WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Herbalife International Inc v. Sergey Podyakov (aka herbatel)
Case No. D2001-1419
1. The Parties
The Complainant is Herbalife International, Inc., a Nevada corporation with its principal place of business at Los Angeles, CA, U.S.A. The Complainant is represented by Mr. Mark Chizhenok of the law firm Gorodissky & Partners, Moscow, Russian Federation.
According to the Response filed, the true Respondent is Sergey Podyakov of St. Petersburg, Russia. The Respondent is represented by Mr. Vladimir Dmitriev of Quantum Ltd, Attorneys of St. Petersburg, Russian Federation.
2. The Domain Name and Registrar
The domain name at issue is <herbatel.com>. The domain name is registered with Tucows, Inc., of Toronto, Canada ("the Registrar"). The domain name was registered to Mr. Podyakov on May 15, 2000. However, the registrant of the domain name as advised by the Registrar is Herbatel, Box 172, Express Post, St Petersburg, Russia. There is no mention of the Respondent, Sergey Podyakov, in the records of the Registry.
3. Procedural History
A Complaint submitted by Herbalife International, Inc., was received on November 30, 2001, (electronic version) and December 4, 2001, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center"). Some minor amendments were made to the Complaint before dispatch to the Respondents named by the Complainant, viz Dermajetics/Herbatel. The Complaint related to two names, ie <dermajectics.com> and <herbatel.com>. The Complainant named as Respondent for both names "Dermajetics/Herbatel" alleging that there was only one person involved as Respondent in both domain name disputes.
On December 7, 2001, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, requesting it to:
- Confirm that a copy of the Complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
- Confirm that the domain name <herbatel.com> is registered with the Registrar.
- Confirm that the person identified as the Respondent is the current registrant of the domain name.
- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.
- Confirm that the Uniform Domain Name Dispute Resolution Policy ("UDRP") was in effect.
- Indicate the current status of the domain name <herbatel.com>.
By email dated December 7, 2001, the Registrar advised WIPO Center as follows:
- It had received a copy of the Complaint from the Complainant.
- It is the Registrar of the domain name registration <herbatel.com>.
- "Herbatel" is shown as the "current registrant" of the domain name.
- The administrative, billing and technical contact is Administrator, System, Box 172, Express Post, St. Petersburg, Russian Federation.
- The UDRP applies to the domain name.
- The domain name registration <herbatel.com> is currently on "hold" status.
- The Registrar has currently incorporated in its agreements the Uniform Domain Name Dispute Resolution Policy ("UDRP") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").
- The advice from the Registrar that the domain name in question is on "hold" indicates the Respondent has not requested that the domain name be deleted from the domain name database. The Respondent has not sought to terminate the agreement with the Registrar. Accordingly, the Respondent is bound by the provisions of the Policy. The Respondent has not challenged the jurisdiction of the Panel.
- Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center on December 18, 2001, transmitted by post-courier and by email a notification of the Amended Complaint and Commencement of Administrative Proceedings to the Respondent as named in the Complaint. A copy of the Amended Complaint was also emailed to the Registrar and ICANN.
- The Complainant elected to have its Complaint resolved by a single Panelist; it has duly paid the amounts required of it to the WIPO Center.
- The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. The Respondent Sergey Podykov filed a Response by email on January 8, 2002, and by hard copy of January 15, 2002. He protested at the joinder of the two domain names in the one Complaint and disavowed any connection with the domain name <dermajetics.com>.
- WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.
- The Panelist duly advised acceptance and forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules. Upon receipt of electronic copies of the Complaint and Responses (including a Response filed in support of the name <dermajectics.com>) the Panelist issued a Procedural Order which is annexed hereto as Annexure 1. The Panel severed the Complaint into two, each involving one of the names in the original Complaint. This decision therefore relates solely to the domain name <herbatel.com>. The Complaint in relation to the domain name <dermajectics.com> has now been terminated at the Complainantís request.
- On January 14, 2002, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel was required to forward its decision by January 28, 2002. However, because of the matters raised in the Procedural Order and discussed above, the date for forwarding the decision is extended to February 1, 2002.
- The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
4. Factual Background
The Complainant owns the trademark "Herbatel" which is registered in the European Community (No. 001345610) and the United States (No. 2269048). This trademark is used by the Complainant for long-distance telephone services. The mark is not registered in Russia.
5. Partiesí Contentions
The disputed domain name is identical to the Complainantís trademark.
The Respondent has no rights or legitimate interest in respect of the disputed domain name because:
- the Complainant did not authorise the Respondent to use the name;
- the Respondent has no corresponding trademark registrations for HERBATEL;
- The Respondent does not have a trade name or a company name similar to the disputed domain name. The information in Whois about the name of the Respondent should be considered fictitious since for each domain name the Respondent owns a different name of person is mentioned while the address remains the same.
