IHERB, INC., a California corporation v. John Carter
Claim Number: FA1605001673593
Complainant is IHERB, INC., a California corporation (“Complainant”), represented by Margaret A. Hosking of Best Best & Krieger, LLP, California, USA. Respondent is John Carter (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iherbo.com>, registered with TurnCommerce, Inc. DBA NameBright.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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 5, 2016; the Forum received payment on May 5, 2016.
On May 6, 2016, TurnCommerce, Inc. DBA NameBright.com confirmed by e-mail to the Forum that the <iherbo.com> domain name is registered with TurnCommerce, Inc. DBA NameBright.com and that Respondent is the current registrant of the name. TurnCommerce, Inc. DBA NameBright.com has verified that Respondent is bound by the TurnCommerce, Inc. DBA NameBright.com 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 May 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2016 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@iherbo.com. Also on May 9, 2016, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant operates an online retail store offering oils, vitamins, minerals, herbs, and other nutritional supplements under the IHERB mark. Complainant owns the IHERB mark by virtue of its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,134,787, registered August 29, 2006). Complainant has owned and operated the <iherb.com> domain name since its launch in 1997. Respondent’s <iherbo.com> domain name is confusingly similar to Complainant’s mark as it merely adds the letter “o” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or a legitimate interest in the <iherbo.com> domain name. Respondent is not commonly known by the disputed domain name or in possession of licensing rights to make use of the IHERB mark. Respondent is using the confusingly similar disputed domain name to divert Internet users to its online store that sells products which directly compete with those offered by Complainant.
Respondent has registered and is using the domain in bad faith. Respondent is adopting Complainant’s mark to divert Complainant’s customers to Respondent’s competing business for commercial gain. Respondent registered the <iherbo.com> domain name with actual knowledge of Complainant’s rights in the IHERB mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The <iherbo.com> domain name was registered on November 5, 2015.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s valid and subsisting trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent engaged in bad faith use and registration of the disputed domain name.
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.
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(f), 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 (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.”).
The Panel finds that the disputed domain name is confusingly similar to the valid and subsisting trademark of the Complainant. The Panel finds that the Complainant has adequately pled its rights in and to the trademark IHERB. The Respondent arrives at the disputed domain name by merely adding the letter “o” and the gTLD “.com” to Complainant’s trademark. This is insufficient to distinguish the disputed domain name from the Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
Respondent has no rights or legitimate interests in or to the disputed domain name. Based on the available WHOIS information, it appears that Respondent is not commonly known by the dispute domain name. As Respondent has not provided any evidence to rebut Complainant’s contention, the Panel finds that Respondent is not commonly known by the domain under Policy ¶ 4(c)(ii).
Also, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <iherbo.com> domain name. See Complainant’s Annex F, which Complainant claims shows Respondent’s use of the disputed domain name to sell products that directly compete with Complainant’s own online offerings. The use of a domain to sell products and/or services that compete directly with a complainant’s business has been held not to constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See, e.g., General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016).
Therefore, the Panel finds that Respondent lacks rights or a legitimate interest in the <iherbo.com> domain name under Policy ¶ 4(a)(ii).
The Panel finds that Respondent has registered and is using the <iherbo.com> domain name in bad faith. Using a deceptively similar domain name to divert Internet users to a webpage that directly competes for profit is evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005). Further using a confusingly similar domain name to attract Internet users to a website where competing products are sold has been held to constitute bad faith under Policy ¶ 4(b)(iv). See CAN Financial Corporation v. William Thomson / CAN Insurance, FA1401001541484 (Forum Feb. 28, 2014). From the record provided, it appears that the Respondent is engaged in deception for profit. As such, the Panel finds that it has engaged in bad faith use and registration under Policy ¶¶ 4(b)(iii) and (iv).
Complainant alleges that Respondent must have had actual notice of Complainant's rights in the IHERB mark prior to registration of the domain name because of the clear connection between the products sold on Respondent’s website and those of Complainant. Given the totality of the circumstances, the Panel agrees with Complainant’s assumption that the Respondent had actual notice of Complainant’s interests in and to the trademark IHERB. As such, the Panel finds that the disputed domain name was registered in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
Therefore, the Panel finds that the Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <iherbo.com> domain name transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: June 6, 2016
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