WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Herbalife International, Inc. v. Herbalife.net

Case No: D2002-0234

Complainant is Herbalife International, Inc. ("Herbalife"), 1800 Century Park East, Los Angeles, California, United States of America.

The Respondent (registrant of <herbalife.net>) is Herbalife Distributor, 2740 Fanwood, Long Beach, California, United States of America; Harry Erickson is the administrative, technical, and billing contact.

The Domain Name in issue is: <herbalife.net> ("the Domain Name").

The registrar is Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon, Virginia, United States of America.

The WIPO Arbitration and Mediation Center (the Center) received Herbalife’s Complaint in hard copy on March 11, 2002 and via email on March 15, 2002.

The Center contacted NSI on March 19, 2002, requesting verification of the Domain Name’s registration. On March 20, 2002, the Center received confirmation from NSI that:

1) Complainant had sent it a copy of the Complaint, 2) the Domain Name was registered with NSI, 3) Respondent is the current registrant, 4) the Policy applies to the Domain Name, and 5) the current status of the Domain Name is active. NSI additionally confirmed the contact names, addresses, email addresses, and phone number for the administrative, technical, and billing contact for the Domain Name.

After verifying that the Complaint (henceforth, the "Complaint") complied with the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules), and the Uniform Domain Name Dispute Resolution Policy (the Policy), the Center notified the registrant and technical contact on March 21, 2002, of the commencement of the administrative proceeding. It notified Respondent that Complainant had submitted a Complaint as described above. Accordingly, the administrative proceeding commenced on March 21, 2002. The notification requested that Respondent reply by April 10, 2002, in accordance with Paragraph 5 of the Rules and the Supplemental Rules. Furthermore, the notification identified the consequences of default, namely that a panel would still decide the case and that, in accordance with Rules, Paragraph 14, the panel could draw any appropriate inferences from the default. The notification additionally notified Respondent that Complainant elected a single member panel who would be appointed within five days after the Response was due. In the event that Respondent preferred a three member panel, Respondent could so designate, with the required payment, and would have the option to nominate three panelists for possible inclusion on the panel. Finally, Respondent was notified of the identity and contact information of the Case Manager. A copy of the notification was e-mailed to Complainant.

Having received no Response to the notification by the April 11, 2002 deadline, the Center issued a Notification of Respondent Default on April 15, 2002. The notice stated that the Center would appoint a single panelist to comprise the Panel, the Panel would be informed of Respondent’s default and it would be up to the Panel’s discretion whether to consider any late-filed Response.

On April 29, 2002, Complainant was advised of the identity of the undersigned sole panelist. Additionally, the Center notified Complainant that the panelist had complied with Paragraph 7 of the Rules by submitting a Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Arbitration and Mediation Center.

Herbalife’s Complaint alleges, and submits evidence, that its HERBALIFE mark is federally registered in connection with a wide variety of goods and services in the United States. Herbalife has also registered the HERBALIFE mark in 74 other countries throughout the world as shown in Exhibit 5 to the Complaint. Herbalife’s federal registration in the United States for its HERBALIFE trademark predates the Respondent’s registration of the Domain Name at issue here.

Herbalife conducts business on the Internet at <herbalife.com>.

As stated, NSI verified that the Policy applies to the Domain Name. Therefore, as this

proceeding is likewise governed by the Policy in accordance with it, the Rules, and the

Supplemental Rules, the Panel has jurisdiction to decide this dispute.

Herbalife asserts as follows:

•Complainant has enjoyed long and exclusive use of the HERBALIFE trademark.

•The HERBALIFE mark is famous.

•The disputed Domain Name is identical to the trademark HERBALIFE.

•The addition of the ".net" top level domain (TLD) does not differentiate the Domain Name from the mark.

•Complainant has made substantial worldwide commercial use of the HERBALIFE mark prior to Respondent’s registration of the Domain Name.

•Respondent is not a licensee is therefore has no legitimate interest in the Domain Name or in the HERBALIFE mark.

•Respondent has not engaged in commercial activity under the HERBALIFE mark, nor has the Respondent set forth any legitimate right to use the Domain Name.

•Respondent has registered and used the Domain Name in bad faith.

As noted above, Respondent has provided no Response, although the deadline for doing so expired on April 11, 2002. Accordingly, the Respondent is in default. Given Respondent’s default, the Panel can infer that Complainant’s allegations are true where appropriate to do so. Talk City Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000). Nonetheless, Complainant retains the burden of proving the three requisite elements of Paragraph 4(a).

Accordingly, the Panel now proceeds to consider this matter on the merits in light of the Complaint, uncontested as no Response was filed, the Policy, the Rules, and other applicable authority.

Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to each Domain Name, each of the following:

(i) The Domain Name in issue is identical to Herbalife’s trademark at issue here; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name was registered and is being used in bad faith.

In this case, the Panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions made and supported by evidence submitted by Complainant. The Panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented to the Panel by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.

