Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. v. Ratio WebServices c/o Daniel Reimann
Claim Number: FA0606000733016
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 Ratio WebServices c/o Daniel Reimann (“Respondent”), 3169 E Atlantic Blvd, Pompano Beach, FL, 33062.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <herbalifestore.com>, registered with Schlund+Partner Ag.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 15, 2006; the National Arbitration Forum received a hard copy of the Complaint June 19, 2006.
On June 20, 2006, Schlund+Partner Ag confirmed by e-mail to the National Arbitration Forum that the <herbalifestore.com> domain name is registered with Schlund+Partner Ag and that Respondent is the current registrant of the name. Schlund+Partner Ag verified that Respondent is bound by the Schlund+Partner Ag registration agreement and thereby has 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 20, 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@herbalifestore.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 14, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <herbalifestore.com>, is confusingly similar to Complainant’s HERBALIFE mark.
2. Respondent has no rights to or legitimate interests in the <herbalifestore.com> domain name.
3. Respondent registered and used the <herbalifestore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Herbalife International of America, Inc., is a leading provider of high-quality dietary and nutritional supplements, including vitamins, hair and skin care products, and health foods. Complainant has continuously used the HERBALIFE mark in connection with health and beauty products since 1980 and was one of the first companies to make and sell nutritional supplements to the general public.
Complainant registered the HERBALIFE mark with the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 1,254,211 issued October
18, 1983; Reg. No. 2,512,368 issued November 27, 2001; Reg. No. 1,811,780
issued December 21, 1993; Reg. No. 1,969,346 issued April 23, 1996). Complainant also operates a website at the
<herbalife.com> domain name.
Respondent registered the <herbalifestore.com> domain name June 19, 2003, but the domain name has never resolved to an active website.
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 will draw such inferences as the Panel 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 Complainant to 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 disputed domain name that Respondent registered, <herbalifestore.com>,
fully incorporates Complainant’s registered HERBALIFE mark and merely adds the
term “store.” In Arthur Guinness Son
& Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001),
the panel found that the respondent’s domain names, all of which contained the
complainant’s entire GUINNESS mark but merely added common terms to the end,
such as “irish stout,” “guide,” “tours” and “jazz festival,” were confusingly similar
to the mark because each featured the complainant’s GUINNESS mark
“prominently.” In this case, Respondent
also merely adds a common term to a domain name prominently featuring a
registered mark. Therefore, the
disputed domain name, <herbalifestore.com>, is confusingly similar
to Complainant’s HERBALIFE mark under Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic proof in this proceeding that it has rights to and legitimate interests in the mark contained entirely within the disputed domain name. Complainant alleged that Respondent has no such rights to or legitimate interests in the <herbalifestore.com> domain name. Complainant has the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Document Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or 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 the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed).
However, the Panel examines the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c). Respondent is not commonly known by the <herbalifestore.com> domain name, because the WHOIS information lists “Ratio WebServices c/o Daniel Reimann” as the registrant of the domain name. No other evidence in the record suggests that Respondent is commonly known by the disputed domain name. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also 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.”).
Moreover, Respondent has not used or made any demonstrable preparations to use the <herbalifestore.com> domain name since registering it three years ago. The Panel finds that Respondent’s non-use of the disputed domain name constitutes passive holding, which is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial of fair use pursuant to Policy ¶ 4(c)(iii). See State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that the respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name); see also Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleged that Respondent acted in bad faith. The record does not show a violation by Respondent of the factors listed in Policy ¶ 4(b) to support bad faith. However, the Panel looks to the totality of the circumstances. Respondent’s registration and use of the <herbalifestore.com> domain name, using the protected mark of another, supports findings of bad faith registration and use under Policy ¶ 4(a)(iii). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”).
Respondent registered the <herbalifestore.com> domain name June 19, 2003, and the domain name still does not resolve to any active content. In Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000), the respondent registered the <thecaravanclub.com> domain name, which the panel found was identical to the complainant’s THE CARAVAN CLUB mark, and Respondent there also made no use of the domain name. The panel held that the respondent was passively holding the disputed domain name, which permitted an inference of registration and use in bad faith. Because Respondent has also registered a domain name containing the registered mark of another and has not made any use of the domain name for over three years, the Panel concludes that Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
The Panel also finds that, given Complainant’s federal trademark registrations in the United States, where Respondent resides, Respondent had actual or constructive knowledge of Complainant’s HERBALIFE mark when registering the <herbalifestore.com> domain name. Therefore, Respondent’s registration and use of the disputed domain name was in bad faith under Policy ¶ 4(a)(iii). See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that “[i]n light of the notoriety of Complainant’s famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time [Respondent] registered the disputed domain name” and such knowledge constituted bad faith).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <herbalifestore.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 27, 2006.
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