Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. v. Necati Topyildiz
Claim Number: FA1007001337781
Complainant is Herbalife
International of America, Inc., a wholly owned subsidiary of Herbalife
International, Inc. (“Complainant”), represented by Susan Hwang, California, USA.
Respondent is Necati Topyildiz (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <herbalifeonline.com>, registered with GoDaddy.com, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 27, 2010.
On July 28, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <herbalifeonline.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 August 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 2010 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@herbalifeonline.com by e-mail. Also on August 9, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 September 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 a Written Notice, as defined in Rule 1. 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. Respondent’s <herbalifeonline.com> domain name is confusingly similar to Complainant’s HERBALIFE mark.
2. Respondent does not have any rights or legitimate interests in the <herbalifeonline.com> domain name.
3. Respondent registered and used the <herbalifeonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc., is a supplier of dietary supplements including vitamins, minerals, herbs, fiber, protein tablets and powder, and other health care products. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its HERBALIFE mark (e.g., Reg. No. 1,254,211 issued October 18, 1983).
Respondent, Necati Topyildiz, registered the <herbalifeonline.com> domain name on December 22, 2009. Respondent’s disputed domain name resolves to a website that states, “Herbalife Websites – Build a better business online—This domain may be available for sale. Please direct your inquiries here,” with the term “here” being an email hyperlink to contact the registrant of the domain name.
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. 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 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 Panel finds that Complainant has established rights in its HERBALIFE mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 1,254,211 issued October 18, 1983). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant contends that the <herbalifeonline.com>
domain name is confusingly similar to its HERBALIFE mark because the domain
name contains Complainant’s mark entirely while adding the generic term
“online” and the generic top-level domain (“gTLD”) “.com.” Complainant contends that the above noted
additions to its mark are not sufficient to render the disputed domain name
distinct from Complainant’s mark. The
Panel agrees and finds that Respondent’s <herbalifeonline.com>
domain name is confusingly similar to Complainant’s HERBALIFE mark pursuant to
Policy ¶ 4(a)(i).
See Broadcom
Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001)
(finding the <broadcomonline.com> domain name is confusingly similar to
the complainant’s BROADCOM mark); see
also Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have rights and legitimate interests in the <herbalifeonline.com> domain name pursuant to Policy ¶ 4(a)(ii). Complainant must produce a prima facie case in support of its contentions. Upon Complainant’s production of a prima facie case the burden of proof transfers to Respondent to prove that it has rights and legitimate interests in the dispute domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that Complainant has submitted a prima facie case and that the burden of proof has been properly shifted to Respondent. However, due to Respondent’s failure to respond to these proceedings, the Panel finds that it may assume that the allegations made by Complainant are true unless clearly contradicted by the evidence on record. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, the Panel will evaluate the evidence on record to determine if Respondent has rights and legitimate interests in the <herbalifeonline.com> domain name under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <herbalifeonline.com> domain name. The WHOIS information for the disputed domain name identifies “Necati Topyildiz” as the registrant. The Panel finds that, absent affirmative evidence showing otherwise, Respondent is not commonly known by the <herbalifeonline.com> domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. 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 of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant contends, and submits screen shot evidence to show, that Respondent has not connected the disputed domain name to an active website. Complainant’s evidence shows that the <herbalifeonline.com> domain name resolves to a website that merely states, “Herbalife Websites – Build a better business online—This domain may be available for sale. Please direct your inquiries here,” with the term “here” being an email hyperlink to contact the registrant of the domain name in order to make a purchase offer. Complainant contends that Respondent’s use of the dispute domain name as an attempt to sell the domain name is evidence that Respondent lacks rights and legitimate interests in such. The Panel agrees and finds that Respondent’s use of the disputed domain name to allow Internet users to make an offer for the purchase of the domain name is 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). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that the <herbalifeonline.com> domain name resolves to a website that advertises that the domain name is for sale, and that such use is evidence of bad faith registration and use. The Panel agrees and finds that Respondent’s open offer to sell the disputed domain name to anyone approaching the domain name from the Internet is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to the complainant amounts to a use of the domain name in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <herbalifeonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 17, 2010
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