Herbalife International of
America, Inc., a wholly-owned subsidiary of Herbalife International, Inc. v. K
J
Claim Number: FA0808001219775
PARTIES
Complainant is Herbalife International of America,
Inc., a wholly-owned subsidiary of Herbalife International, Inc. (“Complainant”), represented by Susan
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <herbalifeinternational.com>, registered
with Godaddy.com,
Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 8, 2008; the
National Arbitration Forum received a hard copy of the Complaint on August 11, 2008.
On
On August 14, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 3, 2008 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@herbalifeinternational.com
by e-mail.
A timely Response was received and determined to be complete on
An Additional Submission was received from Complainant on
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant, Herbalife International of America, Inc., is the
wholly-owned subsidiary of Herbalife International, Inc., whose predecessor
first began using the mark HERBALIFE in commerce in 1980. Complainant has established rights in the HERBALIFE mark (Reg. No. 1,254,211
issued Oct. 18, 1983 by the United States Patent and Trademark Office
(“USPTO”)). Complainant is involved in
the manufacture and sale of nutritional supplements to the general public.
Complainant contends that the domain name is confusingly similar to its
HERBALIFE mark because it wholly incorporates the mark and adds the word
“international” and the top-level domain indicator “.com.” Complainant contends that Respondent has no
rights or legitimate interests in using the domain name because it is not using
the domain name in connection with a bona
fide offering of goods or services.
According to Complainant, the domain name resolves to a parked web page
that contains links to various sites, some of which offer products that compete
with those offered by Complainant.
Complainant also contends that the domain name was registered and is
being used in bad faith. Complainant
contends that Respondent has offered the domain name for sale for $50,000.00,
well in excess of its out-of-pocket expenses associated with acquiring the
domain name. Complainant also contends
that Respondent has used the domain name with the purpose or effect of
interfering with Complainant’s business by resolving to a website that
advertises and promotes products and services that compete directly with
Complainant’s business.
B.
Respondent
Respondent states that he was a distributor of Herbalife products from
2000-2002. Respondent “reserved” the
domain name to develop and promote his business of selling these products. He discontinued his status as a distributor
with the intention of resuming the sale of Herbalife products at a later
date. Respondent states that he does not
control what links are listed on the site and that Complainant has
misrepresented his purpose for obtaining the domain name. Respondent acknowledges that he has offered
the domain name for sale.
C. Additional Submission
Complainant states that the
distributorship agreement prohibits distributors from using Complainant’s marks
“in domain names (URLs), the titles for any pages within websites … or email
address.” Complainant further argues
that Respondent purposely hid its true identity from Complainant by listing
itself as “K J” in the WHOIS records, and that it would be impossible to have
discovered the past distribution agreement based on these allegedly misleading
records.
FINDINGS
Complainant. Herbalife International of
America, Inc.. is the wholly-owned subsidiary of Herbalife International, Inc.,
whose predecessor first began using the mark HERBALIFE in commerce in
1980. Complainant has established rights in the HERBALIFE mark (Reg. No. 1,254,211
issued Oct. 18, 1983 by the United States Patent and Trademark Office
(“USPTO”)). Respondent
was a distributor of Herbalife products from 2000-2002. Respondent “reserved” the domain name to
develop and promote his business of selling these products. Complainant’s distributorship
agreement prohibits distributors from using Complainant’s marks “in domain
names (URLs), the titles for any pages within websites . . . or email
address.”
DISCUSSION
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.
Complainant has established rights in the HERBALIFE mark (Reg. No. 1,254,211
issued Oct. 18, 1983 by the United States Patent and Trademark Office
(“USPTO”)). Thus, the Panel finds that
Complainant has sufficient rights in the HERBALIFE mark under Policy ¶
4(a)(i).
The Panel agrees with Complainant’s contention that Respondent’s disputed <herbalifeinternational.com>
domain name is confusingly similar to Complainant’s HERBALIFE mark in that
it incorporates Complainant’s entire mark, and adds the generic word
“international” and the generic top-level domain “.com.” Respondent’s disputed domain name fully
incorporates Complainant’s mark with the descriptive term “international” which
describes the geographic reach of Complainant’s business. This descriptive term does not sufficiently
distinguish the domain name from Complainant’s mark. See
American Int’l Group v. Mary Ellen
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant presents a prima facie case in support of these assertions, the burden shifts to Respondent to establish that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case to support its assertions and thus, the burden has shifted to Respondent to show it does have rights or legitimate interests. See Hanna-Barbara Prods., Inc. v. Net’s Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
In considering that the burden has shifted to Respondent to establish its rights to the domain name, the Panel has considered the “contractual” argument made by Respondent. Respondent contends that it was an independent distributor for Complainant during the years 2000-2002. Respondent submits IRS 1099 forms evidencing this fiscal relationship. In that time, Respondent contends, it registered the disputed domain name in order to develop and promote its distributor business. Respondent alleges that it discontinued acting as a distributor for personal reasons, with the intention of potentially restarting at some later date. Respondent then claims to have held the disputed domain name either to resume its distributorship or to sell the domain name to another distributor. Respondent argues that Complainant directly or indirectly permits its independent distributors to use marketing methods and domain names incorporating Complainant’s mark.
As noted below, Complainant has asserted that the distributorship agreement forbids improper use of Complainant’s intellectual property, including use in domain names and corresponding websites. Respondent has not come forward with evidence to respond to this point. Thus, because Respondent has not offered any evidence that it had a contractual right to establish a domain name using Complainant’s mark, the Panel concludes that this is not a case involving competing contractual right in the disputed domain name. See, e.g., Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007).
Complainant asserts that Respondent is not
commonly known by the disputed domain name.
The WHOIS information lists Respondent as “K J.” Thus, the Panel finds that Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA
139720 (Nat. Arb. Forum
The record also supports the contention of Complainant that Respondent’s disputed domain name resolves to a website displaying parked third-party advertisements for Complainant’s direct competitors. The Panel infers that Respondent conducts (or has permitted) this activity in furtherance of commercial gain. Accordingly, the Panel finds that Respondent has not made a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Northwest Free City. 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Complainant asserts that Respondent
is attempting to create an intentional likelihood of confusion with
Complainant’s mark and the disputed domain name for commercial gain. The Panel agrees; thus the Panel finds that Respondent
engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv)
where the respondent was diverting Internet users searching for the complainant
to its own website and likely profiting); see
also University of Houston Sys. v.
Salvia Corp., FA 637920 (Nat. Arb. Forum Mar.
21, 2006) (“Respondent is using the
disputed domain name to operate a website which features links to competing and
non-competing commercial websites from which Respondent presumably receives
referral fees. Such use for
Respondent’s own commercial gain is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv).”).
Complainant asserts that Respondent was not allowed to register the disputed domain name bearing Complainant’s mark in accordance with its distributor agreement. The record supports this contention. This is another reason for finding that Respondent engaged in bad faith registration and use under Policy ¶ 4(a)(iii). See Procter & Gamble Co. v. Hlad, FA 126656 (Nat. Arb. Forum Nov. 20, 2002) (finding that the disputed domain name was registered and used in bad faith where the respondent, a distributor of the complainant’s products who was not a licensee of the complainant, used the complainant’s mark in its domain name, suggesting a broader relationship with the complainant and fostering the inference that the respondent was the creator of the complainant’s products rather than a mere distributor).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <herbalifeinternational.com> domain
name be TRANSFERRED from Respondent to Complainant.
Dated: September 24, 2008
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