The Complainant is Himalaya Global Holdings Limited of Dubai, United Arab Emirates, represented by S. Majumdar & Company, Kolkata, India.
The Respondent is PrivacyProtect.org, Domain Admin of Netherlands and Anand Nadar of Mumbai, India.
The disputed domain name <himalayaherbals.net> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2010. On September 17, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On September 24, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 1, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on the same day.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2010.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on November 11, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
All references to the Respondent shall mean a reference to both Respondents.
The following summary sets out the uncontested factual submissions made by the Complainant:
4.1 The Complainant is the parent company of The Himalaya Drug Company, which is engaged in manufacturing and marketing Ayurvedic medicaments, a 5,000 year old system of medicine. Established by Mr. Mohammad Manal in the year 1930 under the name “MMI Corporation”, the Complainant changed its name to “Himalaya Global Holdings Ltd.” in October 2006.
4.2 Currently, the Complainant’s ayurvedic baby care, skin care, dental care and personal hygiene related products are marketed under the trademark HIMALAYA HERBALS on a worldwide basis with gross sales of approximately Indian Rs.3,31,16,28,757 (equivalent to approximately USD 7,35,91,750 in the year 2009) of which approximately 10% of the sales value are spent on promotional expenses.
4.3 The HIMALAYA HERBALS trademark has been used since 2001 and is registered in India and in other jurisdictions including Singapore, Mexico, China, Switzerland, Kuwait, Canada, Japan and the United Arab Emirates. Currently, the products are sold and marketed in more than 45 countries including Europe, the Americas, Middle East, Africa and Asia.
4.4 The Complainant had also registered and used the domain name <himalayaherbals.com> since July 5, 2000 as means to promote its products over the Internet.
4.5 The Complainant sent a warning letter to the First Respondent on April 13, 2010 and a reminder on April 29, 2010. A reply was received on April 29, 2010 from the Second Respondent claiming to respond on behalf of the support team of the disputed domain name. Based on the response, the Second Respondent was marketing the products of the Complainant as a ‘re-seller’.
4.6 Based on the response from the First Respondent regarding the actual identity of the registrant of the disputed domain name and the nature of the privacy services provided by the First Respondent, it appears that the First Respondent was holding the disputed domain name on behalf of the Second Respondent. As such, all references to the Respondent appearing hereinbelow shall mean a reference to the Second Respondent.
5.1 The Complainant contends that it has rights to the HIMALAYA HERBALS trademark and that the disputed domain name <himalayaherbals.net> which was created on January 19, 2008, is identical to the trademark of the Complainant. Moreover, the Complainant’s products under the trademark HIMALAYA HERBALS have gained widespread goodwill and reputation on a worldwide basis by virtue of the Complainant’s substantial sales of the products and the promotional and marketing efforts undertaken in relation thereto.
5.2 The Complainant further contends that the Respondent does not have any rights or legitimate interests to the disputed domain name because:
(a) the Complainant appoints its authorized dealers, retailers or stockists through exclusive agreements, thereby granting rights to market the Complainant’s products under the HIMALAYA HERBALS trademark. The Respondent is not an authorized dealer, retailer or stockist of the Complainant.
(b) the Complainant had not licensed or otherwise permitted the Respondent to use any of its trademarks nor had it licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of the trademarks of the Complainant.
5.3 In relation to the requirement of bad faith registration and use of the domain name, the Complainant contends as follows:
(a) the Respondent had knowledge of the Complainant’s website located at ”www.himalayaherbals.com“ and, therefore, registered and used the disputed domain name with the intention of associating itself with the Complainant through the sales of the Complainant’s products.
(b) it is highly unlikely that the Respondent was unaware of the existence of the Complainant’s trademark as HIMALAYA HERBALS is a reputable and well known trademark in India and abroad. The Respondent had, in fact, admitted to such knowledge by stating that it was a ‘reseller’ of the Complainant’s products.
