Herbalife International of America, Inc.,
a wholly owned subsidiary of Herbalife International, Inc. v. Madserve.com
Claim
Number: FA0504000464519
Complainant is Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. (“Complainant”),
represented by Tawnya R. Wojciechowski, 650 Town Center Drive, 4th Floor,
Costa Mesa, CA 92626. Respondent is Madserve.com (“Respondent”), P.O. Box
11111, Scottsdale, AZ 85271.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <herbalife-central.com>, registered with Tucows
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
18, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 18, 2005.
On
April 18, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <herbalife-central.com> is registered
with Tucows Inc. and that Respondent is the current registrant of the
name. Tucows Inc. has verified that
Respondent is bound by the Tucows Inc. registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
April 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 12, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@herbalife-central.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 18, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Louis E. Condon
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." 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 <herbalife-central.com>
domain name is confusingly similar to Complainant’s HERBALIFE mark.
2. Respondent does not have any rights or
legitimate interests in the <herbalife‑central.com> domain
name.
3. Respondent registered and used the <herbalife-central.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 engaged in the
development, manufacture, promotion, distribution and sale of high quality
weight loss, nutritional and personal care products.
Complainant holds numerous registrations with the United States Patent
and Trademark Office for the HERBALIFE mark (including Reg. No. 1,254,211
issued October 18, 1883; Reg. No. 2,512,368 issued November 27, 2001; Reg. No.
1,811,780 issued December 21, 1993).
Complainant has itself, or through its predecessor in interest, used the
HERBALIFE mark in commerce since 1980.
Herbalife has spent considerable time, money and effort in developing,
advertising and promiting its nutritional supplements, weight loss and similar
products. Complainant has promoted its
products through exhibits and displays at industry trade shows, distribution of
catalogs and brochures, word of mouth by its distributors and Internet
advertising. Additionally, Complainant’s
products have been featured in articles in several health-related
publications. Complainant has an online
tool called “Herbalife Central,” which is associated with “a proprietary tool”
for Complainant’s distributors.
Respondent registered the <herbalife-central.com> domain name on October 12, 2003. Respondent is using the disputed domain name
to resolve to a website that offers products and services that compete with
Complainant. Furthermore, the website
displays Complainant’s HERBALIFE mark in numerous places.
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.
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 has
established presumptive rights in the HERBALIFE mark through registration with
the United States Patent and Trademark Office.
Since Respondent has failed to contest Complainant’s prima facie
case of rights, the Panel finds that Complainant has rights in the HERBALIFE
mark for purposes of Policy ¶ 4(a)(i). See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002) (“Under U.S. trademark law, registered marks hold a presumption that they
are inherently distinctive and have acquired secondary meaning.”); see also
Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
The <herbalife-central.com>
domain name registered by Respondent includes Complainant’s HERBALIFE mark in
its entirety and adds a hyphen, the generic top-level domain (“gTLD”) “.com,”
and the generic or descriptive word “central.”
Furthermore, Complainant has presented evidence that the phrase “Herbalife
Central” is associated with “a proprietary online tool” for Complainant’s
distributors. Under the Policy, the
addition of a hyphen and a generic or descriptive term associated with a
complainant’s business to a complainant’s registered mark does not negate a
finding of confusing similarity under Policy ¶ 4(a)(i). Furthermore, the addition of a gTLD is of no
legal significance in making a finding of confusing similarity. See Chernow Communications, Inc. v. Kimball, D2000-0119 (WIPO May 18,
2000) (holding “that the use or absence of punctuation marks, such as hyphens,
does not alter the fact that a name is identical to a mark"); see also
Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business);
see also Busy Body, Inc. v.
Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that
"the addition of the generic top-level domain (gTLD) name ‘.com’ is . . .
without legal significance since use of a gTLD is required of domain name
registrants").
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Respondent’s
failure in this instance to submit a response to the allegations of the
Complaint entitles the Panel to accept all reasonable allegations and
inferences in the Complaint as true unless clearly contradicted by the
evidence. See 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.”); see also Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the
absence of a response a panel is free to make inferences from the very failure
to respond and assign greater weight to certain circumstances than it might
otherwise do).
