IHERB, INC., a California corporation v. subaru Tanaka
Claim Number: FA1411001588432
Complainant is IHERB, INC., a California corporation (“Complainant”), represented by C.G. Gordon Martin of The Law Offices of C. G. Gordon Martin, California, USA. Respondent is subaru Tanaka (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iherbmart.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 4, 2014; the National Arbitration Forum received payment on November 4, 2014.
On November 5, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <iherbmart.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 November 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 2014 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@iherbmart.com. Also on November 5, 2014, 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 December 5, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information
Complainant has used the trademark IHERB and variants continuously in commerce since January 1997 on and in conjunction with its online retail store services at www.iherb.com, featuring nutritional supplements, namely vitamins, minerals, herbs, organic foods, essential fatty acids, amino acids, homeopathic treatment products, aroma therapeutic treatment products, sports and athletic supplements, fish oil, oils from plants, enzymes, sweeteners and antioxidants. In addition, Complainant has used the mark IHERB and variants since 1999 on and in conjunction with its online retail store services featuring personal care products and a wide range of other products, including food and other items one might find in a grocery store. At the present time, Complainant sells over 35,000 different products through its website www.iherb.com.
Complainant also has used the trademark IHERB.COM TRUSTED BRANDS. HEALTHY REWARDS. (Stylized) continuously in commerce since January 21, 2013 on and in conjunction with its online retail store services through its website www.iherb.com. The phrase “Trusted Brands. Healthy Rewards.” was added as part of a new logo for the site. As a result, at the present time both the IHERB.COM TRUSTED BRANDS. HEALTHY REWARDS. (Stylized) trademark and the TRUSTED. BRANDS. HEALTHY REWARDS. trademark are used in connection with the sale of the same products as Complainant’s mark IHERB.
Complainant owns the Internet domain names http://www.iherb.com, http://www.ihyerb.net, http://wwwiherb.biz, and http://www.iherb.us. Complainant has used the domain name iherb.com since 1997.
Complainant also owns http://kr.iherb.com and www.iherb.kr. Complainant sells products on both of these sites, which are in Korean and which are directed to purchasers in Korea as well as Korean-speaking purchasers in other countries, including the United States.
In addition, Complainant owns the following United States trademark registrations:
Mark: IHERB
Registration No.: 4,322,990
Registration Date: April 23, 2013
Application Date: February 14, 2012
Mark: IHERB
Registration No.: 3,134,787
Registration Date: August 29, 2006
Application Date: August 16, 2005
Mark: iHerb.com Trusted Brands. Healthy Rewards. (Stylized)
Registration No.: 4,383,545
Registration Date: August 13, 2013
Application Date: December 10, 2012
Mark: Trusted Brands. Healthy Rewards.
Registration No.: 4,372,135
Registration Date: July 23, 2013
Application Date: December 10, 2012
In addition, Complainant owns trademark registrations or pending registrations in the following countries other than the United States:
Mark: IHERB
Country: South Korea
Application No.: 4120130034365
Application Date: September 2, 2013
Mark: IHERB
Country: Canada
Registration No.: TMA741428
Registration Date: June 4, 2009
Application Date: February 28, 2008
Mark: IHERB
Country: Australia
Application No.: 1577565
Application Date: August 29, 2013
Mark: iHerb (Stylized)
Country: China
Reg. No./or App. No.: 6608501
Registration Date: August 28, 2010
Mark: iHerb
Country: Singapore
Registration No.: N/A
Registration Date: N/A
Application No.: T1313435H
Application Date: August 20, 2013
Mark: iHerb
Country: Taiwan
Registration No.: 1347323
Registration Date: January 16, 2009
Application No.: 097013319
Application Date: March 25, 2008
Mark: iHerb (Stylized)
Country: European Union Community Trademark
(Covers All 28 Member Countries)
Registration No.: 006 999 643
Registration Date: June 9, 2009
Application Date: May 29, 2008
Mark: IHERB
Country: New Zealand
Registration No.: 983625
Registration Date: March 4, 2014
Application No.: 983625
Application Date: August 29, 2013
Mark: iHerb (Stylized)
Country: Russia
Registration No.: N/A
Registration Date: N/A
Application No.: 2013735364
Application Date: October 15, 2013
Mark: IHERB and iHerb
Country: Hong Kong
Registration No.: N/A (Published for Opposition)
Registration Date: N/A
Application No.: 302710322
Application Date: August 20, 2013
Mark: iHerb (Stylized)
Country: Brazil
Registration No.: N/A
Registration Date: N/A
Application No.: 840637586
Application Date: September 10, 2013
Mark: iHerb.com (Standard Characters)
Country: Japan
Registration No.: N/A
Registration Date: N/A
Application No.: 2013-067594
Application Date: August 30, 2013
Complainant’s trademark and domain name rights are collectively referred to herein as the “IHERB Trademarks.”
