iHerb, Inc. v. nathan hatter / blackonomics global trust group
Claim Number: FA1710001754609
Complainant is iHerb, Inc. (“Complainant”), represented by Margaret A. Hosking of Best Best & Krieger, LLP, California, USA. Respondent is nathan hatter / blackonomics global trust group (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iherbfarm.com>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 19, 2017; the Forum received payment on October 19, 2017.
On October 23, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <iherbfarm.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 October 23, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 2017 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@iherbfarm.com. Also on October 23, 2017, 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.
A timely Response was received and determined to be complete on November 10, 2017.
On November 14, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, iHerb, Inc., has operated an online retail store featuring nutritional supplements, herbal products, and personal care products since 1997. Complainant uses its IHERB mark to promote its goods and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,134,787, Aug. 29, 2006). See Compl. Ex. D. Respondent’s <iherbfarm.com> domain name is confusingly similar to Complainant’s mark because it fully incorporates the mark and appends the generic term “farm” along with the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent to use its mark in any fashion, and Respondent is not commonly known by the disputed domain name. Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the <iherbfarm.com> domain name resolves to a website that purports to sell illegal cannabis products while employing a similar layout as Complainant’s <iherb.com> domain. See Compl. Ex. F & G (Screenshots of Complainant’s website and screenshots of Respondent’s website).
Respondent registered and is using the <iherbfarm.com> domain name in bad faith. Respondent registered the domain name for the primary purpose of selling it to Complainant at an excessive cost. See Compl. Ex. I (email correspondence between Respondent and Complainant). Respondent also uses the domain name to divert Internet users from Complainant’s website to Respondent’s website and purports to sell illegal drugs. See Compl. Ex. G. Respondent attempts to attract Internet traffic and commercially benefit from the goodwill of the iHerb.com mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant. Moreover, it is proper to infer that Respondent had actual or constructive knowledge of Complainant’s rights in the IHERB mark by registering a domain name featuring Complainant’s mark.
B. Respondent
Respondent filed a Response, but it consisted solely of a copy of the Complaint which thus repeated Complainant’s arguments that it had made out all three of the elements that it had to prove.
Respondent also sent a number of emails to the FORUM, purporting to come from ”blackeconomics” expressing its, Respondent’s, attitude to the proceeding. It is not proposed to set out in detail the contents of those emails, but the substance of Respondent’s argument is that:
(a) Respondent is “not in same business” as Complainant as “we’ve never sold supplements of any kind”;
(b) “…our fee schedule is as following to answer any litigation will cost your company you represent a half a million ( 500,000) USD per litigation”;
(c) Customers would not be confused;
(d) Respondent is “not into supplements our company is into hemp, hemp textile and other plants that can be used for textile…”;
(e) Respondent’s logo “is not no way similar to their logo and this our intellectual property”. Complainant is trying to hijack and steal Respondent’s domain name and logo;
(f) Respondent “knew nothing about this company”;
(g) In an email from ggrant @kiungpowwrcompany.net on October 9, 2017 and therefore presumably on behalf of the then Registrant, prior to Respondent becoming the registrant of the domain name, “So again if you would like to compensate us for the website we will have no problem with allowing you to buy is iHerbFarm.com from us but we will not be transferring over our product for free.”
The Panel has taken the content of those emails into consideration in reaching its conclusions.
FINDINGS
1. Complainant is a United States company engaged in an online retail store business featuring nutritional supplements, herbal products, and personal care products.
2. Complainant uses its IHERB mark to promote its goods and services and has established rights in the mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,134,787, Aug. 29, 2006).
3. As at October 9, 2017, the Registrant of the disputed domain name was Shadejaribu Grant. On or about October 16, 2017, the Registrant of the domain name was nathan hatter / blackonomics global trust group. The Panel finds that the two Registrants are either the same person or entity or have acted together to pursue a common intent at all stages of this proceeding.
4. The <iherbfarm.com> domain name resolves to a website that purports to sell cannabis products, while employing a website with some similarities to Complainant’s website.
