WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Herbalife International, Inc. v. OOO Artema (aka dermajetics)
Case No. D2002-0154
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, the Russian Federation.
The Respondent which filed a Response is OOO Artema of St. Petersburg, Russia. The Respondent is represented by Mr. Vladimir Dmitriev, of Quantum Ltd, Attorneys of St. Petersburg, Russia. As mentioned in Section 2 below, this Respondent is not shown as the registrant on the records of the Registrar.
2. The Domain Name and Registrar
The domain name at issue is <dermajetics.com>. The domain name is registered with Bulk Register.com, of Baltimore, MD, U.S.A ("the Registrar"). According to the Respondent, the domain name was registered on February 11, 2000, to one Sergey Knjavez who, by contract dated August 25, 2000, apparently assigned the name to the Respondent by way of security. However, the registrant of the domain name was "Dermajetics", ServicePoint, Box 544, St. Petersburg, Russia. There is no mention of Mr. Knjavez or the Respondent OOO Artema in the records of the Registrar.
3. Procedural History
The Complaint submitted by Herbalife International Inc. was received on November 20, 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 as named by the Complainant viz. "Dermajetics/Herbatel". The Complaint related to two names <dermajetics.com> and <herbatel.com>. The Complainant named as Respondent for both names "Dermajetics/Herbatel" alleging that there was only one person involved as Respondent.
On December 6, 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 requested by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
Confirm that the domain name <dermajetics.com> is registered with the Registrar.
Confirm that the person identified as the Respondent is the current registrant of the domain name <dermajetics.com>.
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.
By email dated December 6, 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 <dermajetics.com>.
"Dermajetics" at the address mentioned in Section 2 above is shown as the "current registrant" of the domain name.
The administrative and technical contact is "Dermajetics Administrator" at the same address.
The UDRP applies to the domain name.
The domain name registration <dermajetics.com> is currently in "Registrar Lock" 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 states that the domain name in question is in "Registrar Lock". 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 Dispute 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 named in the Amended Complaint. A copy of the Amended Complaint was also emailed to the Registrar and ICANN. This Amended Complaint covered the two disputed domain names.
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. OOO Artema filed a Response by email on January 9, 2002, and by hard copy of January 16, 2002. The present Respondent protested at the joinder of two domain names in the one complaint and disavowed any connection with the domain name <herbatel.com>. The Respondent involved with the <herbatel.com> domain name made a similar protest.
WIPO Center invited the Honourable 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 by him of electronic copies of the Complaint and the Responses of both the present Respondent and of the person claiming to be the Respondent in the <herbatel.com> domain name dispute, the Panel issued Procedural Order Number 1 severing the Complaint into two Complaints, each involving one of the domain names in the original Complaint. This decision therefore will deal solely with the name <dermajetics.com>. The Procedural Order is annexed to this decision.
On January 14, 2002, the 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. Because of the difficulties discussed in this section of the decision, the Panelís decision will now be forwarded by February 12, 2002.
On February 4, 2002, the Complainantís lawyers advised the WIPO Center that they had effected the additional payment required by Procedural Order No. 1 and asked the Panel to adjudicate on both cases affecting both names. A copy of their email was sent to Respondent, who offered no comment. The Complainantís lawyers had earlier requested a termination of the case but apparently changed their mind.
The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.
4. Factual Background
The Complainant owns trademarks in respect of the word "Dermajetics". These are registered in 60 countries including Russia.
The Russian registrations (which were in 1996) are Numbers 137113 and 163445.
The trademarks are registered (and used) in connection with a wide variety of skin care products.
5. Partiesí Contentions
The disputed domain name <dermajetics.com> is identical to the above mentioned trademarks. The suffix ".com" cannot be considered as eliminating identity.
The Respondent has no rights or legitimate interest in respect of the disputed domain names because:
- The Complainant did not authorize the Respondent to use the trademarks in question;
- The Respondent has no corresponding trademark registrations for "Dermajetics";
- The Respondent has no trade name or company name similar to the disputed domain names, 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. (Answering "cease and desist" letter of the Complainant the Respondent presented itself as "OOO Artema").
- The Respondent has not been commonly known by the domain names in question. The Respondent does not offer any particular service or information through them.
The disputed domain names were registered by the Respondent in bad faith because of the following:
- The Respondent registered the domain names in question in order to prevent the Complainant (the owner of the corresponding trademarks) from reflecting the marks in a corresponding domain name since the Respondent has engaged in a pattern of such conduct. According to the Network Solutionsí WHOIS, the Respondent has registered more than 100 (one hundred) ".com" domain names using the same address or close to that.
- The way the Respondent used the disputed domain names cannot be considered as bona fide offering of goods and services. The website <www.dermajetics.com> is a simple compilation of two dozen links to commonly-known Russian recourses. This web catalog may be compiled in two minutes by every frequent user of the Russian internet. The said web catalog may be seen now under most of the other domain names (some of them marked "For sale").
