Herbalife International of America, Inc. v.
Marc Larsen
Claim Number: FA0608000766735
PARTIES
Complainant is Herbalife International of America, Inc. (“Complainant”), represented by Jade L. Zike, 1901 Ave. of the Stars, Ste. 1600, Los Angeles, CA 90067. Respondent is Marc Larsen (“Respondent”), 7706 Erie Avenue, Chanhassen, MN 55317.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yerbalife.com>,
registered with Omnis Network, LLC.
PANEL
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.
Louis E. Condon as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 1, 2006; the National Arbitration Forum received a
hard copy of the Complaint on August 7, 2006.
On August 3, 2006, Omnis Network, LLC confirmed by e-mail to the
National Arbitration Forum that the <yerbalife.com>
domain name is registered with Omnis Network, LLC and that the Respondent is
the current registrant of the name. Omnis
Network, LLC has verified that Respondent is bound by the Omnis Network, LLC
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 August 10, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 30, 2006 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@yerbalife.com by e-mail.
A timely Response was received and determined to be complete on August
18, 2006.
On August 22, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Louis E. Condon as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions
1.
Respondent’s
domain name <yerbalife.com> is
confusingly similar to Complainant Herbalife’s federally registered trademark
HERBALIFE in sight, sound and meaning.
2.
Respondent has
no rights or legitimate interests in respect of the domain name.
3.
The domain name
was registered, and is being used, in bad faith.
B. Respondent asserts:
1.
The <yerbalife.com> bears no
resemblance to Complainant’s web site
and it is unlikely that Complainant and Respondent’s domain names
will be confused.
2.
Respondent
began using the domain name in commerce in July 2005.
3.
The domain name
in question is a condensed version of the Respondent’s
<yerbamatelife.com>
which Respondent also began using in 2005.
FINDINGS
Herbalife is a famous company with a worldwide reputation for creating
and selling high-quality dietary and nutritional supplements. Moreover, Herbalife owns numerous
registrations for the mark HERBALIFE with the first being obtained in 1980. Subsequent registrations added to the product
line.
Since its beginning, Complainant has widely and extensively advertised
the HERBALIFE marks, long before Respondent registered the <yerbalife.com>
domain name in 2004. The domain name is
confusingly similar to Complainant’s registered trademark in sight, sound and
meaning. First, it wholly incorporates
the Herbalife mark exchanging one letter, “h” to a “y.” Second, “Herbalife” is generally pronounced
with the “H” silent. The English
pronunciation of Respondent’s <yerbalife.com> sounds almost
identical to the pronunciation of the Herbalife marks. Third, Respondent’s domain name and the
HERBALIFE marks have similar meaning.
“Yerba” is a Spanish term which translates into “herb” in English. Thus, <yerbalife.com>
translated into English means <herbalife.com>.
Respondent has no trademark or service mark registration for the marks
HERBALIFE or YERBALIFE. Respondent’s
attempt to register such a mark failed when Complainant opposed the
application. The domain name is
currently parked at a free parking site provided by the registrar, which
advertises the registrar’s services.
Respondent presumably collects a click-through commission for this
site. Respondent did register the name
“Yerba Mate Life” and obtained the domain name <yerbamatelife.com> in
2005. Respondent chose not to use that domain name for his website. However, Respondent did use the business
name “Yerba Mate Life” for the registration information for the <yerbalife.com> and <yerbamatelife.com>
domain names.
B. Respondent
Respondent contends that it is unlikely that the public will confuse its simple web site that sells yerba mate exclusively, and bears no resemblance to the Complainant’s web site, to be one that bears any association with the Complainant’s products. The domain name in question was registered to Respondent in June 2004 and has been used by Respondent since July 2005. Respondent says that Complainant’s statement that Respondent’s attempt at registration of the mark “Yerbalife” failed (because of Complainant’s opposition) is untrue and misleading. Respondent says registration of the mark has been “abandoned” by Respondent for reasons not relevant to these proceedings. Respondent did register the mark “Yerba Mate Life” in 2005 and start doing business under the domain name <yerbamatelife.com>. Respondent maintains that <yerbalife.com> is a “logically condensed and easier to type” version of Respondent’s longer name <yerbamatelife.com>.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 asserts that it holds several trademark registrations for the HERBALIFE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,254,211 issued October 18, 1983; Reg. No. 1,811,780 issued December 21, 1993; Reg. No. 2,512,368 issued November 27, 2001; Reg. No. 1,969,346 issued April 23, 1996). The Panel finds that these trademark registrations establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant contends that the <yerbalife.com>
domain name is confusingly similar to its HERBALIFE mark, as the disputed
domain name is both visually and phonetically similar to its mark. Complainant also claims that the term
“yerba” is the Spanish word for “grass” or “herb” and thus is related to the
HERBALIFE mark. The Panel finds that
the disputed domain name differs from Complainant’s HERBALIFE mark by only one
letter and is pronounced in a similar fashion to Complainant’s HERBALIFE mark,
and as a result, Respondent has failed to sufficiently differentiate the <yerbalife.com>
domain name from the mark under Policy ¶ 4(a)(i). See Intelius, Inc. v. Kim Sang Hyn, FA 703175 (Nat. Arb.
