DECISION

Herbalife International Inc. v. SHOPHERBALIFE.COM a/k/a Cleverson Ezora

Claim Number:  FA0405000281593

PARTIES

Complainant is Herbalife International Inc. (“Complainant”), represented by Timothy S. Cole, of Ladas & Parry, 5670 Wilshire Boulvard, Suite 2100, Los Angeles, CA 90036-5679.  Respondent is SHOPHERBALIFE.COM a/k/a Cleverson Ezora  (“Respondent”), P.O. Box 740871, Dallas, TX 75374.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <shopherbalife.com>, registered with eNom, Inc.

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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 28, 2004; the Forum received a hard copy of the Complaint on June 1, 2004.

On May 28, 2004, eNom, Inc. confirmed by e-mail to the Forum that the domain name <shopherbalife.com> is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 June 4, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 24, 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@shopherbalife.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 July 5, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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 <shopherbalife.com> domain name is confusingly similar to Complainant’s HERBALIFE mark.

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

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

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

FINDINGS

Complainant is a leader in the nutrition and weight-management industries.  Complainant has operated its business under the HERBALIFE mark since 1980.  Complainant’s annual sales of goods offered under the HERBALIFE mark are approximately $2 billion. 

Complainant owns numerous registrations with the United States Patent and Trademark Office for the HERBALIFE mark, including Registration Numbers 1,254,211 (issued Oct. 18, 1983), 1,811,780 (issued Dec. 21, 1993), 1,969,346 (issued Apr. 23, 1996), and 2,512,368 (issued Nov. 27, 2001).

Respondent registered the disputed domain name <shopherbalife.com> on July 26, 1999.  On August 3, 1999, Respondent submitted an application to Complainant for an International Distributorship to sell Complainant’s products.  Respondent became a distributor of Complainant’s products and was later terminated.

Respondent is using the <shopherbalife.com> domain name to direct Internet users to a website located at the <herbalbrand.com> domain name.  The website contains the heading, “Shop From Herbalife Distributor Near You.”  Below the heading, the following hyperlink is posted, “click here to find out how to get your own web site and add your name to this directory.”  Upon clicking the hyperlink, Internet users are directed to a website located at the domain name <distributoryyellowpages.com>.  The website contains a variety of advertisement service packages relating to distributors of Complainant.

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

As the result of Complainant’s multiple registrations with the United States Patent and Trademark Office for its HERBALIFE mark, Complainant has established rights in the mark under the Policy.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark).

The disputed domain name <shopherbalife.com> merely adds the term “shop” to Complainant’s HERBALIFE mark.  Panels have consistently held that the addition of the word “shop” to a mark fails to sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i).  See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with Complainant’s registered mark “llbean” does not circumvent Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding the domain names <nikeshop.net>, <nikeshop.org>, <nike-shop.com>, <nike-shop.net> confusingly similaar to NIKE); see also Gorstew Ltd. v. Shop A-Z.com, Inc., FA 94941 (Nat. Arb. Forum July 11, 2000) (finding the domain names <shopsandals.com> and <shop-sandals.com> confusingly similar to the mark SANDALS). 

Complainant has established that the <shopherbalife.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not responded to the Complaint and, thus, has not advanced evidence that indicates Respondent maintains rights or legitimate interests in the disputed domain name.  The failure to respond may be construed as an implicit admission that Respondent lacks such rights and interests pursuant to Policy ¶ 4(a)(ii).  See 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); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant's allegations are true unless clearly contradicted by the evidence); see also Bloomberg L.P. v. GAF, FA 190614 (Nat. Arb. Forum Oct. 20, 2003) (finding that since Respondent did not come forward to explain what legitimate use it may have had in the domain names, the panel could “presume that Respondent lacks rights and legitimate interests in the domain names at issue”).