5. Respondent has offered the domain name for sale to Complainant.
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 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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant contends it registered its IHERB mark with the USPTO (e.g., Reg. No. 3,134,787, Aug. 29, 2006). See Compl. Ex. D. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has established its trademark rights in the IHERB mark.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s IHERB mark. Complainant contends that Respondent’s <iherbfarm.com> domain name is confusingly similar to Complainant’s mark because it fully incorporates the mark and simply includes the generic word “farm” along with the gTLD “.com.” The addition of a generic word and a gTLD does not negate confusing similarity between a mark and a disputed domain name that is otherwise present. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). As such, the Panel concludes that Respondent’s <iherbfarm.com> domain name is confusingly similar to Complainant’s mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s IHERB mark and has used it in its entirety in its domain name, adding only the generic word “farm” which probably gives the false impression to internet users that it relates to Complainant’s business and in particular to a farm where Complainant’s herbs are grown;
(b) Respondent registered the domain name on August 20, 2017;
(c) The <iherbfarm.com> domain name resolves to a website that purports to sell cannabis products while employing a similar layout as the website to which Complainant’s <iherb.com> domain name resolves and Respondent has attempted to sell the disputed domain name to Complainant.
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant submits that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its IHERB mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent is presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the <iherbfarm.com> domain name has listed different registrants since Respondent received Complainant’s cease and desist letter, dated October 9, 2017. See Compl. Ex. A, B, H (WHOIS information from October 16, 2017; WHOIS information from October 9, 2017; cease and desist letter). The WHOIS record lists “shadejaribu grant” as the registrant as of October 9, 2017, and “nathan hatter” as the registrant on October 16, 2017. See Compl. Ex A & B. Therefore, the Panel agrees with Complainant and concludes that Respondent is not commonly known by the <iherbfarm.com> domain name;
(e) Complainant submits that Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Complainant submits that the <iherbfarm.com> domain name resolves to a website that purports to sell cannabis products that are illegal in some jurisdictions. Use of a domain name to promote the sale of illegal goods is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Nycomed Danmark ApS v. Diaz, D2006-0779 (WIPO Aug. 15, 2006) (concluding that the respondent’s use of a disputed domain name to operate a website promoting an illegal food supplement 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)). Here, screenshots submitted by Complainant indicate that the <iherbfarm.com> domain name resolves to a website that offers “Top Shelf Medical Cannabis,” and “Choice for legal Cannabis.” See Compl. Ex G. The question in the present case, therefore, is whether the fact that the website offers goods that are illegal in some, but apparently not all, jurisdictions and where Respondent itself seems to be asserting that its sales are lawful, is enough to justify finding that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel has considered this issue carefully and finds that the issue is not so much whether the cannabis products are lawful in some jurisdictions but illegal in others. The relevant point is that Respondent is using Complainant’s trademark to sell products that are not Complainant’s own products, which may well mislead some internet users into thinking that Complainant has now started to sell cannabis products. It is difficult to see how such a use of a domain name could be described as a bona fide offering of goods or services when it is clearly being done without Complainant’s consent. The Panel therefore finds on the evidence that Respondent’s use of the domain name is not bona fide.
(f) Complainant next argues that Respondent’s domain name employs a similar layout as Complainant’s own webpage, presumably for its own commercial gain. Passing off can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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 provides screenshots of both websites, which show that both sites employ the use of the color green; however it does not appear that Respondent’s <iherbfarm.com> website and Complainant’s <iherb.com> website contain other similarities. See Compl. Ex. F & G. The Panel has put this argument into the balance when making its determination under Policy ¶¶ 4(c)(i) & (iii). The Panel has been influenced in that regard by the fact that Respondent has placed an iHERB logo in the same position on its home page as Complainant’s logo on its home page; Respondent’s logo does not include the word “farm”, an intrinsic part of the domain name, but does include the word “ herbs”, which is the essential part of Complainant’s trademark; and Respondent’s logo uses a small letter “i”, as does Complainant’s logo. These similarities tend to suggest that , whether intended or not, the internet user may well be mislead into believing that the domain name is promoting Complainant’s own business and products, which is not a bona fide act. Accordingly, the Panel finds that the layout of the website is an additional reason why Respondent is not using the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent. It therefore remains to consider whether Respondent has rebutted the prima facie case against it.