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
A. BACKGROUND
1. Complainant’s History and Largest Market (Korea)
Complainant is a California corporation formed on November 15, 2001. The iherb.com website was launched in 1997 by the corporation’s founder and predecessor in interest, Reza Faraee, who is the sole shareholder of Complainant. He is also its President and also serves as a member of the Board of Directors. Kenneith V. Rose II is the Chief Financial Officer of Complainant and also serves on the Board of Directors. Complainant operates its online retail store though Complainant’s website, iherb.com and sells nutritional supplements and other healthy products both domestically and internationally. Complainant ships its products within the United States and to over 150 countries including Korea, China, Canada, Australia, Japan, Singapore, Russia, Norway and Finland.
More important to the present dispute, Complainant’s largest market is Korea—not the United States, as one might expect for a U. S. based company. In fact, Complainant has a version of its website translated into Korean which includes a translation of the TRUSTED. BRANDS. HEALTHY REWARDS. logo into Korean. As more fully described below, examination of Respondent’s website plainly shows that Respondent intentionally copied the look and feel of Complainant’s website, including the green color of Respondent’s iherbmart logo and its placement in the same upper-left corner of the page to appeal to the same Korean customers as Complainant’s Korean website.
Complainant is the owner of the IHERB Trademarks and is the registrant on the federal registrations and foreign registrations thereof. Complainant is the applicant in those countries where registrations have not yet issued. In order to protect its brands, Complainant has established trademark rights in the IHERB Trademarks both through its United States and international trademark registrations and through long-term and continuous use in commerce of the IHERB trademark since as early as 1997. The marks IHERB.COM TRUSTED BRANDS. HEALTHY REWARDS. (Stylized) and TRUSTED BRANDS. HEALTHY REWARDS. were added to Complainant’s website in early 2013 and are an important part of Complainant’s marketing efforts. Complainant’s long-term and continuous use of the IHERB Trademarks has developed the mark IHERB and IHERB.COM TRUSTED BRANDS. HEALTHY REWARDS. into symbols of excellence and quality for Complainant’s services. The IHERB Trademarks have become famous trademarks in connection with the online retail sale of vitamins, nutritional supplements and a wide range of other products.
On July 29, 1997 Complainant registered the domain name iherb.com and has been using it continuously ever since.
2. Prior National Arbitration Forum Decision in Favor of Complainant on Substantially Similar Facts
The facts and legal issues in the present case are substantially similar to those in iHerb, Inc. v. Emma Hong, FA 1404001553252 (Nat. Arb. Forum May 7, 2014). In Hong, the arbitrator ordered that the domain i-iherb.com be transferred to Complainant. As in the present case, the infringing website in Hong, also in Korean, sold substantially similar products to those sold on Complainant’s website, including the Korean version of Complainant’s website.
B. THE DISPUTED DOMAIN NAME IHERBMART.COM IS VIRTUALLY IDENTICAL TO OR CONFUSINGLY SIMILAR TO COMPLAINANT’S IHERB.COM TRADEMARK.