Although Respondent was at one time an authorized distributor of Complainant’s products, Complainant asserts that, Respondent was never authorized to register and use a domain name that incorporated Complainant’s HERBALIFE mark.  Moreover, at the time Respondent registered the disputed domain name, Respondent was not yet an authorized distributor on behalf of Complainant.  It is established under the Policy that a distributor does not necessarily have the right to use a supplier’s mark in a confusingly similar domain name, without a specific agreement to the contrary.  See Procter & Gamble Co. v. Hlad, FA 126656 (Nat. Arb. Forum Nov. 20, 2002) (“Respondent, merely a distributor of PUR brand products, has no authorization to use the PUR mark for any trademark purpose, such as the use in the domain name.”); see also Carlon Meter Co., Inc. v. Jerman, D2002-0553 (WIPO July 30, 2002) (“Respondent may well be an important distributor of Complainant's products, but its right to use the trademarks of Complainant do not necessarily extend to a right to use the globally extensive domain name system by incorporating these trademarks in the Domain Names in a manner which links them to Respondent's web site.”); see also Assoc. Materials, Inc. v. Perma Well Inc., FA 154121 (Nat. Arb. Forum May 23, 2003) (finding that, although Respondent was a distributor of Complainant’s product, Respondent was not authorized to use Complainant’s mark in its registered domain name and thus, was not using the domain name as a bona fide offering of goods or services, nor a legitimate noncommercial or fair use).

In the instant case, neither Complainant nor Respondent has provided the relevant distributorship agreement to the Panel.  Regardless, panels have found that upon termination of distributorship agreements, rights and legitimate interests in a domain name, which is identical or confusingly similar to a complainant’s mark, cease to exist.  Here, the distributorship agreement has terminated and, thus, Respondent is not using the disputed domain name in connection with 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 Gen. Ecology, Inc. v. Metcalf, FA 146569 (Nat. Arb. Forum Apr. 11, 2003) (finding that Respondent lacked rights and legitimate interests in the <seagull-4.com> domain name based in part on the “evidence on record that Respondent was terminated as a distributor of Complainant's SEAGULL products”); see also UVA Solar GmbH & Co. K.G. v. Kragh, D2001-0373 (WIPO May 7, 2001) (finding that a former distributor of Complainant’s products maintained rights and legitimate interests in respect to a domain name during the duration of its distributorship agreement, but such rights and interests ceased upon termination of the agreement).     

In addition, nothing in the record sufficiently indicates that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  Without a Response from Respondent, the Panel relies upon the evidence advanced by Complainant and finds that Respondent is not commonly known by the <shopherbalife.com> domain name.  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 notion that a respondent is commonly known by a domain name, the notion must be rejected); see also 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Complainant has established Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

One week after Respondent registered the disputed domain name, Respondent filed an application for a distributorship agreement with Complainant.  The proximity in time and nature between these two events indicates that Respondent had actual knowledge of Complainant’s rights in the HERBALIFE mark at the time the disputed domain name was registered.  The fact that Respondent was later awarded a distributorship does not negate the fact that at the time of registration, Respondent was not authorized to use Complainant’s HERBALIFE mark in a domain name.  Thus, Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Assoc. Materials, Inc. v. Perma Well, Inc., FA 154121 (Nat. Arb. Forum May 23, 2003) (finding that Respondent’s actual knowledge of Complainant’s rights in the ULTRAGUARD mark, inferred from the fact that Respondent was a distributor of Complainant, along with Respondent being on notice of its own lack of rights, evidenced that the domain name was registered and used in bad faith).

Respondent is currently using the disputed domain name in bad faith because the distributorship agreement has terminated and Respondent is not authorized to use the disputed domain name, which is confusingly similar to Complainant’s HERBALIFE mark.  See Labrada Bodybuilding Nutrition, Inc. v. Garrett, FA 94293 (Nat. Arb. Forum Apr. 27, 2000) (finding that Respondent’s use of domain names confusingly similar to Complainant’s mark after their distributor agreement had expired constituted bad faith use); see also Great Am. Knitting Mills Res. Corp. v. Sock Co., FA 95841 (Nat. Arb. Forum Dec. 7, 2000) (stating that “[w]hile Respondent may continue to sell Gold Toe socks acquired from various sources, it is not an ‘authorized’ retailer of Gold toe socks, and it is improper to utilize domain names implying to the contrary” in finding that Respondent used the disputed domain names in bad faith).

Furthermore, Respondent’s <shopherbalife.com> domain name is confusingly similar to Complainant’s mark and resolves to a commercial website.  Respondent’s commercial use of the domain name is evidence that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that Respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).

Complainant has established Policy ¶ 4(a)(iii).

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 <shopherbalife.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  July 19, 2004

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