Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. v. Amorin Abogados
Claim Number: FA1109001408503
Complainant is Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. (“Complainant”), represented by Susan Hwang, California, USA. Respondent is Amorin Abogados (“Respondent”), Uruguay.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <herbalifeuruguay.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that she 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 September 21, 2011; the National Arbitration Forum received payment September 21, 2011.
On September 21, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <herbalifeuruguay.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third-parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 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@herbalifeuruguay.com. Also on September 22, 2011, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 19, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit 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" 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.
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, <herbalifeuruguay.com>, is confusingly similar to Complainant’s HERBALIFE mark.
2. Respondent has no rights to or legitimate interests in the <herbalifeuruguay.com> domain name.
3. Respondent registered and used the <herbalifeuruguay.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., develops, manufactures, promotes, distributes, and sells weight loss products, nutritional and personal care products, and other products under the HERBALIFE mark. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its HERBALIFE mark (e.g., Reg. No. 1,254,211 registered October 18, 1983).
Respondent, Amorin Abogados, registered the disputed domain name June 17, 2011. The disputed domain name resolves to a website that contains hyperlinks to third-party websites that sell Complainant’s products and the products of Complainant’s competitors. Respondent also advertises the disputed domain name for sale.
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."
Given 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.
Complainant owns multiple trademark registrations with the USPTO for its HERBALIFE mark (e.g., Reg. No. 1,254,211 registered October 18, 1983). A trademark registration with a national trademark authority establishes rights in a mark under a Policy ¶ 4(a)(i) analysis. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005), and AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006). A complainant is not required to register a mark within the country where a respondent resides or operates. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), and Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007). Therefore, Based the Panel finds that Complainant holds Policy ¶ 4(a)(i) rights in its HERBALIFE mark.
Complainant urges that Respondent’s <herbalifeuruguay.com> domain name is confusingly similar to Complainant’s HERBALIFE mark. Complainant alleges that the additions of the geographic term “uruguay” and the generic top-level domain (“gTLD”) “.com” fail to differentiate the disputed domain name from Complainant’s HERBALIFE mark. Addition of a geographic term fails to remove a disputed domain name from the realm of confusing similarity. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006), and Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002). Similarly, addition of a gTLD is inconsequential to a Policy ¶ 4(a)(i) analysis because a top-level domain is required in a domain name. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007), and Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007). This Panel finds that Respondent’s <herbalifeuruguay.com> domain name is confusingly similar to Complainant’s HERBALIFE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleged that Respondent does not have any rights or legitimate interests in the <herbalifeuruguay.com> domain name. Once Complainant makes a prima facie case to support its allegations, the burden of proof shifts to Respondent to show that it does have such rights or interests under a Policy ¶ 4(a)(ii) evaluation. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006). The Panel finds that Complainant made a prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. However, this Panel still examines the record to determine whether the evidence suggests that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <herbalifeuruguay.com> domain name. The WHOIS information identifies “Amorin Abogados” as the registrant of the disputed domain name, which Complainant points out is not similar to the <herbalifeuruguay.com> domain name. In Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), and Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001), the panels concluded that a respondent is not commonly known by a disputed domain name if the WHOIS information does not indicate such a fact. Thus, the Panel finds that Respondent is not commonly known by the <herbalifeuruguay.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant alleges that Respondent’s <herbalifeuruguay.com> domain name resolves to a website that contains hyperlinks to third-parties that sell and advertise nutritional, health, and herbal products, including Complainant’s products and the products of Complainant’s competitors. Complainant’s screen shot of the resolving website supports Complainant’s contentions. Complainant asserts that Respondent receives click-through fees from the hyperlinks. In Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), and Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), the panels found that a respondent did not establish rights and legitimate interests in a disputed domain name under Policy ¶¶ 4(c)(i) and (iii) when the website contained competing hyperlinks. The Panel finds that Respondent has not shown rights by making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <herbalifeuruguay.com> domain name.
Complainant claims as well that Respondent is attempting to sell the <herbalifeuruguay.com> domain name. Complainant asserts that the resolving website states: “Want to buy this domain?” Complainant’s screen shots support this assertion. In Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003), and Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000), the panels determined that a general offer to sell does not establish rights in a domain name under Policy ¶ 4(a)(ii). Consistent with these prior holdings, the Panel here concludes that Respondent’s offer to sell the disputed domain name reveals a lack of rights or legitimate interests under Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant also asserts that Respondent registered and used the disputed domain name in bad faith. Complainant sets out that Respondent’s resolving website contains a general offer to sell the <herbalifeuruguay.com> domain name. In Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000), and Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the panels found that such an offer to sell is evidence of bad faith registration and use under Policy ¶ 4(b)(i). Thus, the Panel finds that Respondent registered and uses the <herbalifeuruguay.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i).
Complainant claims that Respondent is disrupting Complainant’s business by providing hyperlinks to Complainant’s competitors. In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), and Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), the panels held that the hosting of competing hyperlinks is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). The Panel finds accordingly as to the registration and use of the <herbalifeuruguay.com> domain name.
Complainant also asserts that Respondent’s registration and use of the <herbalifeuruguay.com> domain name is an attempt to profit from Internet confusion as to Complainant’s affiliation with the resolving website. In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), and BPI Commc’ns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002), the panels determined that the registration and use of a confusingly similar domain name to host competing hyperlinks evidenced bad faith registration and use under Policy ¶ 4(b)(iv). Therefore, the Panel finds that Respondent registered and uses the <herbalifeuruguay.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <herbalifeuruguay.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 26, 2011.
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