IHERB, INC., A CALIFORNIA CORPORATION v. Kont Memet
Claim Number: FA1606001678459
Complainant is IHERB, INC., A CALIFORNIA CORPORATION (“Complainant”), represented by Margaret A. Hosking of Best Best & Krieger, LLP, California, USA. Respondent is Kont Memet (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iherbcodes.org>, registered with ZhuHai NaiSiNiKe Information Technology Co Ltd.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 7, 2016; the Forum received payment on June 7, 2016.
On June 15, 2016, ZhuHai NaiSiNiKe Information Technology Co Ltd confirmed by e-mail to the Forum that the <iherbcodes.org> domain name is registered with ZhuHai NaiSiNiKe Information Technology Co Ltd and that Respondent is the current registrant of the name. ZhuHai NaiSiNiKe Information Technology Co Ltd has verified that Respondent is bound by the ZhuHai NaiSiNiKe Information Technology Co Ltd 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 June 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2016 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@iherbcodes.org. Also on June 14, 2016, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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. 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
i) Complainant sells nutritional supplements. In furtherance of and in connection with its business, Complainant has registered the IHERB mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,134,787, registered Aug. 20, 2006). Respondent’s <iherbcodes.org> domain name adds the generic term “codes” and the generic top-level domain (“gTLD”) “.org” to a fully incorporated IHERB mark, creating confusing similarity pursuant to Policy ¶ 4(a)(i).
ii) Respondent has no rights or legitimate interests in the disputed <iherbcodes.org> domain name. Complainant has not authorized or licensed Respondent to use the IHERB mark in connection with domain registrations, and nothing on record suggests Respondent is commonly known by <iherbcodes.org>. While Respondent engages in competitive use through the <iherbcodes.org> domain name by advertising a similar business and selling similar products, a bona fide offering of goods or services has not been shown, nor has a legitimate noncommercial or fair use.
iii) Respondent registered and used the <iherbcodes.org> domain in bad faith. Per Policy ¶ 4(b)(iv), Respondent’s use of the disputed domain demonstrates an intent to cause confusion and to commercially gain therefrom. Lastly, Respondent registered and used the disputed domain with actual knowledge of Complainant and its rights in the IHERB mark due to the fame associated with the mark, and considering Respondent’s directly competing use of the disputed domain to redirect Internet users to <cheap-rx.com> or otherwise to <buy-cheap-cialis-online.com>.
B. Respondent
Respondent did not submit a Response in this proceeding. The Panel notes that the <iherbcodes.org> domain name was registered on March 29, 2016.
Complainant established that it has rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and uses the disputed domain name in bad faith.
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.
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(f), 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 (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.”).
Complainant sells nutritional supplements. In furtherance of and in connection with its business, Complainant purports it has registered the IHERB mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,134,787, registered Aug. 20, 2006). Notwithstanding the geographic disparity of the parties, the Panel sees that Complainant’s USPTO registrations satisfy the rights requirement of Policy ¶ 4(a)(i). See Viber Media S.ŕ r.l. v. Kristaps Sirmais / SIA "FUN FACTORY", FA 1626671 (Forum Aug. 4, 2015) (“Accordingly, even though Respondent reportedly resides in Latvia, the panel finds that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).”).
Next, Complainant argues that Respondent’s <iherbcodes.org> domain name adds the generic term “codes” and the gTLD “.org” to a fully incorporated IHERB mark, creating confusing similarity pursuant to Policy ¶ 4(a)(i). Further, Complainant argues that “codes” may actually increase confusing similarity in light of Complainant’s online offerings incorporating the term as shown in the Complainant's evidence (using “iherb Promo Codes” and “iherb Reward in Codes”). Panels have found alterations similar to those Respondent has incorporated to demonstrate confusing similarity. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Accordingly, this Panel sees that the <iherbcodes.org> domain name is confusingly similar to the IHERB mark under Policy ¶ 4(a)(i).
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.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed <iherbcodes.org> domain name. Complainant notes that it has not authorized or licensed Respondent to use the IHERB mark in connection with domain registrations, and nothing on record suggests Respondent is commonly known by <iherbcodes.org>. In light of Respondent’s failure to submit a response, coupled with the WHOIS listing “Kont Memet” as registrant of record, the Panel agrees and finds Respondent not commonly known by the disputed domain per Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Next, while Respondent engages in competitive use through the <iherbcodes.org> domain name by advertising a similar business and selling similar products, Complainant argues that a bona fide offering of goods or services has not been shown, nor has a legitimate noncommercial or fair use. The Panel notes Complainant's evidence, which Complainant argues represents pages to which the disputed domain has historically resolved. Panels have agreed that competitive redirection does not amount to rights per Policy ¶¶ 4(c)(i) or (iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Therefore, this Panel agrees that no bona fide offering of goods or services or any legitimate noncommercial or fair use exists per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and used the <iherbcodes.org> domain in bad faith. Per Policy ¶ 4(b)(iv), Complainant argues that Respondent’s use of the disputed domain demonstrates an intent to cause confusion and to commercially gain therefrom. Panels have agreed with such arguments. See OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum April 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). Accordingly, the Panel sees Respondent’s conduct falls within the bounds proscribed by Policy ¶ 4(b)(iv).
Lastly, Complainant argues that Respondent registered and used the disputed domain with actual knowledge of Complainant and its rights in the IHERB mark due to the fame associated with the mark, and considering Respondent’s directly competing use of the disputed domain to redirect Internet users to <cheap-rx.com> or otherwise to <buy-cheap-cialis-online.com> as shown in the Complainant's evidence. The Panel agrees that the totality of the circumstances infers actual knowledge, and therefore that Respondent registered and subsequently used the disputed domain in bad faith per Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <iherbcodes.org> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 21, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page