WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Biotreasures, Inc. v. Ana D. Szczepanski
Case No. D2000-1591
1. The Parties
1.1 The Complainant is Biotreasures, Inc., a corporation organized and existing under the laws of the State of Arizona, United States of America, having its principal place of business at 5542 North Mesquite Drive, Prescott Valley, Arizona, United States of America.
1.2 The Respondent is Ana D. Szczepanski, an individual having an address at 21314 NE 19 Ct., N. Miami Beach Florida, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <herbalite.com>, which domain name is registered with Register.com, Inc., based in New York, New York, United States of America.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on November 27, 2000, and the signed original together with four copies forwarded by express courier was received on November 17, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated November 23, 2000.
3.2 On November 23, 2000, a Request for Registrar Verification was transmitted to the registrar, Register.com, Inc. ("RI") requesting it to: (1) confirm that the domain name at in issue is registered with RI; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
3.3 On November 30, 2000, RI confirmed by facsimile that the domain name at issue is registered with RI, is currently in active status, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on December 4, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, RI and ICANN), setting a deadline of December 23, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondent’s participation in these proceedings.
3.6 A Response was received on December 15, 2000 in electronic format, and on December 20, 2000 in hard copy. An Acknowledgment of Receipt (Response) was sent by the WIPO Center on December 27, 2000.
3.7 On January 18, 2001, having received M. Scott Donahey’s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Projected Decision Date was January 31, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.
3.8 On January 22, 2001, Complainant sought permission from the Panel to file a reply.
4. Factual Background
4.1 Complainant applied for registration of the mark and design BIOTREASURES HERBAL LITE in connection with dietary supplements with the United States Patent Office ("USPTO") on July 28, 1999, showing a first use as of March 21, 1998, and a first use in commerce of August 19, 1998. Annex D to the Complaint. Complainant submitted evidence that its application to register the trademark HERBAL LITE in connection with dietary supplements with the USPTO on July 6, 2000, had been approved and that the trademark issued on November 21, 2000. (Communication from Complainant's counsel to the WIPO Center dated December 1, 2000, and visit to USPTO web site.) (Footnote 1)
4.2 Complainant registered the domain name <herballite.com> on July 24, 1998, and uses that domain name to resolve to a web site which advertises and offers for sale Complainant's Herbal Lite dietary supplement products. The products are advertised to promote weight loss. Complaint, Annex E.
4.3 Complainant has not licensed nor otherwise authorized Respondent to sell its Herbal Lite products.
4.4 Respondent registered the domain name at issue on January 3, 2000.
4.5 Respondent uses the domain name at issue to resolve to a web site identified as Evitality and located at the URL www.evitality.net/aszczepanski/. On that web site Respondent offers various weight loss products for sale. No mention or use is made of Complainant's HERBAL LITE mark or of the mark for Herbalife®, for which Respondent claims she is a distributor.
4.6 After Complainant learned of the registration of <herbalite.com>, on February 29, 2000 Complaint's counsel sent a letter by courier demanding that Respondent discontinue use of the domain name and of Complainant's marks.
4.7 On March 3, 2000 Complainant's counsel received a telephone call from a man who represented that he was calling on behalf of Respondent. Complainant contends that the man identified himself as an attorney for Respondent. Respondent contends that it was her husband who placed the call and that he did not identify himself as an attorney. Complainant contends that Complainant's counsel was told that Respondent had received telephone requests for Complainant's products and that the callers were informed that Respondent did not sell such products. Respondent denies this.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered as a domain name a mark which is identical or confusingly similar to Complainant's registered trademark, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
5.2 Respondent contends that she is a distributor of Herbalife®, that a domain name using that mark as a Second Level Domain name ("SLD") was unavailable, that Respondent selected the domain name at issue "through a process of elimination of what wasn't available in an effort to find something that sounded like Herbalife®," that Respondent was unaware of Complainant or of Complainant's applications at the time she registered the domain name at issue, and that Complainant had chosen a name so close to the well known Herbalife® mark that it may constitute trademark infringement and unfair competition.
6. Discussion and Findings
6.1 Complainant submitted a request that it be permitted to submit a reply. Since no reply is permitted under the Uniform Rules, the Panel treats this as a request under Uniform Rules, Paragraph 12. Because the Panel is of the opinion that additional submissions are unnecessary and would not assist the Panel in resolving this matter, Complainant's request is denied.
6.2 Paragraph 15(a) of the Uniform Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
6.3 Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.4 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
(2) that the Respondent has no legitimate interests in respect of the domain name; and,
(3) that the domain name has been registered and used in bad faith.
The Panel finds that the domain name at issue is confusingly similar, if not identical to a mark in which Complainant has rights. Accu Weather, Inc. v. Global Net 2000, Inc., NAF Case No. FA94645 (finding that the omission of one letter from a mark in a SLD did not alter the fact that the SLD was identical to the mark).
The Panel further finds that Respondent has no rights or legitimate interests in respect of the domain name at issue. Respondent's position as an Independent Distributor of the products of Herbalife® does not give her rights or legitimate interests in the domain name <herbalite.com>. Respondent is not a distributor nor is she authorized to sell Complainant's Herbal Lite products. Respondent purportedly wanted to register a name that sounded like Herbalife®. While "herballyphe" or "erbullife" might have met her requirements, "herbalite" does not.
The Panel also finds that the name has been registered and is being used in bad faith. Respondent is offering herbal weight loss products on the site to which the domain name at issue resolves, products that are in direct competition with those of Complainant. Shore Media Ventures Inc. v. Both Worlds Inc., eRes Case No. AF-0228. Respondent admits that she performed a search of available domain names in an attempt to find one that sounded like Herbalife®, a process that would have undoubtedly uncovered Complainant's <herballite.com> domain name. The Panel finds that Respondent's conduct comes within that prohibited by Paragraph 4(b)(iv) of the Policy.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical to the mark in which the Complainant has rights, that the Respondent has no rights to or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <herbalite.com> be transferred to the Complainant.
M. Scott Donahey
Dated: January 23, 2001
1. Reviewing the information available at the USPTO web site is tantamount to the taking of Judicial Notice by a United States Federal Court. See, Federal Rules of Evidence, Rule 201.