DECISION

Herbal Animals Inc. v. Host Your Site

Claim Number:  FA0408000307287

PARTIES

Complainant is Herbal Animals Inc. (“Complainant”), represented by David M. Kelly of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 1300 I Street NW, Washington, DC 20005.  Respondent is Host Your Site (“Respondent”), 9730 Soda Bay Rd. #8, Suite #5034, Kelseyville, CA 95451.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <herbalanimals.com>, registered with Dotster.

PANEL

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.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 4, 2004; the Forum received a hard copy of the Complaint on August 5, 2004.

On August 4, 2004, Dotster confirmed by e-mail to the Forum that the domain name <herbalanimals.com> is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 30, 2004 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@herbalanimals.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On September 7, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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."  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.

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 <herbalanimals.com> domain name is identical to Complainant’s HERBAL ANIMALS mark.

2. Respondent does not have any rights or legitimate interests in the <herbalanimals.com> domain name.

3. Respondent registered and used the <herbalanimals.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Herbal Animals Inc., is in the business of designing and marketing aromatherapy pillows and other products.

Complainant holds a registration with the United States Patent and Trademark Office for the HERBAL ANIMALS mark (Reg. No. 2,299,904 issued December 14, 1999).  Complainant has used the mark in commerce since at least 1994 and has sold more than five million dollars in products under its HERBAL ANIMALS mark. 

Complainant promotes its products at trade shows and also at its website located at the <herbal-animals.com> domain name. 

Respondent registered the <herbalanimals.com> domain name on April 2, 2003.  Respondent is using the domain name to divert Internet users to the website for Potomac Greentech, which sells aromatherapy pillows similar to those offered by Complainant.  Respondent is the hosting company for Potomac Greentech. 

Potomac Greentech is owned by a former employee of Complainant, Ranying Liu, and her husband, Yinming Li, who is a former independent contractor for Complainant.  After Ms. Liu and Mr. Li were no longer employed by Complainant, Complainant sued them and their company for infringement of Complainant’s trademark and product design.  That dispute was settled in litigation and did not specifically involve the HERBAL ANIMALS mark and name.     

DISCUSSION

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.

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.

Identical and/or Confusingly Similar

Complainant has established in this proceeding that it has rights in the HERBAL ANIMALS mark trough registration with the United States Patent and Trademark Office and by continuous use of its mark in commerce for the last ten years.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption.

The <herbalanimals.com> domain name registered by Respondent is identical to Complainant’s HERBAL ANIMALS mark because it includes Complainant’s mark in its entirety, adding only the generic top-level domain (gTLD) “.com.”  The mere addition of a gTLD to Complainant’s mark is insufficient to negate the identical nature of the domain name.  See Shirmax Retail Ltd. v. CES Mktg Group Inc., AF-0104 (eResolution Mar. 20, 2000) refusing to interpret Policy ¶ 4(a)(i) in the conjunctive rather than disjunctive sense in holding that “mere identicality of a domain name with a registered trademark is sufficient to meet the first element [of the Policy], even if there is no likelihood of confusion whatsoever”; see also 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.

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the

<herbalanimals.com> domain name.  Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name.  The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”; see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name; see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names.

Furthermore, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See 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.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true.

Respondent is using the <herbalanimals.com> domain name to redirect Internet users to Respondent’s competing website, which sells the same products Complainant sells under Complainant’s HERBAL ANIMALS mark.  Respondent’s use of a domain name that is identical to Complainant’s HERBAL ANIMALS mark to divert Internet users interested in Complainant’s products to a commercial website that offers Respondent’s competing products is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services; see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website.

Finally, Respondent offered no evidence and no proof in the record suggests that Respondent is commonly known by the <herbalanimals.com> domain name.  Furthermore, Complainant has not authorized or licensed Respondent to use its HERBAL ANIMALS mark.  Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) finding that Respondent does not have rights in a domain name when Respondent is not known by the mark; see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name.

Thus, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent intentionally registered the <herbalanimals.com> domain name, containing Complainant’s HERBAL ANIMALS mark in its entirety, for Respondent’s commercial gain.  Respondent’s domain name diverts Internet users who seek Complainant’s HERBAL ANIMALS mark to Respondent’s commercial website through the use of a domain name that is confusingly similar to Complainant’s mark.  Furthermore, Respondent is unfairly and opportunistically benefiting from the goodwill associated with Complainant’s HERBAL ANIMALS mark.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant; 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 Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain; see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site.

Furthermore, Respondent registered the <herbalanimals.com> domain name for the primary purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s website that directly competes with Complainant’s business.  Registration of a domain name for the primary purpose of disrupting the business of a competitor is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business; see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business.

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <herbalanimals.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  September 20, 2004

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