The Complainant is Herbalife International, Inc. of Los Angeles, California, United States of America ("USA" or "United States"), represented by Manatt, Phelps & Phillips, LLP, USA.
The Respondent is Shang Zhi Song of Guangzhou, Guangdong, China.
The disputed domain name <chinaherbalife.com> is registered with Xin Net Technology Corp. (the "Registrar").
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on December 5, 2017. On December 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On December 19, 2017, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that 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 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on December 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 17, 2018.
The Center appointed Sok Ling MOI as the sole panelist in this matter on January 26, 2018. 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.
Founded in 1980, the Complainant is a global nutrition company that has grown from a nutrition supplement program created by a single individual in Los Angeles. Its HERBALIFE trade mark has been used for over 35 years and is known around the world for its lines of dietary supplements, nutritional supplements and personal care products.
The Complainant operates in more than 60 countries worldwide and boasts of some 1.5 million employees and independent distributors of its HERBALIFE products. It commits millions of dollars every year to the promotion and marketing of its HERBALIFE trade mark. In 2007, a year before the registration of the disputed domain name, the Complainant generated revenues of over USD 2 billion.
The Complainant established presence in China since 1994. In 2007, it operated 90 retail Herbalife stores across various provinces of China, employing some 129,000 people.
The Complainant owns more than 300 active trade mark registrations in over 100 countries for its HERBALIFE mark, including the following:
|
Jurisdiction |
Mark |
Registration No. |
Class No. |
Registration Date |
|
United States |
HERBALIFE |
1254211 |
3, 5 |
October 18, 1983 |
|
United States |
HERBALIFE |
1969346 |
9, 18, 21, 25, 32, 42 |
April 23, 1996 |
|
United States |
HERBALIFE |
3324677 |
5, 16, 20, 29, 30, 32 |
October 30, 2007 |
|
United States |
HERBALIFE |
4402483 |
35 |
September 17, 2013 |
|
China |
HERBALIFE |
698316 |
32 |
July 21, 1994 |
|
China |
HERBALIFE |
699153 |
30 |
July 28, 1994 |
|
China |
HERBALIFE |
699489 |
3 |
July 28, 1994 |
|
China |
HERBALIFE |
6039153 |
3 |
February 28, 2010 |
|
China |
HERBALIFE |
19806612 |
35 |
June 21, 2017 |
The disputed domain name was registered on September 1, 2008. According to the evidence submitted by the Complainant, the disputed domain name resolved to a website which reproduced the Complainant's HERBALIFE mark, logo and trade dress, claiming to be "Herbalife (China) Diet Network" (translated) and offering for sale products bearing the Complainant's HERBALIFE mark.
The Complainant contends that the disputed domain name is confusingly similar to its trade mark HERBALIFE, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith. The Complainant requests for the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding. The Respondent, who is presumably a native individual, did not respond to the issue of language of the proceeding.
The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain name is registered in Latin characters, rather than Chinese script;
(b) according to the evidence submitted by the Complainant, the website to which the disputed domain name resolves contains contents in English; and
(c) the Respondent's email address "homedog…@163.com" comprises English words.
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Respondent has been given the opportunity to respond to the issue of the language of the proceeding and to present its case in this proceeding; and
(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.
The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:
The Panel accepts that the Complainant has rights in HERBALIFE by virtue of its use and registration of the same as a trade mark.
The disputed domain name incorporates the Complainant's trade mark HERBALIFE in its entirety. The addition of the geographical term or country name "china" does not reduce the confusing similarity between the disputed domain name and the Complainant's trade mark. The addition of the generic Top-Level Domain ("gTLD") ".com" does not impact the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant's trade mark in this case.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.
Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of proof to establish that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence in support of its rights or legitimate interests in the disputed domain name. The respondent may establish its rights in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd,
WIPO Case No. D2013-0974.)
The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the HERBALIFE trade mark or to seek registration of any domain name incorporating the trade mark. There is also no evidence suggesting that the Respondent has acquired any trade mark rights in the term "herbalife".
According to the evidence submitted by the Complainant, the Respondent was using the disputed domain name to publish a website that appeared to pass itself off as the Complainant's official website targeting the China market. The said website reproduced the Complainant's HERBALIFE mark, logo and trade dress, claiming to be "Herbalife (China) Diet Network" (translated) and offering for sale products bearing the Complainant's HERBALIFE mark. This suggests that the Respondent is using the disputed domain name to mislead Internet visitors by creating an affiliation with the Complainant where there is none.
The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to come forward with evidence of its rights or legitimate interests in the disputed domain name. Since the Respondent has failed to respond, the Panel determines that the prima facie case has not been rebutted.
Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
The Complainant has used HERBALIFE as its trade mark since 1980, and enjoys a strong reputation worldwide and a significant online presence. The Panel accepts that as a result of its extensive use and promotional activities, HERBALIFE has become a well-known mark in the dietary and nutritional supplement industry throughout the world. There is no doubt that the Respondent was aware of the Complainant's trade mark when it registered the disputed domain name as it was in fact used to publish a website that reproduced the Complainant's HERBALIFE mark, logo and trade dress, and offering for sale products bearing the Complainant's HERBALIFE mark.
Registration of a domain name that incorporates a complainant's well-known trade mark suggests opportunistic bad faith. The Respondent has in all likelihood registered the disputed domain name in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name.
By adding the geographical term or country name "china" to the Complainant's HERBALIFE trade mark in a domain name, the Respondent is seeking to create an impression that its website is the Complainant's official website for the Chinese market. This has the potential to divert Internet users looking for the Complainant's products to the Respondent's website. The Respondent's use of the Complainant's trade mark HERBALIFE on its website further creates an impression of the existence of an affiliation with the Complainant where there is none. The Panel determines that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of the Respondent's website. As such, the Panel is satisfied that the Respondent is using the disputed domain name for mala fide purposes and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.
Such use of the disputed domain name not only misleads the public but also causes disruption to the Complainant's business. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iii) of the Policy are also applicable to the present case.
The Center was not able to reach the Respondent at the physical address and facsimile number recorded with the Registrar, which strongly suggests that the Respondent had provided false contact details at the time of registering the disputed domain name. The Panel considers this an attempt by the Respondent to conceal his identity which further suggests a lack of bona fide.
The Respondent has not denied the Complainant's allegations of bad faith. In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
Accordingly, the Complainants have satisfied the requirements of the third element under paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <chinaherbalife.com> be transferred to the Complainant.
Sok Ling MOI
Sole Panelist
Date: February 11, 2018