The disputed domain name iherbmart.com registered on August 23, 2011 contains Complainant’s trademark IHERB in its entirety with the sole addition of the highly descriptive word “mart”, and thus is confusingly similar to the IHERB Trademarks on its face, both visually and aurally.
The addition of the highly descriptive word “mart” to Complainant’s mark is not sufficient to distinguish Respondent’s disputed domain name from Complainant’s mark pursuant to Policy ¶4(a)(i). See Moosejaw Mountaineering and Backcountry Travel, Inc. v. Texas International Property Associates, FA 1153693 (Nat. Arb. Forum May 5, 2008) (finding that the <moosejawmountaineering.com> domain name is confusingly similar to Complainant’s MOOSEJAW MOUNTAINEERING AND BACKCOUNTRY TRAVEL mark); Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). The Respondent’s minimal “mart” addition is even more indistinguishable from the Complainant’s mark than in the above referenced cases.
Further, the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to a Policy ¶4(a)(i) analysis because a top-level domain is a required element of every domain name. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[T]he addition of the generic top-level domain (gTLD) Name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶4(a)(i) analysis.”); Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Notwithstanding that the addition of the generic top-level domain “.com” is not relevant, the IHERB Trademarks notably do contain “iHerb.com” as an element of one of the trademarks: Respondent cannot argue its use of “.com” distinguishes Respondent’s use from Complainant’s use and trademarks.
Accordingly, Respondent’s iherbmart.com domain name is confusingly similar to Complainant’s IHERB Trademarks and iherb.com domain name under Policy ¶4(a)(i).
C. RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTEREST WITH RESPECT TO THE IHERBMART.COM DOMAIN NAME.
Respondent has no rights or legitimate interests with respect to iherbmart.com domain name. Respondent is not a licensee of Complainant and has not otherwise been authorized by Complainant to use any of the IHERB Trademarks, or any variation thereof. Respondent is not currently known by the disputed domain name (Policy ¶4(c)(ii)).
Respondent is using a nearly identical domain name in connection with its website advertising of an identical business, being online retail store services featuring identical or virtually identical categories of products such as nutritional supplements, vitamins, minerals, herbs, sports and athletic supplements, and many other categories of products. Respondent’s actions are designed to cause, and are likely to cause consumer confusion, which is an infringement of Complainant’s trademark rights. This competitive use of the infringing domain name does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use. It is trademark infringement, unfair competition, and bad faith misuse of a domain name. Respondent’s use further tarnishes and dilutes Complainant’s marks. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
1. Complainant’s Long Term Use of the Domain iherb.com
The Complainant’s prior rights in the domain name long precede the Respondent’s registration by at over 14 years. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000).
The Complainant has been using its iherb.com domain name since 1997. This long term continuous use in connection with the trademarks and goods and services has established legitimate and bona fide use and has built a solid and strong reputation of Complainant in the industry. Complainant’s business is primarily conducted through the Internet. Complainant’s largest customer base is in Korea.
In contrast, the Respondent did not register the disputed domain name iherbmart.com until in August of 2011, and began using it sometime thereafter. Respondent’s use is very recent and is subsequent to Complainant’s long-established use by nearly two decades.
2. Respondent’s Copying of the Look and Feel of Complainant’s Website in Connection with the Confusingly Similar Domain Name
Respondent’s website is in the Korean language. Complainant also has a version of its website at the domain name iherb.com in Korean.
Respondent is attempting to capitalize on the fact that Complainant’s primary customer base is in Korea. There is a likelihood of consumer confusion because Respondent’s website looks like the Korean language version of Complainant’s website. This is highlighted by the fact the layout, look, and feel of the two websites are extremely similar. For example:
(a) The placement of Respondent’s iherbmart logo is in the upper left corner of the page, in the same location as iHerb’s.
(b) The “iHERB” portion of the name is separated from the word “MART” and is dominant. This highlights “iHERB” and diminishes the “MART”—a word that is descriptive in any event. This separation and emphasis on iHERB creates a strong likelihood of customer confusion.