Although Respondent has filed a Response it has not articulated any arguments in the Response to enable the Panel to conclude that Respondent has a right or legitimate interest in the domain name.
Respondent has also addressed several emails to the FORUM expressing its attitude to this proceeding, the substantive content of which has already been set out. However, there is nothing in any of those emails that enables the Panel to conclude that Respondent has a right or legitimate interest in the domain name. Where necessary, the Panel has addressed those issues elsewhere in this decision.
The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered and is using the disputed domain name in bad faith because the evidence strongly suggests that the domain name was acquired primarily for the purpose of selling the domain name to Complainant for valuable consideration. Registering a confusingly similar domain name for the purpose of selling it to a complainant can support a finding of bad faith under Policy ¶ 4(b)(i) and it is certainly a fact that a panel should take into account. See Co. v. Doms, D2000-0184 (WIPO May 8, 2000) (finding that the respondent violated Policy ¶ 4(b)(i), by indicating to the complainant that he “would consider a cash offer” for the sale of the disputed domain name registration while inviting the complainant to “submit an opening cash or stock offer”). Here, Respondent or the prior Registrant of the domain name stated in email dated October 9, 2017 that “we will not be transferring over our product to your product for free”, necessarily implying that it would have to be paid for by Complainant. See Compl. Annex I. Furthermore, Complainant argues that Respondent’s intentions can also be derived from its attempts to conceal its identity by becoming a willing party to transferring the domain name after receiving Complainant’s cease and desist letter. An intention to sell may be inferred from respondent’s efforts to conceal its true identity. See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“[T]he manner in which the Respondent chose to identify itself and its administrative and billing contacts both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name.”). WHOIS records indicate that the former Registrant of the domain name transferred the <iherbfarm.com> domain name to Respondent, the current registrant, after Respondent was informed of the pending ICANN dispute. See Compl. Ex A. Putting all of these factors together, the Panel finds that whether they come strictly within the terms of Policy ¶ 4(b)(i) or whether they illustrate the general intention of Respondent, they show Respondent was very interested in selling the domain name to Complainant and was proceeding with that intention. The Panel is therefore able to infer on the balance of probabilities, that this objective was in the mind of Respondent when it registered the domain name by acquiring it. Therefore, the Panel finds on the balance of probabilities that Respondent registered the domain name with the intention of selling it to Complainant.
Secondly, Complainant submits that Respondent is using the confusingly similar domain name to attract Internet traffic and commercially benefit from the goodwill of the IHERB mark. Use of a domain name to create confusion as to the source, sponsorship, affiliation, or endorsement of its website can evince bad faith registration and use. See Allianz of Am. Corp. v. Bond, FA 680624 (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). Here, Respondent’s <iherbfarm.com> domain name resolves to a website that purports to sell cannabis products from which Respondent likely profits. See Compl. Ex G. As the Panel has observed already, the use of Complainant’s trademark, creating a confusingly similar domain name and using it to promote sales of cannabis products, whether lawful or not, wrongly suggests to the internet user that the sale of such products as promoted on Respondent’s website is a business activity of Complainant. Therefore, the Panel holds that Respondent registered and used the domain name in bad faith within the meaning of Policy ¶ 4(b)(iv).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the IHERB mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression. This is a case where in substance Respondent’s trademark and logo have probably been copied and used in an attempt to sell products other than Complainant’s regular products and where Respondent has shown a disposition to sell the domain name to Complainant. In total this conduct constitutes bad faith registration and use.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <iherbfarm.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 16, 2017
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