Herbalife International Inc. v.
SHOPHERBALIFE.COM a/k/a Cleverson Ezora
Claim
Number: FA0405000281593
Complainant is Herbalife International Inc. (“Complainant”),
represented by Timothy S. Cole, of Ladas & Parry,
5670 Wilshire Boulvard, Suite 2100, Los Angeles, CA 90036-5679. Respondent is SHOPHERBALIFE.COM a/k/a Cleverson Ezora (“Respondent”), P.O. Box 740871, Dallas, TX
75374.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <shopherbalife.com>, registered with eNom,
Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 28, 2004; the Forum received a hard copy of the Complaint
on June 1, 2004.
On
May 28, 2004, eNom, Inc. confirmed by e-mail to the Forum that the domain name <shopherbalife.com>
is registered with eNom, Inc. and that Respondent is the current registrant
of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN's Uniform Domain Name Dispute
Resolution Policy (the "Policy").
On
June 4, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 24, 2004 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@shopherbalife.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
July 5, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 <shopherbalife.com>
domain name is confusingly similar to Complainant’s HERBALIFE mark.
2. Respondent does not have any rights or
legitimate interests in the <shopherbalife.com> domain name.
3. Respondent registered and used the <shopherbalife.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
leader in the nutrition and weight-management industries. Complainant has operated its business under
the HERBALIFE mark since 1980.
Complainant’s annual sales of goods offered under the HERBALIFE mark are
approximately $2 billion.
Complainant owns
numerous registrations with the United States Patent and Trademark Office for
the HERBALIFE mark, including Registration Numbers 1,254,211 (issued Oct. 18,
1983), 1,811,780 (issued Dec. 21, 1993), 1,969,346 (issued Apr. 23, 1996), and
2,512,368 (issued Nov. 27, 2001).
Respondent
registered the disputed domain name <shopherbalife.com> on July
26, 1999. On August 3, 1999, Respondent
submitted an application to Complainant for an International Distributorship to
sell Complainant’s products. Respondent
became a distributor of Complainant’s products and was later terminated.
Respondent is
using the <shopherbalife.com> domain name to direct Internet users
to a website located at the <herbalbrand.com> domain name. The website contains the heading, “Shop From
Herbalife Distributor Near You.” Below
the heading, the following hyperlink is posted, “click here to find out how to
get your own web site and add your name to this directory.” Upon clicking the hyperlink, Internet users
are directed to a website located at the domain name
<distributoryyellowpages.com>.
The website contains a variety of advertisement service packages
relating to distributors of 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."
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.
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.
As the result of
Complainant’s multiple registrations with the United States Patent and
Trademark Office for its HERBALIFE mark, Complainant has established rights in
the mark under the Policy. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
The disputed domain name <shopherbalife.com>
merely adds the term “shop” to Complainant’s HERBALIFE mark. Panels have consistently held that the
addition of the word “shop” to a mark fails to sufficiently distinguish the
domain name from the mark pursuant to Policy ¶ 4(a)(i). See L.L. Bean, Inc. v.
ShopStarNetwork, FA
95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word
“shop” with Complainant’s registered mark “llbean”
does not circumvent Complainant’s rights in the mark nor avoid the confusing
similarity aspect of the ICANN Policy); see
also Nike,
Inc. v. Crystal Int’l,
D2001-0102 (WIPO Mar. 19, 2001) (finding the domain names
<nikeshop.net>, <nikeshop.org>, <nike-shop.com>,
<nike-shop.net> confusingly similaar to NIKE); see also Gorstew Ltd.
v. Shop A-Z.com, Inc., FA 94941 (Nat. Arb. Forum July 11, 2000) (finding
the domain names <shopsandals.com> and <shop-sandals.com>
confusingly similar to the mark SANDALS).
Complainant has
established that the <shopherbalife.com> domain name is confusingly similar to
Complainant’s mark under Policy ¶ 4(a)(i).
Respondent has
not responded to the Complaint and, thus, has not advanced evidence that
indicates Respondent maintains rights or legitimate interests in the disputed
domain name. The failure to respond may
be construed as an implicit admission that Respondent lacks such rights and
interests pursuant to Policy ¶ 4(a)(ii).
See Pavillion Agency, Inc.
v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond
allows a presumption that Complainant's allegations are true unless clearly
contradicted by the evidence); see also
Bloomberg L.P. v. GAF, FA 190614 (Nat. Arb. Forum Oct. 20, 2003)
(finding that since Respondent did not come forward to explain what legitimate
use it may have had in the domain names, the panel could “presume that Respondent lacks rights and legitimate interests in the domain
names at issue”).