In particular, by defaulting and failing to respond, Respondent has failed to offer the Panel any of the types of evidence set forth in Paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interest in the Domain Name, such as use or preparation to use the Domain Name prior to notice of the dispute, being commonly known by the Domain Name, or making legitimate noncommercial or fair use of the Domain Name.

The Domain Name <herbalife.net> is, but for the addition of the .net top-level domain (TLD), identical to the registered trademark HERBALIFE belonging to Complainant Herbalife, as well as to Complainant’s own domain name <herbalife.com>. Because web users typically add a TLD such as ".com" or ".net" to a mark when attempting to locate the mark’s owner on the Internet, and because the TLD is a functional necessity rather than an arbitrary trademark choice, the TLD is properly ignored when considering similarity. See College Summit, Inc. v. Yarmouth Educational Consultants, Inc., WIPO Case No. D2000-1575 (January 17, 2001).

For the above reasons, the Panel concludes that the Domain Name is identical to Herbalife’s trademark. Complainant has met the requirement of Paragraph 4(a)(i) of the Policy.

There is no evidence in the record that Respondent has any legitimate interest in the Domain Name. The fame, distinctiveness, strength, and priority of use of Complainant’s mark, coupled with the Domain Name being identical to Complainant’s mark and Respondent’s failure to advance any of the defenses provided in Paragraph 4(c) of the Policy, lead this Panel to conclude that Respondent has no rights or legitimate interest in the Domain Name.

In Exhibit 6 of the Complaint, Herbalife submits copies of three letters which were sent to Mr. Harry Erickson, the administrative contact for the Respondent. These letters were dated March 6, 2001, May 17, 2001, and August 8, 2001. The letters put Respondent on actual notice that the HERBALIFE mark is owned by Herbalife and requested that Respondent discontinue use of the Domain Name. Complainant relies upon this correspondence, and upon Respondent’s failure to answer the letters, in support of its bad faith theory. Nonresponse to a letter, however, proves little, absent an obligation to respond; and in any event these letters post-date Respondent’s registration of the Domain Name.

Of greater significance are the fame of the mark, its federal registration, certain terms incorporated by Respondent into its registration, and the Respondent’s lengthy passive holding of the Domain Name.

Marks that have a "high degree of inherent or acquired distinctiveness" are entitled to a greater scope of protection than others. See Digital City Inc. v. Smalldomain, WIPO Case No. D2000-1283 (November 6, 2000). This Panel finds that Complainant has demonstrated that its longstanding use of the HERBALIFE mark, its very high volume of business transacted under or in connection with the mark, as well as the worldwide use and recognition of the mark, places its mark in the category of trademarks with a "high degree of … acquired distinctiveness" and that the mark, as a result of its fame, enjoys a wide scope of protection. This fame makes it likely that Respondent was aware of the existence of the Complainant and of its trademark rights as of the time he registered it.

The federal registration of the HERBALIFE mark prior to Respondent’s registration of the Domain Name provides further support for this conclusion. Under Section 22 of the United States Trademark Act, "[r]egistration of a mark on the principal register . . . shall be constructive notice of the registrant’s claim of ownership thereof." As a matter of United States trademark law, therefore, it may be presumed that Respondent was on notice of Complainant’s rights in the HERBALIFE mark prior to registering the Domain Name. See, e.g., Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059 (April 2, 2000).

More obvious still is the fact that Respondent listed with NSI as the "owner" of the registration the name "Herbalife Distributor" thereby implying knowledge of Complainant (and suggesting some intent to distribute its products).

Respondent, however, has made no apparent use of the Domain Name. Attempts to access the URL <www.herbalife.net> do not resolve to an active web site. The fact that Respondent was in possession of the Domain Name for a year and a half and still did not use the Domain Name may, in an appropriate context, constitute evidence of bad faith. See, e.g., Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) (registration together with inaction can constitute bad faith). Numerous Panels have followed this decision. See, e.g., Ticketmaster Corp v. Spider Web Designs, Inc., WIPO Case No. D2000-1551 (February 4, 2001) (citing cases). While this Panel is not prepared to conclude that nonuse of a Domain Name will automatically constitute bad faith, it is, on the facts of this case, a significant factor. "When a domain name comprised of a genuinely famous mark is registered and then simply held by the registrant with no use at all, that itself constitutes bad faith and cybersquatting." General Motors Corp. v. Vette Owners, WIPO Case No. D2000-0595 (October 20, 2000) citing Telstra.

Taking into account the longstanding use of the HERBALIFE mark by Complainant combined with the worldwide registration, the fame of the mark, and the lengthy passive holding of the Domain Name by Respondent, as well as Respondent’s failure to respond, either in the manner required by this proceeding or otherwise, the Panel is persuaded that Respondent engaged in bad faith registration and use as defined in the Policy.

In light of the above findings and analysis, the Panel decides that Herbalife has met its burden of proving that: (1) the Domain Name is identical to the mark belonging to the Complainant; (2) Respondent has no rights or legitimate interest in the Domain Name; and (3) the Domain Name has been registered and is being used by Respondent in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy and Rule 15, the Panel requires that registration of the <herbalife.net> Domain Name be transferred to Herbalife.