(c) The “i” in “iHERB” is lower case, just as in iHerb’s mark.
(d) The green color of HERB is essentially the same color as that used on iHerb’s website. That the “i” is in blue does virtually nothing to distinguish the marks.
(e) The translation of the Korean text at the top of each page includes “Dietary Supplement, Functional Cosmetics, Vitamin, Herbal, Diabetes, Obesity” all of which types of products are sold on iHerb’s website.
Respondent profits by use of the virtually identical and confusingly similar domain name because Complainant’s primary customer base is in Korea. As shown above, Respondent’s website iherbmart.com appears to be a Korean language version of Complainant’s iherb.com website with similar look and feel. This misappropriation is even more pronounced when Respondent’s website is compared with the Korean version of Complainant’s website, which makes confusion even more likely. Therefore the offending domain name is likely to cause confusion, to cause mistake, and to deceive as to the affiliation, connection, or association of Respondent with Complainant. Complainant is informed and believes that customers from its primary market are being confused and diverted into purchasing products from the Respondent. Such diversion of customers and trading on the good will and reputation of another business is not a bona fide offering of goods or services under Policy ¶4(c)(i) and is not a legitimate non-commercial or fair use under Policy ¶4(c)(iii). See Univision Communications v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007).
Accordingly, Respondent has no rights or legitimate interest in respect of the domain name under Policy ¶4(a)(ii).
D. RESPONDENT REGISTERED AND USES THE OFFENDING DOMAIN NAME IHERBMART.COM IN BAD FAITH.
Respondent registered the domain name iherbmart.com over 14 years after Complainant. The Respondent’s domain name is nearly identical to Complainant’s, with only one word added in a manner that is visually and aurally substantially similar and highly confusing. Respondent uses the disputed domain name for a website that is nearly identical in format, look, and feel to sell similar and even identical products to the same customer base. In particular, Respondent’s website appears to be designed to look like a Korean language translation of Complainant’s website, as well as to look like Complainant’s Korean version of Complainant’s website. Korea is the largest market for Complainant. In addition, Korean-speaking customers of Complainant in the U. S. and countries other than Korea are likely to use the Korean version of Complainant’s website. These customers would almost certainly be confused if they instead somehow landed on Respondent’s website, also in Korean, instead of Complainant’s website.
Respondent has clearly chosen to register a deceptively similar domain name in bad faith as part of a concerted effort to divert business to itself from Complainant by consumer confusion. This is a blatant and intentional trademark infringement, unfair competition, and misuse of a domain name registration. Respondent’s registration of a domain name which is confusingly similar to Complainant’s trademark benefits those who would compete with Complainant, and is likely to divert Internet users seeking Complainant’s goods and services for Respondent’s own commercial gain.
Respondent’s actions represent a desire to confuse Internet users that are searching for the Complainant’s website. Respondent’s presumable purpose for causing such confusion is to extract profit from the traffic thus generated. This is a use in bad faith and is evidence of bad faith registration pursuant to Policy ¶4(b)(iv), which states: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” See Univ. 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‑completing 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). Since Respondent is using a domain name which is virtually identical to Complainant’s mark, Internet users may become confused as to Complainant’s sponsorship or affiliation with the resulting website, further evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”) (Internal citations omitted.)
Finally, it is proper to infer that Respondent registered the iherbmart domain name with actual knowledge of Complainant’s rights in the mark due to the clear connection between the products sold on Respondent’s website and those sold on Complainant’s website. “Registration of a domain name featuring another’s mark, despite actual or constructive knowledge of another’s rights in the mark, is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii).” Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005).
Accordingly, for the reasons set forth above, Respondent’s domain name has been registered and is being used in bad faith under Policy ¶4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order transferring or cancelling a domain name:
(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(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.”).
