Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. v. Montanya ILtd
Claim Number: FA0606000733012
Complainant is Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. (collectively “Complainant”), represented by Jade L. Zike, 1901 Ave. of the Stars, Ste. 1600, Los Angeles, CA 90067. Respondent is Montanya ILtd (“Respondent”), Anderson Square Building, PO Box 866 GT, Grand Cayman Grand Cayman Islands, KY.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hlcmyherbalife.com>, registered with Spot Domain 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 15, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 19, 2006.
On June 19, 2006, Spot Domain Llc confirmed by e-mail to the National Arbitration Forum that the <hlcmyherbalife.com> domain name is registered with Spot Domain Llc and that Respondent is the current registrant of the name. Spot Domain Llc has verified that Respondent is bound by the Spot Domain Llc 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 June 19, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 10, 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@hlcmyherbalife.com by e-mail.
A late response was received on July 19, 2006. On July 19, 2006, Respondent’s late Response was sent to the Panel.
On July 17, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <hlcmyherbalife.com> domain name is confusingly similar to Complainant’s HERBALIFE mark.
2. Respondent does not have any rights or legitimate interests in the <hlcmyherbalife.com> domain name.
3. Respondent registered and used the <hlcmyherbalife.com> domain name in bad faith.
B. Respondent did not dispute Complainant’s assertions and has requested that the Panel transfer the <hlcmyherbalife.com> domain name.
Complainant, Herbalife International of America, Inc. is a wholly owned subsidiary of Complainant, Herbalife International, Inc. These two entities shall be collectively referred to as “Complainant.” Complainant develops, manufactures, promotes, distributes and sells weight loss, nutrition, and personal care products, including vitamins, shampoos, moisturizers, skin cleansers, health and well-being magazines, brochures, videotapes and audio tapes. Complainant has registered its HERBALIFE mark with the United States Patent and Trademark Office (“USPTO”) for use in connection with all aspects of its business (Reg. No. 1,254,211 issued October 18, 1983; Reg. No. 1,811,780 issued December 21, 1993). In addition to its HERBALIFE mark, Complainant frequently uses the abbreviation “hlc” both internally and publicly to refer to “Herbalife Central,” a business tool provided to Complainant’s independent distributors. Complainant has registered the <herbalife.com>, <myherbalife.com> and <hlc.myherbalife.com> domain names in order to operate its websites proving Internet users with its information, goods and services.
Respondent registered the <hlcmyherbalife.com> domain name on March 3, 2006. Respondent is using the disputed domain name to link to third-party websites claiming to sell Complainant’s products and other products in direct competition with Complainant.
Respondent submitted a Response after the deadline of July 10, 2006, stipulating to the transfer of the <hlcmyherbalife.com> from Respondent to Complainant.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
Respondent does not contest any of Complainant’s allegations regarding the <hlcmyherbalife.com> domain name. Rather, Respondent has volunteered and agreed to transfer the disputed domain name to Complainant. The Complainant has agreed to such transfer on condition:
(1) The transfer is made promptly upon order of this Forum, and
(2) The Complainant’s acceptance of the Respondent’s stipulation to transfer should not be construed as a retraction of any assertions made by the Complainant in its Claim, nor as an endorsement of any factual or legal assertions made by the Respondent in its Response.
In light of Respondent’s agreement to transfer the <hlcmyherbalife.com>
domain name, the Panel has decided to forego the traditional UDRP analysis and
orders the transfer of the disputed domain name to Complainant subject to item
(2) above. Item (1) has been already be
complied with by this order. See
Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625
(Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where
the respondent stipulated to the transfer); see also Malev Hungarian
Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13,
2004) (“In this case, the parties have both asked for the domain name to be
transferred to the Complainant . . . Since the requests of the parties in
this case are identical, the Panel has no scope to do anything other than to
recognize the common request, and it has no mandate to make findings of fact or
of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v.
Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such
circumstances, where Respondent has agreed to comply with Complainant’s request,
the Panel felt it to be expedient and judicial to forego the traditional UDRP
analysis and order the transfer of the domain names.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hlcmyherbalife.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 8, 2006
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