WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Herbalife International, Inc. v. Shu Lin
Case No. D2013-0717
1. The Parties
The Complainant is Herbalife International, Inc. of Torrance, California, United States of America, represented by Jose Lloreda Camacho & Co., Colombia.
The Respondent is Shu Lin of Zhongshan, Dalian, China.
2. The Domain Name and Registrar
The disputed domain name <myherbalifecolombia.com> (“the Domain Name”) is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was originally filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2013 with the Respondent identified as “above.com domain privacy”. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 22, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient and also informing the name of the underlying registrant, the Complainant filed an amended Complaint on April 28, 2013. The amended Complaint identified Shu Lin as the Respondent.
The Center verified that the Complaint together with the amended 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(a) and 4(a), the Center formally notified the Respondent of the Complaint using the contact details which had been provided by the Registrar in its verification response, and the proceedings commenced on April 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2013. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on May 21, 2013.
The Center appointed Nick J. Gardner as the sole panelist in this matter on May 28, 2013. 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.
4. Factual Background
The relevant facts are straightforward and can be summarized briefly as follows:
The Complainant carries on business on a worldwide basis in the production and sale of nutritional products. It does so under and by reference to the name “herbalife”. It has done so since 1980. It carries out business in around 80 countries and has some 2.5 million distributors of its products.
The Complainant has registered the trade mark HERBALIFE in many countries throughout the world – for example, in Colombia under registration No. 193195 which was registered in respect of hair shampoo and related products in 1996; and registration No. 287744 which was registered in respect of nutritional products in 2004.
The Complainant operates a website at “www.herbalife.com” which promotes its products on a worldwide basis. It also operates many more country specific websites. It also advertises its products in other media on a worldwide basis.
The Respondent registered the Domain Name on March 3, 2013. The Respondent is using the Domain Name in connection with a holding Web page which provides “click through” links to Web sites advertising or promoting other parties products.
5. Parties’ Contentions
The Complainant’s contentions are equally straightforward and can be summarized as follows:
The Domain Name is confusingly similar to its trade mark HERBALIFE in which it clearly has rights. The addition of the non-distinctive wording “my” and a geographic designation “colombia” does not distinguish the Domain Name.
The Complainant says that the Respondent’s selection of the Domain Name, which wholly incorporates the
HERBALIFE trade mark, cannot be a coincidence as “Herbalife” is not a descriptive or generic term; it is a famous and well known trade mark.
The Complainant says the Respondent has no rights or legitimate interests in the term “herbalife”. There is no other meaning associated with “herbalife” other than in relation to the Complainant’s trade mark, products and business. The Complainant further says that using the Domain Name in relation to a “parking page” with click through links to other products unconnected with the Complainant is use in bad faith, and refers to various previous UDRP decisions in this regard. Complainant finally states that the Respondent acts in bad faith when registering the disputed domain name as he is attracting Internet users by creating confusion with Complainant’s name and trade marks in order to obtain commercial gains.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy to the Panel that:
(i) The Domain Name is identical with 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 Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trade mark HERBALIFE. The filed evidence establishes the Complainant’s products have been sold on a substantial sale on a world-wide basis under this trade mark and are very well known. The Complainant has a wide range of registered trade marks HERBALIFE.
The Domain Name is confusingly similar to the HERBALIFE trade mark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is established that, where a trade mark is the distinctive part of a domain name, the domain name is considered to be confusingly similar to that registered mark (see DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a generic term (such as here the words “my” which simply suggest a personalized connection, and “colombia” which is a country name) to a domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (see Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253). Furthermore, the mere addition of a generic or descriptive term does not exclude the likelihood of confusion (see PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
Accordingly the Panel finds that the Domain Name is confusingly similar to the Complainant’s trade mark. Accordingly the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
“Herbalife” is a word with no other meaning so far as the Panel is aware save in relation to the Complainant’s products. Whilst it would appear to be a word made up by combining the English words “herbal” and “life”, there is no immediately obvious reason why those words should be combined, nor does the combined word have any separate obvious meaning, and as such it appears to the Panel to be a word whose only meaning is in relation to the Complainant and its products. The addition of the non-distinctive words “my” and “colombia” do not provide any additional basis for the Respondent to claim rights in the Domain Name.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Domain Name:
(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Domain Name or to use the HERBALIFE trade mark. The Complainant has prior rights in the HERBALIFE trade mark which precede the Respondent’s registration of the Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the HERBALIFE trade mark, and the evidence as to the extent of the reputation the Complainant enjoys in the HERBALIFE trade mark, and the confusingly similar nature of the Domain Name to the HERBALIFE trade mark, and the lack of any explanation from the Respondent as to why it registered the Domain Name lead the Panel to conclude the registration and use was in bad faith.
In the present case, the Panel concludes the Respondent was aware of the Complainant’s HERBALIFE trade mark when it registered the Domain Name. The Panel concludes that it is highly likely that the Respondent selected the Domain Name because of its similarity with the Complainant’s HERBALIFE trade mark. The addition of the words “my” and “colombia” suggests to the Panel that the Respondent was deliberately choosing a name with a close and confusing connection to the Complainant’s name. Further, the Panel notes the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of legitimate use that it might have. The Panel infers that none exists.
The website operated by the Respondent at the Disputed Domain Name comprises a series of “click through” links to other third party websites. The Panel infers that some consumers, once at the Respondent’s website, will follow the provided links and “click” through to other websites which offer products some of which may compete with those of the Complainant. The Respondent presumably earns “click through” linking revenue as a result. The Panel suspects the Respondent’s website is probably automatically generated. This does not however matter. It is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the name’s association with the complainant, such use amounts to use in bad faith. See for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396.
As a result, and applying the principles in the above noted UDRP decisions, the Panel finds that the Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
As a result the Panel finds that the Domain Name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <myherbalifecolombia> be transferred to the Complainant.
Nick J. Gardner
Date: June 9, 2013