Complainant uses the IHERB mark in connection with its sales of nutritional supplements and other health products, both within the United States and in other countries. Complainant owns the IHERB mark through its trademark registrations with the United State Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,134,187, registered August 29, 2006). Complainant has also either registered or applied to register its mark in some dozen other countries (including the European Union). Such registrations are sufficient to establish rights in the IHERB mark pursuant to Policy ¶4(a)(i) requirements, even though Respondent resides in Japan. At this stage of the proceeding, all Complainant need show is it has SOME rights, not that Complainant’s rights are superior to any rights Respondent might have. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”). Complainant’s USPTO registration satisfies the requirements of Policy ¶4(a)(i).
Complainant claims the <iherbmart.com> domain name is confusingly similar to Complainant’s IHERB mark because Respondent has simply added the generic term “mart” to the mark. The disputed domain name also differs from the mark by adding a generic top-level domain (“gTLD”) “.com.” Such additions are required by domain name syntax, so they are ignored for the purposes of a Policy ¶4(a)(i) analysis. When a domain name differs from a mark only because a related generic term has been added, it remains confusingly similar to Complainant’s mark under a Policy ¶4(a)(i) analysis. See Mead Johnson & Company, LLC v. Chau, FA 1497581 (Nat. Arb. Forum Jun. 18, 2013) (concluding that the addition of the generic term “coupons” and a gTLD did not remove the disputed domain name from the realm of confusing similarity). Respondent’s <iherbmart.com> domain name is confusingly similar to Complainant’s IHERB mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. 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 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.”).
Complainant claims Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <iherbmart.com> domain name. The WHOIS information identifies “Subaru Tanaka” as the registrant of the disputed domain name. Complainant has neither licensed nor authorized Respondent to use the IHERB mark. Given the lack of evidence to the contrary in the record, it seems clear Respondent is not commonly known by the <iherbmart.com> domain name under a Policy ¶4(c)(ii) analysis. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant claims Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Respondent uses the disputed domain name to pass itself off as Complainant. Respondent uses similar logo on its web site and sells the same kind of products. The layout of the websites is similar, suggesting Respondent is trying to pass itself off as Complainant. The single distinguishing phrase in the disputed domain (the “mart” part) is placed below the balance of the disputed domain name, making it look rather similar to Complainant’s domain name. When all of these factors are put together, the two websites are very similar and would cause confusion to Internet users. When a respondent is attempting to pass itself off as the complainant by using a confusingly similar website, that respondent is not providing a bona fide offering of goods or services, or making a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(i) and Policy ¶4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Therefore, Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the <iherbmart.com> domain name in bad faith pursuant to Policy ¶4(a)(iii). Respondent uses the disputed domain name to intentionally divert Internet users to its own website for commercial gain. Respondent relies upon visitors being confused when they visit Respondent’s similar website. Respondent expects such visitors will patronize its website before realizing it isn’t Complainant’s website. Generally, diverting Internet users to a respondent’s own website based on the confusing similarity between the respondent’s website and the complainant’s website adequately demonstrates bad faith under Policy ¶4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). Applying this principal to these facts, Respondent has registered and uses the disputed domain name in violation of Policy ¶4(b)(iv).
Complainant claims Respondent uses the similarities between Respondent’s website and Complainant’s Korean website to pass itself off as Complainant. While the Panel is not fluent in Korean, the evidence seems to support this claim and Korea is one of Complainant’s important markets. Respondent does not dispute this claim. This amounts to bad faith registration and use under Policy ¶4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). Therefore, Respondent’s attempt to pass itself off as Complainant adequately demonstrates bad faith under Policy ¶4(a)(iii).
Complainant claims Respondent must have had actual knowledge of Complainant’s rights in the mark due to the obvious similarities between the products on Respondent’s website and Complainant’s business. This Panel believes the similarity between the mark and the disputed domain name is more than coincidental. Respondent must have had actual knowledge of the Complainant’s mark. Based upon this reasonable inference, Respondent registered the disputed domain name in bad faith under Policy ¶4(a)(iii) to disrupt a competitor’s business. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name")
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <iherbmart.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, December 22, 2014
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