Forum Jul. 5, 2006) (finding the <intellus.com> domain name to be
confusingly similar to the complainant’s INTELIUS mark because the domain name
differed from the mark by one letter and was visually similar); see also M.
Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum
Aug. 3, 2006) (holding that because the respondent’s
<cigaraficionada.com> domain name differed from the complainant’s CIGAR
AFICIONADO mark by only one letter, the domain name was confusingly similar to
the mark); see also Am. Online, Inc. v. Peppler, FA 103437 (Nat. Arb.
Forum Feb. 22, 2002) (finding the word “quest” and “crest” to be similar in
sound and, thus, that the respondent’s
<mapcrest.com> domain name and the complainant’s MAP QUEST mark are confusingly similar).
Complainant has the burden of making a prima facie case that Respondent has no rights or legitimate interests in the <yerbalife.com> 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 (Nat. Arb. 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 Policy ¶ 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 Document Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”).
Complainant maintains that Respondent
is not commonly known by the <yerbalife.com> domain name, because
the WHOIS information lists “Marc Larsen” as the registrant of the domain name,
and there is no other evidence in the record to suggest that Respondent is
commonly known by the <yerbalife.com> domain name. Complainant also maintains that Respondent
applied for a trademark registration for the YERBALIFE mark with the USPTO, but
that Respondent abandoned its application after Complainant opposed it (Serial
No. 78/440,902 filed June 24, 2004, abandoned January 19, 2006). The Panel agrees that Respondent is not
commonly known by the disputed domain name, and consequently that Respondent
does not have any rights or legitimate interests in the domain name pursuant to
Policy ¶ 4(c)(ii). 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 assertion that a respondent is
commonly known by a domain name, the assertion must be rejected); see
also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031
(Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly
known by <aolcamera.com> or <aolcameras.com> because the respondent
was doing business as “Sunset Camera” and “World Photo Video & Imaging
Corp.”).
Furthermore, Complainant argues that Respondent is not using the <yerbalife.com> domain name in connection with 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), because the disputed domain name resolves to a web directory displaying links to various third-party websites. Complainant alleges that at one time the disputed domain name resolved to a website selling “yerba mate tea” under the business name “Yerba Mate Life,” but that this website has been taken down. The Panel finds that Respondent is misdirecting Internet users seeking Complainant’s health and beauty products to its own website for commercial gain in the form of click-through fees, and that neither this use nor Respondent’s prior use constitutes a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to ¶ 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 Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant’s mark).
Complainant alleges that Respondent
has registered and is using the disputed domain name in bad faith pursuant to
Policy ¶ 4(b)(iv), because Respondent’s domain name currently resolves to a web
directory featuring links to various third-party websites unrelated to
Complainant. Complainant thus infers
that Respondent receives click-through fees for each consumer it diverts to
these other websites. Complainant also
contends that Respondent at one time used the <yerbalife.com>
domain name to sell yerba mate tea. The
Panel finds that Respondent is taking advantage of the confusing similarity
between the domain name and Complainant’s marks in order to profit from the
goodwill associated with the HERBALIFE mark.
The Panel concludes that Respondent’s registration and diversionary use
of the <yerbalife.com> domain name constitutes bad faith under
Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the
respondent registered and used a domain name confusingly similar to the
complainant’s mark to attract users to a website sponsored by the respondent); see
also 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.”).
Even if Respondent has not violated any of the factors listed in Policy ¶ 4(b), based on the totality of the circumstances the Panel finds that Respondent’s registration and use of the <yerbalife.com> domain name is indicative of bad faith under Policy ¶ 4(a)(iii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Given Complainant’s trademark registrations in the United States, where Respondent resides, Respondent had actual or constructive knowledge of Complainant’s HERBALIFE mark when registering the <yerbalife.com> domain name. Complainant asserts that Respondent applied for a trademark registration for the YERBALIFE mark and that because Complainant opposed Respondent’s application, the USPTO rejected the application and Respondent abandoned the application. Complainant argues that Respondent’s failure to contest Complainant’s opposition to Respondent’s application indicates that Respondent had actual knowledge of Complainant’s HERBALIFE mark when registering the <yerbalife.com> domain name. Consequently, the Panel decides that Respondent’s registration and use of the disputed domain name was in bad faith under Policy ¶ 4(a)(iii). See Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that the respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where the complainant’s BEANIE BABIES mark was famous and the respondent should have been aware of it); see also eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent capitalized on the fame associated with the complainant’s EBAY mark and profited from it by diverting users seeking the complainant to the respondent’s website).
DECISION
Complainant having established all three elements required under the
ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <yerbalife.com>
domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: September 5, 2006
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