iHerb, Inc., a California corporation v. Takamichi Tomiyama
Claim Number: FA1607001686144
Complainant is iHerb, Inc., a California corporation (“Complainant”), represented by Margaret A. Hosking of Best Best & Krieger, LLP, California, USA. Respondent is Takamichi Tomiyama (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iherbcouponiherb.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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 July 28, 2016; the Forum received payment on July 28, 2016. The Complaint was received in both Japanese and English.
On July 31, 2016, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <iherbcouponiherb.com> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 August 9, 2016, the Forum served the Japanese language Complaint and all Annexes, including a Japanese language Written Notice of the Complaint, setting a deadline of August 29, 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@iherbcouponiherb.com. Also on August 9, 2016, the Japanese language 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 September 9, 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, iHerb Inc., is a California corporation in operation since 2001 that sells nutritional supplements and other healthy products through its online retail store. In connection with this business Complainant registered the IHERB mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,134,787, registered Aug. 29, 2006), which demonstrates Complainant’s rights in the mark. Respondent’s domain <iherbcouponiherb.com> is confusingly similar to Complainant’s IHERB mark as the domain includes the mark twice and merely adds the generic top-level domain (“gTLD”) “.com,” and the generic term “coupon.”
ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been authorized to use the IHERB mark and is not currently known by the disputed domain name. Further, Respondent’s use of a domain infringing on Complainant’s IHERB mark to host a website displaying what appears to be gibberish in Japanese is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
iii) Respondent has registered and is using the disputed domain in bad faith. Respondent’s use of a confusingly similar domain indicates an intent to create confusion in the minds of internet users from which Respondent presumably attempts to profit. Respondent also had actual knowledge of Complainant’s rights in the IHERB mark at the time of registration based on registration of the domain nearly two decades after Complainant’s website registration and use of the term “coupon” in the domain which is related to Complainant’s business of offering reduced prices on its products through coupons.
B. Respondent
Respondent has not submitted a Response in this proceeding. The Panel notes that the disputed domain was created on July 20, 2015.
Complainant established that it had rights in the mark contained in the disputed domain name. The 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 used the disputed domain name in bad faith.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Japanese, thereby making the language of the proceedings in Japanese.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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, iHerb Inc., is a California corporation that sells nutritional supplements and other healthy products through its online retail store. Complainant contends that it registered and has rights in the IHERB mark through registration of the mark with the USPTO (e.g., Reg. No. 3,134,787, registered Aug. 29, 2006). Panels have held, and this Panel holds, that registration of a mark with the USPTO is sufficient evidence of a registrant’s rights in a mark. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant next contends that Respondent’s domain <iherbcouponiherb.com> is virtually identical or confusingly similar to the IHERB mark. Respondent’s domain includes the entire IHERB mark twice, adds the gTLD “.com,” and the generic term “coupon.” The inclusion of the gTLD “.com” has been found to be an irrelevant factor when determining confusing similarity under Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Panels have also held that the addition of a generic term to a mark does not distinguish a domain from the mark to which the term is added. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). This Panel finds that the <iherbcouponiherb.com> domain is confusingly similar to the IHERB mark.
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 claims that Respondent has not been authorized to use the IHERB mark or been commonly known by the disputed domain. WHOIS information associated with the disputed domain indicates that Respondent identifies as, “Takamichi Tomiyama,” which does not appear to resemble the disputed domain name. Panels have found that a respondent is not commonly known by a disputed domain based on WHOIS information and a lack of evidence to the contrary. See Braun Corp. v. Loney, FA 699652 (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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel concludes that Respondent is not commonly known by the disputed domain under Policy ¶ 4(c)(ii).
Complainant next claims that Respondent's use of the domain is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain, when accessed on July 22, 2016, resolved to a website displaying Japanese text which Complainant claims is gibberish. Complainant claims that Respondent’s use is intended to cause consumer confusion. The Panel notes that the contents of the website resolved by the disputed domain name are indeed gibberish on various topics such as 'to take out a loan,' 'hair growth promoter,' 'used-cars dealings,' 'dryness skin,' 'a nurse and infant care,' etc. Panels have held that a respondent using another’s mark to divert users to its own website is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). As the Panel finds that Respondent registered the domain to divert Internet users, it finds that this use is not within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant argues that Respondent’s use of a confusingly similar domain indicates an intent to create confusion in the minds of internet users from which Respondent presumably attempts to profit. Past panels have found bad faith where it was evident that a respondent intended to connect its domain with the mark of another and likely profited from the resulting confusion. See Perot Sys. Corp. v. Perot.net, FA 95312 (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).
As the Panel finds that Respondent registered the <iherbcouponiherb.com> domain to commercially benefit from the similarity between the IHERB mark and the domain the Panel finds that Respondent has done so in bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that in light of Complainant's long term use of the IHERB mark at its website and due to the connection between Complainant’s marketing strategy of offering coupons and coupon codes and Respondent’s use of the IHERB mark and term “coupon” in the domain, it is inconceivable that Respondent could have registered the <iherbcouponiherb.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel infers from the notoriety of Complainant's mark and Respondent's use of the descriptive term 'coupon' in the disputed domain name the use of which falls within Complainant's business method, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION 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 <iherbcouponiherb.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: September 20, 2016
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