The domain name <dermajetics.com> was registered by Mr. Knjazev Sergey on February 11, 2000, to organise a non-commercial informational website and web forum for people interested in exchanging opinions and information about products of the Complainant and for dialogue between people who share an interest in these products. Such usage of the brand "Dermajetics" is non-commercial and fair and is allowed according to the laws of Russian Federation.
Whilst the activities of the Complainant may cause many disputes and are forbidden in some countries, Mr. Knjazevís attitude to the Complainant is unconditionally positive. He is a "fan" of its products. His intent was to create a non-commercial website using the domain name "Dermajetics", which would not tarnish the reputation of the Complainant or cause damage in any other way.
Before Mr. Knjazev registered the domain name, it had belonged to a Swiss marketing agency, which did not use the name for two years and which did not respond to Mr. Knjazevís offers to organize a joint co-operation in interests of the Complainant.
A domain name registrar and provider in Russia called "ServicePoint" granted Mr. Knjazev the temporary mailing address of P.O. 544, Saint-Petersburg, 193015, Russia.
On August 25, 2000, Mr. Knjazev and the Respondent (OOO Artema) entered into a written contract under which the Respondent was to design a website for programming a discussion forum regarding Dermajetics. Since Mr. Knjazev did not have funds for this purpose, he agreed temporarily to transfer to the Respondent the right of ownership to and the use of <dermajetics.com>. The domain name was locked and the Respondentís work secured until Mr. Knjazev paid Respondent fully. He paid only $US100 to the Respondent and was unable to pay the balance of $US1400. The website Dermajetics.com was not updated and the domain name has remained locked by the Respondent. A copy of this agreement was annexed to the Response.
On July 8, 2001, the Respondent received an email message from Complainant claiming its rights for the trademark "Dermajetics". The claim was rejected. There have been telephone negotiations between the Respondent and the Complainant, without result.
The Respondentís attorney contacted the Complainant several times by phone in order to settle this question. The Complainant rejected his proposals and the situation has to be evaluated by a Russian Court. Property and pawn rights are as protectable by the law as the trademark holdersí rights (also see st 10 Civil Code) in Russian law.
This site has not been used and contains only a standard page. Bad faith use is not present, nor has Complainant proved registration 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 ICANN 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;
- 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 domain name is identical with the Complainantís marks so, therefore, the Complainant has proved the first criterion.
The Complainant gave neither Mr. Knjavez nor the Respondent no rights to use the name. It therefore becomes necessary to enquire whether the Respondent is covered by Paragraph 4(c) of the Policy. The possibly applicable limbs are either i) that before any notice to the Respondent of the dispute, the Respondent used or made demonstrable preparations to use the name in connection with a bona fide offering of goods and services, or ii) that the Respondent is making a legitimate non-commercial or fair use of the name without intent for commercial gain misleadingly to divert consumers or to tarnish the Complainantís mark.
One must look at the conduct of Mr. Knjavez since the Respondent according the agreement exhibited in the Response, is only holding the name as security. Whether this type of instrument by way of security is permitted under either the terms of the relevant registration agreement or under Russian law is not relevant. Certainly the Registrar was not advised on the true position. More importantly, the Response offers no plausible explanation of why the name was registered to a registrant called "dermajetics" rather than to Mr. Knjavez.
Mere registration of a domain name in the circumstances described in the Response plus an agreement with a website designer to design a website are insufficient to be categorized as Ďdemonstrable preparations for the bona fide offering of goods and servicesí. The website is simply undeveloped and remains so indefinitely.
The reason for the non-development (in this case financial) is largely irrelevant. It is doubtful that the proposed offering of goods and services was bona fide. Clearly, Mr. Knjavez knew about the Complainant and its products. He is said to have been a supporter of both. It is hard to see that, absent any authorisation from the Complainant, the proposed website could possibly be seen as offering of goods and services in a bona fide manner. Certainly a Respondent would have to mount a far more credible case to succeed in such a contention.
As for the fair non-commercial use, there just is not any. Neither Mr. Knjavez nor the Respondent is using the site at all. The Complainant has therefore proved the second criterion.
As to bad faith, Mr. Knjavez clearly knew about the Complainant, its products and its reputation at the time of registration of the name. Yet he blithely proceeded to register a name identical to the Complainantís mark without any authority from the Complainant. He still continues to hold the name. Respondent wishes to "negotiate" with the Complainant by which statement one can infer that either Mr. Knjavez and/or the Respondent seeks more than recouping the cost of registration. Bad faith registration can readily be inferred from the total situation, including registration in the name "dermajetics" and not in the name of Mr. Knjavez and/or the Respondent.
For the foregoing reasons, the Panel decides:
(a) That the domain name registered in the name of "dermajetics", is identical to the trademark to which the Complainant has rights;
(b) That neither "dermajetics", Sergey Knjavez nor the Respondent have rights or legitimate interests in respect of the domain name; and
(c) 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 <dermajetics.com> be transferred to the Complainant.
Hon. Sir Ian Barker QC
Dated: February 12, 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 126.96.36.199 (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.
Hon. Sir Ian Barker QC
Dated: January 16, 2002