WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Herbalife International Inc. v. Agboola Hans, Hans Finest Solutions
Case No. D2015-1489
1. The Parties
The Complainant is Herbalife International Inc. of Los Angeles, California, United States of America (“United States”), represented by Manatt, Phelps & Phillips, LLP, United States.
The Respondent is Agboola Hans, Hans Finest Solutions of Ifo, Ogun, Nigeria.
2. The Domain Name and Registrar
The Disputed Domain Name <herbalifeball.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2015. On August 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 24, 2015, 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.
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 of the Complaint, and the proceedings commenced on August 26, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2015. The Center received a communication from the Respondent on September 16, 2015.
The Center appointed Charné Le Roux, Lorelei Ritchie and Alistair Payne as panelists in this matter on October 16, 2015. The Panel finds that it was properly constituted. Each member of 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 Complainant is a global nutrition company that has, since its inception in 1980, provided dietary and nutritional supplements as well as personal care products under the trade mark HERBALIFE. The Complainant provided details of numerous trade mark registrations that it owns in the United States for HERBALIFE and marks incorporating HERBALIFE, such as HERBALIFE NUTRITION INSTITUTE, HERBALIFE 24FIT, HERBALIFE SKIN and the like. These registrations extend to goods and services in the field in which the Complainant operates, including international classes 3, 5, 30 and 32. The earliest registration that the Complainant provided for HERBALIFE was obtained on October 18, 1983.
The Complainant’s activities as reflected on its website at “www.herbalife.com” indicate, inter alia, the broad range of its business and presence in more than 90 countries.
The Disputed Domain Name was registered on June 24, 2015. The website associated with the Disputed Domain Name features a business trading under the name “Herbalife Ball” offering physiotherapy services in Nigeria and promoting herbal products. The said website also incorporates an advertisement for a business trading under the name “Falaki Renewed Herbs Limited”, which manufactures and sells herbal products.
5. Parties’ Contentions
The Complainant submits that it has acquired rights in the HERBALIFE trade mark as a consequence of:
a. the registration of this mark, both in the United States and internationally; and
b. its substantial global use of the HERBALIFE trade mark since 1980.
The Complainant contends that its HERBALIFE trade mark is well known. The Complainant claims that HERBALIFE is one of the top brands in dietary and nutritional supplements, following 25 years of developing consumer goodwill and reputation.
The Complainant argues that the Disputed Domain Name is confusingly similar to its HERBALIFE trade mark, stating that the Disputed Domain Name wholly incorporates its HERBALIFE trade mark, to which the descriptive term “ball” was added. It contends that this generic term does not affect the confusing similarity of the Disputed Domain Name with its trade mark. It also states that the overall impression created by the Disputed Domain Name is the same as the impression created by the Complainant’s trade mark, in that both terms combine the words “herbal” and “life”, evoking a sense of healthy living through plant derived products.
The Complainant contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that:
a. There is no indication that the Respondent has been commonly known by the name “Herbalife Ball” or any similar variation, and that the Respondent’s first use of this term began around the time of the registration of the Disputed Domain Name in June 2015.
b. The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods and services, as the Respondent’s adoption of a well-known trade mark for its own profits cannot constitute a bona fide offering.
c. The Complainant has granted no rights, permissions or licences to the Respondent to use the Complainant’s HERBALIFE trade mark on its website or in a domain name.
d. The Respondent is not making legitimate noncommercial or fair use of the Disputed Domain Name. In this regard, the Complainant points out that the website associated with the Disputed Domain Name has a primary purpose of engaging in commercial transactions. It also states that the Respondent has purposefully appropriated the Complainant’s trade mark in order to divert consumers, through confusion, to its website where competing products and services are sold. The Complainant submits that the Respondent’s conduct in this regard cannot be said to constitute fair use.
The Complainant further contends that the Disputed Domain Name was registered and is being used in bad faith. The Complainant argues that given the Complainant’s status as one of the most well-recognized companies in the field of dietary and nutritional supplements, the Respondent had actual notice or should have been aware of the Complainant’s HERBALIFE trade mark when it registered and used the Disputed Domain Name. The Complainant reiterates that HERBALIFE is widely recognized as one of the top brands in its industry and has been registered at the United States Patent and Trademark Office (“USPTO”) for over three decades.
The Complainant also contends that the Respondent deliberately adopted the Disputed Domain Name to generate confusion and attract Internet users seeking the Complainant’s products to the Respondent’s website, which promotes goods and services very similar to those of the Complainant.
A communication was filed by the Respondent indicating that there does not appear to be any business conflict between the parties and that the service provided by “Herbalife Ball” does not pose a threat to the Complainant.
The Respondent also states that Falaki Renewed Herbs Limited is the operator of Herbalife Ball Limited and that these are well respected names in herbal medicine in Nigeria. It provides a company name registration for Herbalife Ball Limited, indicating that it was incorporated in Nigeria on February 11, 2014, and also provided proof of acceptance of a trade mark application filed at the Nigerian Trade Marks Registry for HERBALIFE BALL in class 5 on January 13, 2014. The Respondent points out that it is operating lawfully in Nigeria.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Name, the Complainant must prove on a balance of probabilities:
(i) that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which it has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Late Filing of Administratively Deficient Response
The Respondent filed its Response one day after the expiry of the deadline within which it had to do so.
