iHerb, Inc., a California corporation v. emma hong
Claim Number: FA1404001553252
Complainant is iHerb, Inc., a California corporation (“Complainant”), represented by G. Henry Welles of Best Best & Krieger LLP, California, USA. Respondent is emma hong (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <i-iherb.com>, registered with GoDaddy.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 8, 2014; the National Arbitration Forum received payment on April 8, 2014.
On April 9, 2014, GoDaddy.com, LLC confirmed by email to the National Arbitration Forum that the <i-iherb.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 2014 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@i-iherb.com. Also on April 11, 2014, 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 May 5, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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
Complainant and its predecessor in interest have used the trademark IHERB and variants thereof, including the domain name <iherb.com>, since 1997 in connection with the online retail sale of nutritional supplements. Complainant also uses the mark and domain name in connection with the sale of personal care products, food, and many other products. Complainant’s IHERB mark is registered in the United States and several other countries. Complainant ships products within the United States and to over 150 countries including Korea, which represents Complainant’s largest market. Complainant has a version of its website translated into Korean, and an application to register Complainant’s IHERB mark is pending in South Korea.
Complainant contends that the disputed domain name <i-iherb.com> is confusingly similar to Complainant’s IHERB mark. Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that Respondent is not a licensee of Complainant, has not been authorized by Complainant to use its mark, and is not currently known by the disputed domain name. Complainant accuses Respondent of using the domain name in connection with a website that copies the look and feel of Complainant’s Korean language site and that advertises an identical business offering the same types of products sold by Complainant, with the intent of profiting from consumer confusion. Complainant also notes that the domain name was registered through a proxy service. Complainant contends that Respondent’s actions demonstrate that the domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used in bad faith.
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.
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.”).
The disputed domain name is identical to Complainant’s IHERB mark, but for the addition of the letter “I” and hyphen at the beginning and the top-level domain suffix “.com” at the end. These alterations do not diminish the similarity between the domain name and Complainant’s mark. See, e.g., Banco Bradesco S/A v. Geraldo, D2013-1276 (WIPO Sept. 25, 2013) (finding <i‑bradesco.com> confusingly similar to BRADESCO). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant’s mark without authorization, and apparently its sole use has been in connection with a website aimed at creating confusion among Internet users as to its association with Complainant. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor.” Under paragraph 4(b)(iv), bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
Respondent is using the disputed domain name for a website that is nearly identical to Complainant’s site, with the apparent intent of creating and exploiting confusion with Complainant. Absent any indication to the contrary, the Panel infers that Respondent registered the domain name with this purpose in mind. Such use is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. See, e.g., American International Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding bad faith under paragraph 4(b)(iii) where respondent used complainant’s mark and logo in attempt to pass itself off as complainant); Habib Bank AG Zurich v. West, D2004-0041 (WIPO Mar. 31, 2004) (finding bad faith under paragraph 4(b)(iv) in similar circumstances). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <i-iherb.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: May 7, 2014
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