Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. v. NA, Na c/o Digi Real Estate Foundation
Claim Number: FA0905001264652
Complainant is Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. (“Complainant”), represented by Susan
Hwang, California, USA.
Respondent is NA, Na c/o Digi Real Estate Foundation (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <herbalfe.com>, registered with Moniker Online Services, Inc.
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
On
On June 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 22, 2009 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@herbalfe.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <herbalfe.com> domain name is confusingly similar to Complainant’s HERBALIFE mark.
2. Respondent does not have any rights or legitimate interests in the <herbalfe.com> domain name.
3. Respondent registered and used the <herbalfe.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Herbalife International of America, Inc., is a
leader in producing and marketing nutritional foods and dietary
supplements. Complainant owns a number
of trademark registrations with the United States Patent and Trademark Office
(“USPTO”) for the HERBALIFE mark (i.e. Reg. No. 1,969,346 issued
Respondent registered the <herbalfe.com> domain name on
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 has established rights in
the HERBALIFE mark for purposes of Policy ¶ 4(a)(i)
through its trademark registration with the USPTO. See
AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding
that where the complainant had submitted evidence of its registration with the
USPTO, “such evidence establishes complainant’s rights in the mark pursuant to
Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that
the mark be registered in the country in which the respondent operates;
therefore it is sufficient that the complainant can demonstrate a mark in some
jurisdiction).
Complainant argues that
Respondent’s <herbalfe.com> domain name is confusingly
similar to Complainant’s HERBALIFE mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains a
mispelled version of Complainant’s mark and adds the generic top-level domain
(“gTLD”) “.com.” The Panel finds that a
disputed domain that contains a mispelled version of a complainant’s mark,
especially when the mark is mispelled by only one letter, creates a confusing
similarity between the disputed domain name and the complainant’s mark. See Pfizer Inc.
v. BargainName.com, D2005-0299 (WIPO
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the <herbalfe.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions. See Hanna-Barbera Prods., Inc. v. Entm’t 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 Policy ¶ 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 Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”).
Respondent’s WHOIS registration is evidence that Respondent
is not commonly known by the <herbalfe.com>
domain name, in that the registrant is listed as “NA, Na c/o Digi Real Estate
Foundation.” Without further evidence to
the contrary, the Panel finds that Respondent is not commonly known by the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum
July 7, 2006) (concluding that the respondent was not commonly known by the
disputed domain names where the WHOIS information, as well as all other
information in the record, gave no indication that the respondent was commonly
known by the disputed domain names, and the complainant had not authorized the
respondent to register a domain name containing its registered mark); see also
Respondent is using the <herbalfe.com> domain name to display links advertising third-party websites, some of which are in competition with Complainant. The Panel infers that Respondent is using the disputed domain name to earn click-through fees, and thus 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 Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent’s registration and use of the <herbalfe.com> domain name to display third-party links to Complainant’s competitors on the resolving website constitutes a disruption of Complainant’s business. The Panel finds that Respondent use of the disputed domain name qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Respondent’s use of the <herbalfe.com>
domain name
in order to intentionally attract Internet users to its website by creating a
strong possiblity of confusion with Complainant’s HERBALIFE mark and offering
links to competing websites is further evidence of bad faith. The Panel infers that Respondent receives
click-through fees for diverting Internet users to such websites. Therefore, pursuant to Policy ¶ 4(b)(iv), the
Panel finds such use of the disputed domain name constitutes bad faith
registration and use. See Velv, LLC v. AAE, FA
677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the
<arizonashuttle.net> domain name, which contained the complainant’s
ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website
offering competing travel services violated Policy ¶ 4(b)(iv)); see also
The Panel finds that ¶ 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 <herbalfe.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 30, 2009
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