Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. v. Pre-Paid Legal, Inc.
Claim Number: FA0601000622348
Complainant is Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. (“Complainant”), represented by Jade L. Zike, 1901 Ave. of the Stars, Ste. 1600, Los Angeles, CA 90067. Respondent is Pre-Paid Legal, Inc. (“Respondent”), Post Office Box 711651, San Diego, CA 92171.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <herba-life.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Tyrus R. Atkinson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 9, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 17, 2006.
On January 10, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <herba-life.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 January 23, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 13, 2006 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@herba-life.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 21, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, 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 <herba-life.com> domain name is confusingly similar to Complainant’s HERBALIFE mark.
2. Respondent does not have any rights or legitimate interests in the <herba-life.com> domain name.
3. Respondent registered and used the <herba-life.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Herbalife International of America, Inc., is a wholly owned subsidiary of Herbalife International, Inc. Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the HERBALIFE mark. Complainant first registered the HERBALIFE mark with the USPTO on July 18, 1980 (Reg. No. 1,254,211). Complainant also holds valid trademark registrations for the HERBALIFE mark throughout the world.
Since 1980, Complainant has engaged in the creation and sale of dietary and nutritional supplements. In connection with its business, Complainant has undertaken significant expenditures of capital to extensively advertise and market the HERBALIFE mark.
Respondent registered the <herba-life.com> domain name on January 1, 2002. Respondent is using the disputed domain name to direct Internet users to a website containing links to various other websites, including websites which sell HERBALIFE products, as well as competing 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.
The Panel finds that Complainant’s registration of its HERBALIFE mark with the USPTO sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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.").
Moreover, Respondent’s <herba-life.com> domain
name is confusingly similar to Complainant’s HERBALIFE mark because
Respondent’s domain name incorporates Complainant’s mark in its entirety, adding
a hyphen and the generic top-level domain name “.com.” Respondent’s addition of a hyphen to
Complainant’s mark does not negate the creation of confusing similarity between
the disputed domain name and Complainant’s HERBALIFE mark. See Teleplace, Inc. v. De Oliveira,
FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names
<teleplace.org>, <tele-place.com>, and <theteleplace.com> are
confusingly similar to the complainant’s TELEPLACE trademark); see also Sports
Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003)
(“The addition of a hyphen to Complainant's mark does not create a distinct
characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar
analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant bears the initial burden of demonstrating that Respondent lacks any rights or legitimate interests in respect of the disputed domain name. However, once Complainant establishes a prima facie case, the burden then shifts to Respondent to prove that it has rights or legitimate interests in respect of the domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has established a prima facie case, and consequently will evaluate the evidence on record to determine whether Respondent has rights or legitimate interests in the domain name under Policy ¶ 4(c).
The evidence on record fails to show that Respondent is commonly known by the <herba-life.com> domain name. According to the WHOIS information, Respondent conducts business as Pre-Paid Legal, Inc. Consequently, Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Based upon the evidence on record, Respondent is utilizing the <herba-life.com> domain name to operate a website which provides links to other websites that offer products of Complainant, as well as products of Complainant’s competitors. As a result, Respondent has failed to demonstrate use of the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. 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).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Pursuant to Policy ¶ 4(a)(iii), Complainant sufficiently establishes that Respondent’s domain name has been registered and is being used in bad faith. Respondent registered and is using the <herba-life.com> domain name to manage a website featuring links to other websites that offer Complainant’s products without authorization, as well as those of Complainant’s competitors. Therefore, Respondent registered the disputed domain name primarily for the purpose of disrupting the business of Complainant under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).
Furthermore, Respondent’s website directs Internet consumers
to other websites offering goods that are also sold by Complainant. In light of the confusing similarity between
Respondent’s domain name and Complainant’s mark, Internet consumers could
easily confuse Respondent’s website with a website affiliated with
Complainant. Thus, Respondent has
intentionally attempted to attract, for commercial gain, Internet users to its
website by creating a likelihood of confusion with Complainant’s mark as to the
source, sponsorship, or affiliation of its website, in accord with Policy ¶
4(b)(iv). See Kmart v. Khan,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits
from its diversionary use of the complainant's mark when the domain name
resolves to commercial websites and the respondent fails to contest the
complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv)); see
also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration
and use of a domain name that incorporates another's mark with the intent to
deceive Internet users in regard to the source or affiliation of the domain name
is evidence of bad faith.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <herba-life.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Panelist
Dated: March 3, 2006
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