(c) by reflecting the Complainant’s trademark in the disputed domain name, the relevant public would be led to believe that the entity owning the disputed domain is the Complainant or is in some way associated with the Complainant. This is bound to create confusion in the minds of the public as to its source, sponsorship, affiliation or endorsement.
(d) the act of selling the Complainant’s products at higher prices than those set by the Complainant adversely affects the Complainant’s business since the consumers would be led to believe that the Complainant’s products are expensive and, therefore, not affordable to the ordinary members of the public.
(e) the Respondent registered the disputed domain name with a view to negotiate a consideration in excess of the costs incurred by the Respondent in registering the same.
(f) the Respondent has also registered the domain name <liv52ds.com> which is presently the subject of a separate complaint before the Center. The Respondent, therefore, displays a pattern of conduct of registering domain names which contain the trademarks of third parties.
(g) the Respondent used privacy protection services in order to hide its true identity. As at the date of filing the Complaint, the WhoIs search revealed that PrivacyProtect.Org, Domain Admin (i.e. the First Respondent) was the registrant of the disputed domain name. This directly indicates the ulterior motive of the Respondent to remain anonymous.
The Respondent did not reply to the Complainant’s contentions.
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate rights in respect of the domain name; and
(c) that the domain name has been registered and is being used in bad faith.
The Panel is satisfied with the evidence adduced by the Complainant to evidence its rights to the trademark HIMALAYA HERBALS. The trademark is not only registered by the Complainant but it appears that it has also been used extensively on a worldwide basis.
The disputed domain name comprises the Complainant’s HIMALAYA HERBALS trademark in its entirety. As such the disputed domain name is identical to the Complainant's HIMALAYA HERBALS trademark for the purpose of the Policy.
The Complainant’s assertions had not been rebutted by the Respondent to indicate whether it has any rights or legitimate interests to the disputed domain name. There was also no evidence to indicate that the Respondent was known by the name “HIMALAYA HERBALS”.
The Complainant has adduced sufficient evidence that the disputed domain name is being used solely for commercial gain. The website located at ”www.himalayaherbals.net“ clearly suggests that the Respondent is using the website to promote the sale of the Complainant’s products. The Respondent also admitted that he was merely reselling the products in his reply to the Complainant’s letter of demand.
The Complainant further confirms that the Respondent has not been authorised to sell the Complainant’s products or to use the HIMALAYA HERBALS trademark given that he is not an authorized or licensed dealer, stockist or retailer of the Complainant.
The failure of the Respondent to reply to the Complainant’s contentions and the evidence adduced by the Complainant leads the Panel to find that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel could not find any justification, rights or legitimate interests on the part of the Respondent to the words comprising the disputed domain name.
Based on the above circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
The Panel agrees with the contention by the Complainant that the Respondent had knowledge of the Complainant’s trademark when it registered and started using the disputed domain name. The factors that were taken into account to arrive at this conclusion include the date of registration of the disputed domain name which was only as recent as 2008 when compared to the date when the Complainant started using the HIMALAYA HERBALS trademark and the ”www.himalayaherbals.com“ website, the widespread use of the trademark by the Complainant at a global level and the fact that the Respondent was reselling the Complainant’s products through its website.
In Philip Morris USA Inc. v. ymfg , WIPO Case No. D2010-0058, the panel found bad faith where the respondent used the MARLBORO trademark to promote similar or identical goods to the goods being sold by the complainant and found that the respondent clearly had knowledge of the complainant’s trademark when registering the same.
Similarly here, it appears that the Respondent intentionally attempted to attract for commercial gain Internet users to its web site, by creating confusion as to the source, sponsorship, affiliation or endorsement of products or services on its website. The Panel, therefore, finds that bad faith has been demonstrated under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <himalayaherbals.net> be transferred to the Complainant.
Syed Naqiz Shahabuddin
Sole Panelist
Dated: November 25, 2010