iHerb, INC. v. Jing Struve
Claim Number: FA1712001764492
Complainant is iHerb, INC. (“Complainant”), represented by Margaret A. Hosking, of Best Best & Krieger, LLP, California, USA. Respondent is Jing Struve (“Respondent”), of California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iherbpharmacy.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.
Jeffrey M. Samuels, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 27, 2017; the Forum received payment on December 27, 2017.
On December 28, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <iherbpharmacy.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 January 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2018 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@iherbpharmacy.com. Also on January 2, 2018, 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.
A timely Response was received and determined to be complete on January 22, 2018.
On January 24, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey M. Samuels as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant iHerb, Inc. was formed in November 2001, and operates an online retail store through its iherb.com website and sells nutritional supplements and other healthy products both domestically and internationally, including China. Complainant owns a number of U.S. and international trademark registrations for the IHERB mark, including U.S. Registration Nos. 3,134,787 and 4,322,990, which it has used in connection with its online retail store since as early as 1997.
The disputed domain name, iherbpharmacy.com, was registered on December 2, 2015. As recently as October 10, 2017, the domain name was used in connection with an active site in the Chinese language, from which a large number of products identical or similar to the products sold at Complainant’s site may be found. Complainant has a large customer base in China and owns the domain names cn.iherb.com (in Chinese) and iherb.cn, which redirects to Complainant’s site in Chinese. Following the forwarding of a “cease and desist” letter, Respondent took down the disputed site and “gladly” offered to sell the domain name to Complainant if Complainant met the asking price. The disputed domain name is currently “for sale.”
Complainant asserts that the disputed domain name is confusingly similar to the IHERB mark. It notes that the domain name incorporates the term “iherb” in its entirety and contends that the addition of the highly descriptive word “pharmacy” is not sufficient to distinguish Respondent’s disputed domain name from the IHERB mark. Moreover, Complainant adds, the addition of the top-level domain .com is “irrelevant” because a generic top-level domain is a required element of every domain name. Complainant also points out that the term “iHerb.com” is an element of one of its registered trademarks. See iHerb.com – Trusted Brands. Healthy Rewards, which is the subject of U.S. Trademark Registration No. 4,383,545.
Complainant maintains that Respondent has no rights or legitimate interests with respect to the iherbpharmacy.com domain name. According to Complainant, Respondent is not a licensee of Complainant, has not otherwise been authorized by Complainant to use any of the IHERB trademarks, and is not commonly known by the disputed domain name. Complainant asserts that the disputed domain name is likely to cause confusion with Complainant[1] and result in the diversion of its customers. Thus, Complainant maintains, the disputed domain name is not being used in connection with a bona fide offering of goods or services and is not a legitimate noncommercial or fair use under the Policy.
With respect to the issue of “bad faith” registration and use, Complainant argues that “Respondent’s actions represent a desire to confuse Internet users who are searching for Complainant’s website. Respondent’s presumable purpose for causing such confusion is to extract profit from the traffic thus generated.” According to Complainant, such actions fall within paragraphs 4(b)(iii) and (iv) of the Policy.
In view of Respondent’s offer to sell the domain name to Complainant, Complainant maintains that the domain name was acquired primarily for the purpose of selling the domain name registration to Complainant for valuable consideration in excess of any out-of-pocket costs.
B. Respondent
In his Response, Respondent simply states that Complainant “needs to purchase the domain name from us. The domain is for sale.”
The Panel finds that: (1) the disputed domain name is confusingly similar to a mark in which Complainant has rights; (2) Respondent has no rights or legitimate interests in the disputed domain name; and (3) the disputed domain name was registered and is being 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.
The Panel concludes that the disputed domain name iherbpharmacy.com is confusingly similar to the IHERB mark. As pointed out by Complainant, the domain name incorporates in full the IHERB mark and the addition of the descriptive term “pharmacy” does not so distinguish the domain name from the mark as to avoid a finding of confusing similarity.
The Panel further finds that the Complainant, through its ownership and use of the IHERB mark, has rights to such mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) ( “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark….”)
The Panel concludes that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name.
The evidence indicates that Respondent, up until recently, was using a confusingly similar domain name to divert users to a webpage that directly competes with products sold at Complainant’s website. Such actions generally do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that complainant provides freelance talent services, and that respondent competes with complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“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).”)
The Panel concludes that the disputed domain name was registered and is being used in bad faith. The evidence indicates that, as recently as October 2017, Respondent’s iherbpharmacy.com domain name was used in connection with an active website in the Chinese language from which the public could purchase products that compete with those sold by Complainant. The Panel thus concludes that, by using the disputed domain name, Respondent intentionally attempted to attract, for commercial use, internet users to his site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such site and of the products on such site, within the meaning of paragraph 4(b)(iv) of the Policy. Moreover, given the competitive nature of the products sold at Respondent’s site vis-à-vis Complainant, the Panel finds that Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor, within the meaning of paragraph 4(b)(iii) of the Policy. (Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (finding that respondent’s use of the disputed domain name to offer competing loan services disrupts complainant’s business under Policy ¶ 4(b)(iii)); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that [r]espondent’s use of the website to display products similar to [c]omplainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”)
Respondent’s current “passive holding” of the disputed domain name is further evidence of the requisite bad faith, especially given his offer to sell the domain name to Complainant upon Complainant’s meeting of the asking price.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <iherbpharmacy.com> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: January 31, 2018
[1] Complainant points out that a company, Longstar HealthPro, Inc., whose Board of Directors includes Respondent, sought to register “iHerbPharmacy” with the United States Patent and Trademark Office and that such application was rejected on grounds of likelihood of confusion with Complainant’s IHERB registrations.
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