Although
Respondent was at one time an authorized distributor of Complainant’s products,
Complainant asserts that, Respondent was never authorized to register and use a
domain name that incorporated Complainant’s HERBALIFE mark. Moreover, at the time Respondent registered
the disputed domain name, Respondent was not yet an authorized distributor on
behalf of Complainant. It is
established under the Policy that a distributor does not necessarily have the
right to use a supplier’s mark in a confusingly similar domain name, without a
specific agreement to the contrary. See Procter
& Gamble Co. v. Hlad, FA 126656 (Nat. Arb. Forum Nov. 20, 2002) (“Respondent, merely a distributor of PUR brand products, has no
authorization to use the PUR mark for any trademark purpose, such as the use in
the domain name.”); see also Carlon
Meter Co., Inc. v. Jerman, D2002-0553 (WIPO July 30, 2002) (“Respondent may well be an important distributor of Complainant's
products, but its right to use the trademarks of Complainant do not necessarily
extend to a right to use the globally extensive domain name system by
incorporating these trademarks in the Domain Names in a manner which links them
to Respondent's web site.”); see also Assoc.
Materials, Inc. v. Perma Well Inc., FA
154121 (Nat. Arb. Forum May 23, 2003) (finding that, although Respondent was a
distributor of Complainant’s product, Respondent was not authorized to use
Complainant’s mark in its registered domain name and thus, was not using the
domain name as a bona
fide offering of goods or services, nor a legitimate noncommercial or fair use).
In the instant
case, neither Complainant nor Respondent has provided the relevant
distributorship agreement to the Panel.
Regardless, panels have found that upon termination of distributorship
agreements, rights and legitimate interests in a domain name, which is
identical or confusingly similar to a complainant’s mark, cease to exist. Here, the distributorship agreement has
terminated and, thus, Respondent is not using the disputed domain name in
connection with 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
Gen. Ecology, Inc. v. Metcalf, FA
146569 (Nat. Arb. Forum Apr. 11, 2003) (finding
that Respondent lacked rights and legitimate interests in the
<seagull-4.com> domain name based in part on the “evidence on record that
Respondent was terminated as a distributor of Complainant's SEAGULL products”);
see also UVA Solar GmbH & Co. K.G. v. Kragh,
D2001-0373 (WIPO May 7, 2001) (finding that a former distributor of
Complainant’s products maintained rights and legitimate interests in respect to
a domain name during the duration of its distributorship agreement, but such
rights and interests ceased upon termination of the agreement).
In addition,
nothing in the record sufficiently indicates that Respondent is commonly known
by the disputed domain name pursuant to Policy ¶ 4(c)(ii). Without a Response from Respondent, the
Panel relies upon the evidence advanced by Complainant and finds that
Respondent is not commonly known by the <shopherbalife.com> domain
name. See Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the notion
that a respondent is commonly known by a domain name, the notion must be
rejected); see
also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see also RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to
require a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail").
Complainant has
established Policy ¶ 4(a)(ii).
One week after
Respondent registered the disputed domain name, Respondent filed an application
for a distributorship agreement with Complainant. The proximity in time and nature between these two events
indicates that Respondent had actual knowledge of Complainant’s rights in the
HERBALIFE mark at the time the disputed domain name was registered. The fact that Respondent was later awarded a
distributorship does not negate the fact that at the time of registration,
Respondent was not authorized to use Complainant’s HERBALIFE mark in a domain
name. Thus, Respondent registered the
disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith,
279
F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse."); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration); see also Assoc. Materials,
Inc. v. Perma Well, Inc., FA 154121 (Nat. Arb. Forum May 23, 2003) (finding
that Respondent’s actual knowledge of Complainant’s rights in the ULTRAGUARD
mark, inferred from the fact that Respondent was a distributor of Complainant,
along with Respondent being on notice of its own lack of rights, evidenced that
the domain name was registered and used in bad faith).
Respondent is
currently using the disputed domain name in bad faith because the
distributorship agreement has terminated and Respondent is not authorized to
use the disputed domain name, which is confusingly similar to Complainant’s
HERBALIFE mark. See Labrada Bodybuilding Nutrition, Inc. v.
Garrett, FA 94293 (Nat. Arb. Forum Apr. 27, 2000) (finding that
Respondent’s use of domain names confusingly similar to Complainant’s mark
after their distributor agreement had expired constituted bad faith use); see
also Great Am. Knitting Mills Res.
Corp. v. Sock Co., FA 95841 (Nat. Arb. Forum Dec. 7, 2000) (stating that
“[w]hile Respondent may continue to sell Gold Toe socks acquired from various
sources, it is not an ‘authorized’ retailer of Gold toe socks, and it is
improper to utilize domain names implying to the contrary” in finding that
Respondent used the disputed domain names in bad faith).
Furthermore,
Respondent’s <shopherbalife.com> domain name is confusingly similar to
Complainant’s mark and resolves to a commercial website. Respondent’s commercial use of the domain
name is evidence that Respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv). See
H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan.
8, 2003) (finding that the disputed domain name was registered and used in bad
faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use
of the infringing domain name to intentionally attempt to attract Internet
users to its fraudulent website by using Complainant’s famous marks and
likeness); see also G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered
and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because
Respondent was using the confusingly similar domain name to attract Internet
users to its commercial website); see also Philip Morris Inc. v.
r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that Respondent’s
registration of an infringing domain name to redirect Internet users to banner
advertisements constituted bad faith use of the domain name).
Complainant
has established 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 <shopherbalife.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
July 19, 2004
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