Late responses may be accepted by a UDRP panel in its discretion on the basis of a panel’s general powers pursuant to paragraph 10(b) of the Rules. This paragraph requires that the parties be treated with equality and that each party be given a fair opportunity to present its case. In the following circumstances, late responses were accepted, namely: where the response was not filed substantially late and before commencement of the decision making process; where failure to take the response into account would have led to a miscarriage of justice; where the response was late by only one day. See the very helpful summary provided by the panel in AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485.
On the basis that the Response in this case was late only by one day the Panel has admitted and considered the submissions set out in the Response.
B. Identical or Confusingly Similar
The Complainant has furnished evidence of trade mark registrations for the mark HERBALIFE and marks incorporating the mark HERBALIFE recorded at the USPTO. The most relevant registration is no. 1254211 for HERBALIFE dating from October 18, 1983. The Complainant also claimed that its HERBALIFE trade mark is famous and one of the top brands in the field of dietary and nutritional supplements, following 35 years of developing consumer goodwill and reputation. While the Complainant’s evidence in support of its claim of fame is extremely sparse, the Panel is prepared to accept the fact that HERBALIFE has been extremely well reputed for many years, for the following reasons:
a. Many other panels who have considered more substantial evidence filed by the Complainant in respect of its repute, have found the HERBALIFE mark to be famous. See Herbalife International Inc. v Sergey Podyakov (aka herbatel), WIPO Case No. D2001-1419; Herbalife International of America, Inc. v myherbalife.com, WIPO Case No. D2002-0101; Herbalife International, Inc. v Surinder S Farmaha, WIPO Case No. D2005-0765; Herbalife International, Inc. v Herbalife.net, WIPO Case No. D2002-0234; and Herbalife International, Inc. v Shu Lin, WIPO Case No. D2013-0717.
b. The Complainant’s activities as reflected on its website at “www.herbalife.com” indicate, inter alia, the broad range of its business and presence in 90 countries.
c. The Respondent did not deny the Complainant’s claim that HERBALIFE is famous globally.
Consequently, the Panel finds that the Complainant has succeeded in proving that it has rights in the HERBALIFE trade mark and that the trade mark has a high degree of renown attaching to it in numerous countries worldwide.
The Panel also finds that the Disputed Domain Name is confusingly similar to the HERBALIFE trade mark. It wholly incorporates the trade mark and considering the extent of the repute that attaches to HERBALIFE, the trade mark’s combination with a common and/or descriptive term makes a finding of confusing similarity difficult to escape. The Respondent has also not disputed the Complainant’s argument that the Disputed Domain Name is confusingly similar to its HERBALIFE trade mark.
The Panel finds that the Complainant has satisfied this Policy requirement.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove a negative, namely that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. This is accomplished as follows:
“a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interests, the panel then weighs all the evidence with the burden of proof always remaining on the complainant.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 2.1 in this regard.
The Respondent argued that its activities do not pose a business conflict nor a threat to the Complainant. It also argued that it operates lawfully in Nigeria and was incorporated as a company in order to do so. It further indicated that it owns a trade mark application for HERBALIFE BALL.
The Panel is not persuaded that the Respondent’s application to register a trade mark for HERBALIFE BALL in Nigeria or its incorporation as a private company in that country demonstrate a right or legitimate interest in the Disputed Domain Name for the following reasons:
a. The HERBALIFE trade mark has a high degree of renown worldwide and has been in use for over three decades. The products to which the HERBALIFE trade mark is applied are made available, according to the Complainant’s website, in 93 countries, including many African countries such as Botswana, Lesotho, Namibia, South Africa and Zambia. Against this background, the Panel finds it difficult to believe that the Respondent would not have been aware of the Complainant, particularly because, like the Complainant, the Respondent trades in herbal remedies and promotes its goods on the Internet. The Respondent also does not indicate that it is ignorant of the Complainant’s HERBALIFE trade mark.
b. There is no explanation by the Respondent of why the name “Herbalife Ball” had been selected. The Respondent could have adopted any other domain name that incorporates the word “herbs” and that would describe its products. Instead, it chose a name which, despite being made up of two descriptive words, is not obvious and a word with no other meaning (as far as the Panel knows) other than to refer to the Complainant. The Panel suspects that the name “Herbalife Ball” was more than likely adopted by the Respondent specifically to target the Complainant.
c. The Respondent’s trading activities as reflected on its website and its trade mark application for HERBALIFE BALL in class 5 indicates that it trades in competition with the Complainant.
Accordingly, the Panel finds that the Complainant has carried its burden of proof under this Policy heading.
D. Registered and used in bad faith
The Respondent was incorporated as a company, filed its trade mark application and registered the Disputed Domain Name at a time when the Complainant had an established reputation and registrations for its HERBALIFE trade mark. The Respondent’s selection of the identical trade mark of the Complainant, albeit combined with a descriptive element, to promote not only its own ostensibly physiotherapy practice but also its associated Falaki Renewed Herbs business, which manufactures and sells herbal products, could not have happened as coincidence.
There has clearly been deliberate targeting of the Complainant by the Respondent and the Panel is of the view that the Respondent selected and registered the Disputed Domain Name to reap advantage of the Complainant’s reputation in its HERBALIFE trade mark. Taking all of the circumstances of this case into account, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith within the meaning of Paragraph 4(b)(iv) 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 <herbalifeball.com> be transferred to the Complainant.
Charné Le Roux
Date: November 10, 2015