Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. v. Noori net
Claim Number: FA1102001372476
Complainant is Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. (“Complainant”), represented by Susan Hwang of Sheppard, Mullin, Richter & Hampton LLP, California, USA. Respondent is Noori net (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <herbalife24.com>, registered with KOREA INFORMATION CERTIFICATE AUTHORITY INC d/b/a DOMAINCA.COM.
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 Yachnnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 10, 2011; the National Arbitration Forum received payment on February 10, 2011. The Complaint was submitted in both Korean and English.
On February 14, 2011, KOREA INFORMATION CERTIFICATE AUTHORITY INC d/b/a DOMAINCA.COM confirmed by e-mail to the National Arbitration Forum that the <herbalife24.com> domain name is registered with KOREA INFORMATION CERTIFICATE AUTHORITY INC d/b/a DOMAINCA.COM and that Respondent is the current registrant of the name. KOREA INFORMATION CERTIFICATE AUTHORITY INC d/b/a DOMAINCA.COM has verified that Respondent is bound by the KOREA INFORMATION CERTIFICATE AUTHORITY INC d/b/a DOMAINCA.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 February 18, 2011, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of March 10, 2011 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@herbalife24.com. Also on February 18, 2011, the Korean language Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 17, 2011 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" 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 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <herbalife24.com> domain name is confusingly similar to Complainant’s mark.
2. Respondent does not have any rights or legitimate interests in the <herbalife24.com> domain name.
3. Respondent registered and used the <herbalife24.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc., is a supplier of dietary products ranging from vitamins and minerals to protein tablets and powder. Complainant operates its business under the HERBALIFE mark which is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,254,211 issued October 18, 1983).
Respondent, Noori net, registered the <herbalife24.com> domain name on September 29, 2009. The disputed domain name resolves to a website that offers to sell the disputed domain name. Additionally, the domain name features sponsored listings to the websites of Complainant’s competitors in the herbal products industry.
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.
Complainant contends that it has established rights in the HERBALIFE mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g., Reg. No. 1,254,211 issued October 18, 1983). The Panel finds that Complainant has established rights based on its registration of the mark with a federal trademark authority. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant alleges that the <herbalife24.com> domain name is confusingly similar to the HERBALIFE mark because the disputed domain name contains Complainant’s entire mark with the additions of the number “24” and the generic top-level domain (“gTLD”) “.com.” Complainant contends that these additions to the HERBALIFE are insufficient to render the <herbalife24.com> domain name distinct from Complainant’s mark. The Panel agrees with Complainant’s allegations and finds that Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent does not have rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Complainant’s burden requires that a prima facie showing be made in support of this allegation. Once Complainant has satisfied its burden, the burden of proof then transfers to Respondent in order to show that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie showing and due to Respondent’s failure to respond to these proceedings, the Panel finds that it may assume that the allegations made by Complainant are true unless clearly contradicted by the evidence contained in the record, which the Panel will analyze under ¶ 4(c) of the Policy. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also 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.”).
Complainant alleges that Respondent is not commonly known by the disputed domain name and that Respondent never received authorization to use Complainant’s mark. The Panel can find no evidence that would support a finding for Respondent, and upon consideration of the WHOIS information, which lists the registrant as “Noori net,” the Panel concludes that Respondent is not commonly known by the <herbalife24.com> domain name under 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant further alleges that the website resolving from the <herbalife24.com> domain name includes sponsored listings to the websites of Complainant’s competitors in the sale and distribution of dietary products and supplements. Complainant alleges that Respondent’s posting of hyperlinks to these websites generates profit for Respondent via click-through fees. The Panel finds that such use of the disputed domain name 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). See Bank of Am. Corp. v. Nw. Free Cmty. 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 Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
Complainant contends, under Policy ¶ 4(a)(ii), that the <herbalife24.com> domain name resolves to a website offering to sell the disputed domain name. The evidence submitted by Complainant shows that the domain name resolves to a website that displays a hyperlink stating, “Buy this domain.” When an Internet user clicks on the hyperlink, a new window appears stating that “<herbalife24.com> is for sale” and to “Make Offer – Your Offer.” Complainant alleges that using the disputed domain name to redirect Internet users to a website offering to sell the domain name is evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel agrees with Complainant’s contentions. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that the disputed domain name resolves to a website advertising that the domain name is for sale, and that such is evidence of bad faith registration and use. The Panel finds that Respondent’s general offer to sell the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Complainant alleges that Respondent uses the disputed domain name and resolving website to post links to websites that compete with Complainant in the dietary supplement industry. Internet users interested in purchasing Complainant’s dietary products may be confused by Respondent’s hyperlinks and end up purchasing similar products from Complainant’s competitors. The Panel finds that such use disrupts Complainant’s business, which is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Lastly, Complainant alleges that Respondent generates revenue via click-through fees from the hyperlinks posted on the website resolving from the <herbalife24.com> domain name. Internet users are easily misled by Respondent’s domain name and are confused as to Complainant’s sponsorship of, and affiliation with, the disputed domain name, resolving website and posted hyperlinks. Respondent benefits from this confusion by the receipt of click-through fees which leads the Panel to find, pursuant to Policy ¶ 4(b)(iv), that Respondent has engaged in bad faith registration and use of the disputed domain name. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
The Panel finds that Policy ¶ 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 <herbalife24.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March 23, 2011
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