- The Respondent has not been commonly known by the domain name in question nor does the Respondent offer any particular service or information through the name.
The disputed domain name was registered by the Respondent in bad faith because of the following:
- The Respondent registered the domain name in question in order to prevent the Complainant from reflecting its mark in a corresponding domain name. According to Network Solutionsí WHOIS, the Respondent has registered more than 100 (one hundred) ".com" domain names using the address the same or close to that for <herbatel.com>.
- The way the Respondent used the disputed domain names cannot be considered as bona fide offering of goods and services. The catalogue of WWW resources that was presented at the website is a simple compilation of links to commonly-known Russian recourses. This web catalogue may be compiled in two minutes by every frequent user of the Russian internet. The said web catalogue may be seen now under most of the other domain names referred to above (some of them marked "For sale"). The website also presents nothing special (only imported news-string and web-form). The same content may be found under other domain names of Respondent.
The domain name <herbatel.com> was registered by a Californian company on March 9, 1998. The application by the Complainant for trademark registration was first made on July 20, 1998, and was used in commerce by the Complainant only since May 1998. Hence the domain name has been used in commerce prior to the first use of the Complainantís mark.
The Respondent has for a long time specialized in the raising, cultivation and sales of medicinal herbs, he has a great interest in collecting plants, and is nicknamed "Herbatel" in English spelling. He has been commonly known by this name as an individual. The word "Herbatel" is derivative from the noun "Herb" (in Russian herbarium) with the suffix "tel" meaning a person occupied in a definite kind of activity (like the suffix "-er" in the words "builder", "teacher").
In 1999 the Respondent wished to found his own business for raising, cultivating and selling herbs in medical purposes. He then discovered the domain name <herbatel.com> was available.
In 2000, the Respondent applied to "ExpressPost" (a domain name Registrar in Russia) to register the domain name. This company granted him a temporary mailing address (P.O. 172, ExpressPost, Saint-Petersburg, 193015, Russia) and informed him that the domain name <herbatel.com> was free as of May, 2000. He then registered the domain name and started preparations for organizing his own business. For that purpose he registered several more domain names (e.g. >herbatel.spb.ru>). In November, 2001, the establishment of this business was suspended due to lack of funding.
It is a commonly known practice for companies registering domain names for their clients to provide standardized content for their websites, also known as modules or parking pages. Such technique is used by the leaders of the market like Verisign, Inc. or Register.com, Inc. The website content in this case is provided usually for free or for a small fee offering a temporary solution for clients developing their websites. Thus hundreds or thousands of websites can share the same or similar content. This common practice cannot lead to the conclusion that a domain name holder, using standardized content for its website, acts in bad faith.
Thus, the Complainant has failed to prove that the Respondent Sergey Podyakov has no rights or legitimate interest in the domain name <herbatel.com> and that the domain name <herbatel.com> has been registered and used in bad faith.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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".
The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:
- 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
- That the Respondent has no legitimate rights or interests in respect of the domain name; and
- That the domain name has been registered and used in bad faith.
The disputed domain name is identical to the Complainantís mark. The Respondentís claim that the domain name was originally registered before the Complainant applied for its mark is irrelevant because the Respondent was not the registrant at the time. One cannot speculate on the reason why the Californian first registrant registered the name. The focus on the time is when this Respondent registered the name, and his motivations at that time. Significantly, he has not chosen to disclose why the name was not registered in his own personal name but in the name of "herbatel".
As to whether the Respondent has any legitimate rights, the Complainant gave him none. However, Paragraph 4(c) of the Policy allows a Respondent to rely on, inter alia, (a) a claim that Respondent is commonly known by the disputed domain name and/or (b) Respondent has made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods and services. Although the Response is somewhat confused, the Respondent appears to rely on both the above.
The evidence that Respondent is commonly known by the name "herbatel" is spartan in the extreme. There is no affidavit from him or anybody else verifying this broad assertion. Nor is there any evidence from some expert in the Russian language to support the linguistic argument asserted. The Panel finds that Respondent fails to supply sufficient evidence that he comes within this provision of Paragraph 4(c).
Likewise, the claim that Respondent had made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of service is fatally weak. The evidence of demonstrable preparation, apart from the Respondentís unsubstantiated assertion, comes down to the mere registration of the name and acceptance of a module of a website provided by ExpressPort. There is not shown any attempt to develop the website. Nor is there any indication of how or what goods were to be marketed on the website.
Accordingly, the Complainant has discharged its onus on the second criterion.
As to bad faith, there is no allegation that the Respondent in Russia was ignorant of the Complainantís marks registered in the European Community and the United States. The fact that Respondent has registered other names with "herbatel" overtones indicates that he well knew of the Complainant. Indeed, if he were an authority on herbal remedies (as he asserts), one can infer that he must have heard of the Complainant. The fact that he purchased the name indicates a lack of enquiry or a reckless disregard for Complainantís possible trademark rights. The fact that he purchased the domain name other than in his own name indicates a desire not to be readily associated with the name.
