Herbalife
International of America, Inc., a wholly owned subsidiary of Herbalife
International, Inc. v. Beamline c/o Young Nah
Claim Number: FA0511000592343
Complainant is Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. (collectively, “Complainant”), represented by Jade L. Zike, 1901 Ave. of the Stars, Suite 1600, Los Angeles, CA, 90067. Respondent is Beamline c/o Young Nah (“Respondent”), Woobang APT, Youngheung 1 dong, Pohang, Gyeongbuk, Republic of Korea, 791-754.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <herbalifechina.com>, registered with Onlinenic, 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 November 4, 2005; the National Arbitration Forum received a hard copy of the Complaint November 7, 2005.
On November 7, 2005, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <herbalifechina.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. verified that Respondent is bound by the Onlinenic, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 11, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 2, 2005, 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@herbalifechina.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 13, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson 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." 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, <herbalifechina.com>, is confusingly similar to Complainant’s HERBALIFE mark.
2. Respondent has no rights or legitimate interests in the <herbalifechina.com> domain name.
3. Respondent registered and used the <herbalifechina.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Herbalife International of America, Inc. is a Nevada corporation having its principal place of business in California. Complainant’s predecessor in interest first began using the HERBALIFE mark in 1980 and Complainant has since been engaged in the development, manufacture, promotion, distribution and sale of high quality weight loss, nutritional and personal care products, and other products to the general public under the HERBALIFE mark. Complainant was one of the first companies to make and sell nutritional supplements to the general public. Complainant’s products enjoy substantial prestige in the nutritional supplement industry. Complainant’s products are sold under Complainant’s federally registered HERBALIFE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,254,211, issued October 18, 1983).
Complainant has widely and extensively advertised the HERBALIFE mark throughout the United States and the rest of the world. As a result of the care and skill exercised by Complainant, its dealers, distributors and other authorized outlets in the conduct of their business, and because of the extensive advertising and sale of Complainant’s products, such products bearing or sold under or in connection with Complainant’s HERBALIFE mark have acquired a valuable reputation where the public recognizes that the HERBALIFE mark identifies products of Complainant exclusively.
Respondent registered the <herbalifechina.com> domain name on September 4, 2003. Respondent is using the disputed domain name to redirect Internet users to a website with links to various nutritional, medical and weight loss sites, many of which sell Complainant’s products as well as competing products.
Respondent has also been involved in prior UDRP proceedings where the Panel found against Respondent. See ACCOR v. Mr. Young Gyoon Nah, D2004-0681 (WIPO Oct. 24, 2004) see also Hilton Group Plc v. Young Nah, D2005-0184 (WIPO April 21, 2005) (ordering transfer of domain name after Respondent Nah demanded 1,200.00 EUR for its transfer to Complainant); see also V&S Vin & Spirit v. Young Nah, D2004-0961 (WIPO Dec. 31, 2004) (“The only use the Respondent has put the domain name to, is the pointing of the domain name to a website with the title Absolutbar.com-Absolut Vodka Liquor and with links not related to ABSOLUT but to other web sites, some of marketing the products of competitors. The respondent is using the domain name in order to attract visitors and then make money when the visitors click on the links on the site.”). Furthermore, upon receipt of Complainant’s cease and desist letter, Respondent offered to sell the disputed domain name to Complainant for $1,500. and then for $700.
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 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 established that it has rights in the <herbalifechina.com>
domain name through registration with the United States Patent and Trademark
Office (“USPTO”) and by continuous use of the mark since 1980. See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also U.S. Office of
Pers. Mgmt. v. MS Tech. Inc., FA 198898
(Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that
a mark is registrable, by so issuing a registration, as indeed was the case
here, an ICANN panel is not empowered to nor should it disturb that
determination.”).
The <herbalifechina.com> domain name registered by Respondent is confusingly similar to Complainant’s HERBALIFE mark because it includes Complainant’s entire mark and the addition of the geographic term “china”. The Panel finds that the addition of a common geographic designation is not sufficient to distinguish Respondent’s domain name from Complainant’s mark. See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to the complainant’s CMGI mark).
Moreover, the addition of the generic top-level domain “.com” does not differentiate Respondent’s domain name from Complainant’s mark. See 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); see also 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 . . . .").
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate
interests in the mark contained in its entirety within the disputed domain
name. Complainant asserted that
Respondent has no such rights or legitimate interests in the <herbalifechina.com>
domain name. When a Complainant
establishes a prima facie case pursuant to Policy ¶ 4(a)(ii), the burden
shifts to Respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to
the Complaint, the Panel infers that Respondent does not have rights or
legitimate interests in the disputed domain name. See Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a response, the respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name); 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.”).
Additionally, Respondent did not offer evidence and no proof in the record suggests that Respondent is commonly known by the <herbalifechina.com> domain name. Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Furthermore, Respondent is using the <herbalifechina.com> domain name to redirect Internet users to a website providing links to various nutritional, medical and weightloss sites, many of which sold Complainant’s products as well as competing products. The Panel presumes that Respondent receives click-through fees for hosting links to competing websites at the disputed domain name and finds that Respondent’s use of a domain name that is confusingly similar to Complainant’s mark is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Complainant satisfied Policy ¶
4(a)(ii).
Respondent has been involved in several UDRP proceedings in which Panel found in favor of Complainants seeking transfer of domain names that Respondent had registered wrongfully. See ACCOR v. Mr. Young Gyoon Nah, D2004-0681 (WIPO Oct. 24, 2004); see also Hilton Group Plc v. Young Nah, D2005-0184 (WIPO April 21, 2005); see also V&S Vin & Spirit v. Young Nah, D2004-0961 (WIPO Dec. 31, 2004). The Panel finds Respondent’s prior history of registering domain names incorporating marks belonging to third parties evidences Respondent’s pattern of bad faith registration and use of domain names pursuant to Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <Marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)); see also Australian Stock Exch. v. Cmty. Internet (Australia) Pty Ltd, D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where the respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses).
Additionally, upon receipt of Complainant’s cease and desist letter, Respondent offered to sell Complainant the disputed domain name for a price above and beyond Respondent’s out of pocket expenses. The Panel finds Respondent's offer of the disputed domain name registration for sale establishes that the domain name was registered and used in bad faith under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).
Furthermore, the Panel finds that Respondent intentionally
registered a domain name incorporating Complainant’s entire mark to divert
Internet users to Respondent’s commercial website and that this is bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and
used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000) (finding bad faith where the domain name in question is obviously
connected with the complainant’s well-known marks, thus creating a likelihood
of confusion strictly for commercial gain).
The Panel finds that Complainant satisfied 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 <herbalifechina.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 27, 2005.
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