Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. v. noorinet
Claim Number: FA1407001567996
Complainant is Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. (“Complainant”), represented by Susan Hwang, California, USA. Respondent is noorinet (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <herbalifenutrition.com>, registered with Gabia, Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 1, 2014; the National Arbitration Forum received payment on July 2, 2014. The Complaint was received in both Korean and English.
On July 7, 2014, Gabia, Inc. confirmed by e-mail to the National Arbitration Forum that the <herbalifenutrition.com> domain name is registered with Gabia, Inc. and that Respondent is the current registrant of the name. Gabia, Inc. has verified that Respondent is bound by the Gabia, 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 July 14, 2014, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of August 4, 2014 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@herbalifenutrition.com. Also on July 14, 2014, the Korean language 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 August 7, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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
1. Complainant is a famous company with a worldwide reputation for creating and selling high-quality dietary and nutritional supplements. Complainant owns numerous registrations for the HERBALIFE mark in the United States and internationally including United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,254,211 registered October 18, 1983); (e.g., Reg. No. 4,402,483 registered September 17, 2013).
2. Respondent’s <herbalifenutrition.com> domain name is confusingly similar to Complainant’s HERBALIFE mark. Respondent merely adds the word “nutrition” and inserts the generic top-level domain (“gTLD”) “.com.”
3. Respondent has no rights or legitimate interests in the <herbalifenutrition.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent uses the disputed domain name to resolve to a parked website stating “This Domain is for Sale & Under Construction Page.” See Complainant’s Exhibit D.
4. Respondent registered and is using the <herbalifenutrition.com> domain name in bad faith. Respondent offers to sell the disputed domain name in bad faith. Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. of Los Angeles, CA, USA. Complainat is the owner of domestic and international registrations for the mark HERBALIFE, as well as related marks, which it has used continuously since at least as early as 1983 in connection with the sale of dietary and nutritional supplements. Complainant also conducts its business through ecommerce at its <herbalife.com> website.
Respondent is noorinet of Daegu, South Korea. Respondent’s registrar’s address is not listed. The WHOIS information states that the <herbalifenutrition.com> domain name was created on June 14, 2006 under the name “noorinet” as registrant.
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.”).
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Korean, thereby making the language of the proceedings Korean. Pursuant to Rule 11(a), the Panel finds that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant asserts that it is a famous company with a worldwide reputation for creating and selling high-quality dietary and nutritional supplements. Complainant states that it owns numerous registrations for the HERBALIFE mark in the United States and internationally. See USPTO (e.g., Reg. No. 1,254,211 registered October 18, 1983); see also (e.g., Reg. No. 4,402,483 registered September 17, 2013). Panels have found that registration of a mark with the USPTO sufficiently demonstrates that the owner of the registration has rights in the mark. 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).”). Panels have expanded the sufficiency of such rights by holding that trademark registration satisfies Policy ¶ 4(a)(i) regardless of whether the respondent lives or operates within the jurisdiction where the mark is registered. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). The Panel here finds that Complainant has rights in the <herbalifenutrition.com> domain name under Policy ¶ 4(a)(i).
Complainant also claims that Respondent’s <herbalifenutrition.com> domain name is confusingly similar to Complainant’s HERBALIFE mark. Complainant contends that Respondent adds the word “nutrition” and inserts the gTLD “.com.” In Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) the panel found that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark. The Panel here finds that Respondent’s addition of the word “nutrition” and the gTLD “.com” is insufficient to differentiate Respondent’s disputed domain name from Complainant’s HERBALIFE mark.
The Complainant has proven this element.
The Panel recognizes 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. See 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). The Complainant has met this burden.
Complainant alleges that Respondent has no rights or legitimate interests in the <herbalifenutrition.com> domain name under Policy ¶ 4(c)(iii). Complainant asserts that Respondent is not commonly known by the disputed domain name and Complainant has not given Respondent permission to use Complainant’s registered mark. The Panel notes that WHOIS information for the disputed domain name lists “noorinet” as registrant. The Panel finds that Respondent is not commonly known by the <herbalifenutrition.com> domain name pursuant to Policy ¶ 4(c)(ii). 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).
Complainant next states that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant explains that Respondent uses the disputed domain name to resolve to a parked website stating “This Domain is for Sale & Under Construction Page.” Respondent’s resolving website additionally states, “We are looking for Investors in developing our new WebSite <noori.net> This Website is under construction now. However, you can buy this domain showing this webpage if your price is ok.” Complainant asserts that Respondent’s offer to sell the disputed domain name and the fact that Respondent is looking for investors, indicates that Respondent is attempting to commercially profit from the use of the disputed domain name. In Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) the panel found that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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). The Panel here finds that Respondent’s use violates Policy ¶¶ 4(c)(i) and 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant asserts that Respondent registered and is using the <herbalifenutrition.com> domain name in bad faith under Policy ¶ 4(a)(i). The Panel again notes that Respondent offers to sell the disputed domain name as evidenced by Complainant’s screen shot of the resolving website. The panel in Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) stated, “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).” The Panel here finds that Respondent’s offer to sell the disputed domain name stating, ”However, you can buy this domain showing this webpage if your price is ok”, indicates bad faith under Policy ¶ 4(b)(i).
Complainant next asserts that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks under Policy ¶ 4(b)(iv). The Panel concludes that Respondent’s attempt to sell the disputed domain name as well as recruit investors resulted in commercial profit and determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <herbalifenutrition.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: August 21, 2014
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