respondent instead. The Panel finds that registration and use of the disputed domain name does disrupt Complainant’s business and evidences bad faith 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).”).
Complainant asserts that Respondent registered the disputed domain name in order to create a likelihood of confusion as to Complainant’s sponsorship of, or affiliation with, the disputed domain name and products sold on the resolving website. Internet users searching online for Complainant may find Respondent’s website and be misled by Respondent’s unauthorized sale of Complainant’s HERBALIFE goods. Respondent uses this confusion to profit from increased Internet traffic and sales. The Panel finds that Respondent’s registration and use of the disputed domain name constitutes bad faith under Policy ¶ 4(b)(iv). See 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); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dubaiherbalife.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 1, 2011
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