The lack of development of the website indicates continuing bad faith particularly, if, as Respondent alleges, he was financially unable to complete the website. One has to wonder why he wishes to retain the name in these circumstances.
Accordingly, the Panel finds the third criterion proved.
For the foregoing reasons, the Panel decides:
(a) That the domain name registered in the name of "herbatel" is confusingly similar to the trademark to which the Complainant has rights; and
(b) That neither the Respondent nor "herbatel" (i.e. the domain name registrant) have any rights or legitimate interests in respect of the domain name; and
(c) That the 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 <herbatel.com> be transferred to the Complainant.
Ian Barker QC
Dated: January 28, 2002
WIPO Arbitration and Mediation Center
PROCEDURAL ORDER NO. 1
Herbalife International, Inc., v dermajetics.com and herbatel.com
Case No. D 2001-1419
Case No. D2002-0154
1. A Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") on November 30, 2001, by Herbalife International, Inc., of Century City, California, USA. The Complaint concerned two Domain Names, <dermajetics.com> and <herbatel.com>.
2. The Respondents cited by the Complainant were "herbatel.com" of Box 172, St Petersburg, Russia, and "dermajetics.com" of Box 544, St Petersburg, Russia.
3. The Complainant alleged "that the same Respondent hides behind these two addresses because of the following":
"- both domain names were associated with common name-server ns.neonet.com 220.127.116.11 (at least till September 12, 2001, see Annex 2);
- there were the same content on the web-servers for these two domain names (at least till June 04, 2001, see Annex 3);
- disputed domain names are only a small part of the huge domain name pool (about 200 domain names), the Whois record of which shows the same name-server and contact details as mentioned above (see Annex 4)."
4. After obtaining Registrar verification (from a different Registrar for each name) the Center requested certain amendments to the Complaint. An amendment to the Complaint was filed by the Complainant on December 11, 2001 (email) and December 14, 2001 (hard copy). This Complaint was then sent by the Center to the addresses referred to in paragraph 2 above with the usual notifications to Respondent.
5. On January 8, 2002, a Response was filed (by email and fax only and not by hard copy) by Sergey Podyakov "also known as Herbatel" in respect of the Domain Name <herbatel.com> only by a law firm on his behalf. The hardcopies were received by the Center on January 15, 2002.
6. On January 9, 2002, a Response was filed (by email and fax and not by hard copy) by "OOO Artema" in respect of the Domain Name <dermajetics.com> only. The same law firm as acted for Sergey Podyakov filed this Response. The hardcopies were received by the Center on January 15, 2002.
7. Both Respondents asserted that they were not connected and objected to the joinder of the two Domain Names in the one Complaint. Counsel referred to Rule 4(c) of the Policy.viz. "The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder".
8. On January 9, 2002, the Complainant sought leave to file supplementary submissions on the grounds that some of the allegations in the Responses were untrue.
9. The Panel considers that the Complainant has not proved that, as at the date of filing of the Complaint, the two domain names were registered by the same domain name holder. The evidence presented by the Respondents suggests otherwise.
10. The Panel further considers that since both Respondents have filed Responses, no injustice is done by severing the two Complaints and considering them separately on the information supplied by the parties. A similar decision was reached by the learned Panelist in WIPO Case No. D2000-0836 which this Panel follows with approval.
11. The Complainant has shown no particular reason why the administrative process should be prolonged by its filing of a further pleading. I adopt, in this case, the reasoning on this aspect of the learned Panelist in WIPO Case No. D2000-0596 on the filing of additional material.
12. In view of the foregoing, the Administrative Panel hereby orders as follows:
Case D2001-1419 shall be severed into two separate administrative proceedings as follows:
(a) D2001-1419A - Herbalife
International Inc v Sergey Podyakov
[The Center subsequently numbered this case D2001-1419.]
(b) D2001-1419B - Herbalife
International Inc v OOO Artema.
[The Center subsequently numbered this case D2002-0154.]
13. The Complainant is required to pay an additional USD1,500 corresponding to a filing fee for case D2001-1419B by no later than seven (7) calendar days following the notification of Procedural Order No. 1 to the Parties. In the event that the Complainant fails to make the requested payment, Case No D2001-1419B as presently filed shall be considered terminated.
14. There shall be no further written submissions in either of the cases, except as specifically directed by the Administrative Panel following further review of the case records.
15. In view of the presence of exceptional circumstances, the deadline for the issuance of the Panelís decisions in both cases is postponed to February 1, 2002, as permitted by Paragraph 10(c) of the Rules.
16. The Center is directed to distribute this request to the Complainant via its authorized representative and to the Respondents at all known e-mail addresses.
Ian Barker QC
Dated: January 16, 2002