Complainant
asserts that Respondent has no rights or legitimate interests in the <herbalife-central.com>
domain name that contains Complainant’s HERBALIFE mark in its entirety. Complainant has made a prima facie case in support of its allegations, which shifts the
burden to Respondent to make a showing that it does have rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).
However, Respondent has failed to respond to Complainant’s allegations
and to provide evidence of rights or legitimate interests. Respondent has, therefore, failed to meet
its burden and the Panel concludes that Respondent lacks rights and legitimate
interests in the disputed domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that, once a complainant asserts that a respondent has no rights or legitimate
interests with respect to the domain, the burden shifts to that respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also
Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by a complainant that a respondent
has no rights or legitimate interests is sufficient to shift the burden of
proof to that respondent to demonstrate that such rights or legitimate
interests do exist); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that the respondent has no rights or legitimate
interests in the domain name because the respondent never submitted a response
or provided the panel with evidence to suggest otherwise).
Complainant asserts
that Respondent is using the <herbalife-central.com> domain name
to divert Internet users searching for Complainant’s HERBALIFE products and
services to Respondent’s website that offers competing products and services
under Complainant’s HERBALIFE mark.
Respondent’s use of a domain name that is confusingly similar to
Complainant’s registered mark to redirect Internet users to a website that
competes with Complainant is not a use in connection with a bona fide
offering of goods or services or a legitimate noncommercial or fair use
pursuant to Policy ¶¶ 4(c)(i) or (iii).
See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat.
Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of
Complainant’s mark to market products that compete with Complainant’s goods
does not constitute a bona fide offering of goods and services); see also
Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002)
(finding that Respondent had no rights or legitimate interests in a domain name
that used Complainant’s mark to redirect Internet users to a competitor’s
website); see also Chip Merch.,
Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the
disputed domain names were confusingly similar to Complainant’s mark and that
Respondent’s use of the domain names to sell competing goods was illegitimate
and not a bona fide offering of goods).
Complainant
contends that Respondent is not commonly known by the <herbalife‑central.com>
domain name. Respondent has not filed a
response and has not, therefore, provided the Panel with any evidence to rebut
Complainant’s assertion. Therefore, the
Panel finds that Respondent has not established rights and legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require
a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail"); see also Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark).
Thus, the Panel
finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is
using the <herbalife-central.com> domain name in an attempt to
profit by intentionally attracting Internet users interested in locating
Complainant’s HERBALIFE products and services.
Respondent presumably derives commercial benefit from these intentional
diversions by providing products and services similar to Complainant’s products
and services via a website that prominently displays Complainant’s mark. The Panel, therefore, concludes that Respondent’s
attempts to divert Internet users for commercial gain by attracting Internet
users to Respondent’s website through a likelihood of confusion with
Complainant’s HERBALIFE mark is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent
registered and used an infringing domain name to attract users to a website
sponsored by Respondent); see also Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where Respondent directed Internet users seeking
Complainant’s site to its own website for commercial gain); see also 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 Complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain).
Complainant
makes and sells nutritional supplements under its HERBALIFE mark. Respondent is using the <herbalife-central.com>
domain name to redirect Internet users to a website that offers competing goods
and which displays Complainant’s HERBALIFE mark. Thus, the Panel finds that Respondent’s use of a domain name that
is confusingly similar to Complainant’s registered mark to sell and advertise
products and services in direct competition with Complainant is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iii). See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb.
Forum Dec. 23, 2000) (concluding that domain names were registered and used in
bad faith where Respondent and Complainant were in the same line of business in
the same market area); see also S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business); see
also Gen. Media Communications, Inc.
v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith
where a competitor of Complainant registered and used a domain name confusingly
similar to Complainant’s PENTHOUSE mark to host a pornographic web site).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <herbalife-central.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
June 1, 2005
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