The Complainant is Herbalife International Inc. of Los Angeles, California, United States of America, represented by Manatt, Phelps & Phillips, LLP, United States of America.
The Respondent is Wang Zhi Guo of Shegy, Cshengy, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (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 25, 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.
On August 26, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On August 28, 2015, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 September 3, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 24, 2015.
The Center appointed Jonathan Agmon, Gary J. Nelson and C. K. Kwong as panelists in this matter on November 6, 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, Herbalife International Inc., is a global nutrition company which specializes in dietary and nutritional supplements, as well as personal care products. The Complainant, under the Herbalife brand markets various nutritional products, which are sold both in the United States and worldwide.
The Complainant was established in 1980 and since has generated vast goodwill in the dietary and nutritional supplements business.
The Complainant is the owner of trademark registrations for trademarks consisting of or incorporating the term "herbalife" around the world. For example: the Complainant owns registrations for the following marks: HERBALIFE (U.S. Reg. Nos. 3324677, 4402483, 1969346, and 1254211); HERBALIFE (plus design) (U.S. Reg. Nos. 2512368 and 1811780); HERBALIFE 24FIT (U.S. Reg. No. 4440861); HERBALIFE NUTRITION INSTITUTE (plus design) (U.S. Reg. No. 4170467); HERBALIFE KIDS (plus design) (U.S. Reg. No. 3617448); and HERBALIFE SKIN (U.S. Reg. No. 4590118).
The disputed domain name was registered on March 30, 2010.
The disputed domain name leads Internet users to a website that displays goods bearing the Complainant's HERBALIFE marks. 5. Parties' Contentions A. Complainant
1. The Complainant argued that the disputed domain name is confusingly similar to the Complainant's trademarks.
2. The Complainant further argued that the Respondent merely added on the letters "cn" to the end of the Complainant's mark under the generic Top-Level Domain ("gTLD") ".com". The Complainant argued that these additions do not effectively differentiate the disputed domain name from the Complainant's trademark or alleviate consumer confusion.
3. The Complainant further argued that the addition of the letters "cn" to the end of the Complainant's trademark increases the confusing similarity by suggesting that the disputed domain name refers to the Complainant's business presence or operations in China.
4. The Complainant further argued that the Respondent has no rights or legitimate interests in respect of the disputed domain name since there is no evidence that the Respondent is using, or has prepared to use, the disputed domain name in connection with a bona fide offering of goods or services.
5. The Complainant also argued that the Respondent appears to be offering goods for sale on its website, many of which are depicted as bearing the Complainant's HERBALIFE (plus design) trademark.
6. The Complainant further argued that the intentional adoption or adaptation of a well-known trademark for its own profit indicates that the offering by the Respondent is not bona fide especially as the Complainant has granted no rights, permissions, or licenses to the Respondent to use the Complainant's trademarks on its website or in the disputed domain name.
7. The Complainant further argued that there is no indication that the Respondent has been commonly known by the name "herbalifecn" or any similar variation thereto.
8. The Complainant also argued that the Respondent's first use of this term began with his registration of the disputed domain name on March 30, 2010.
9. The Complainant argued that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
10. The Complainant also argued that it is apparent upon visiting the Respondent's website that the sole purpose of the Respondent's use of the disputed domain name is to engage in commercial transactions on a website under the disputed domain name.
11. The Complainant also argued that the Respondent registered and is using the disputed domain name in bad faith.
12. The Complainant further argued that the Respondent had actual or constructive notice of the Complainant's trademark when it registered and used the disputed domain name, based upon the Complainant's popularity and widespread mention in the press and in popular culture.
13. The Complainant also argued that the Respondent is intentionally attempting to generate confusion and attract Internet users seeking the Complainant's products and services for his own commercial gain.
14. The Complainant further argued that it is inevitable that some consumers, while conducting a search for the Complainant's dietary and nutrition products by a similar name online, will stumble upon the Respondent's website and mistakenly purchase goods from the Respondent instead of from the Complainant.
15. Finally, the Complainant argued that it appears that the Respondent is attempting to create the false impression that the Complainant sponsors, endorses, or is affiliated with the Respondent's website. To that end the Complainant provides a rough translation of the Respondent's homepage, provided by Google translate, which indicates that the Respondent presents himself as "Herbalife's flagship store," or "the official website" of Herbalife. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
Paragraph 11(a) of the Rules provides that:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
Although the Complainant was unable to locate a copy of the Registrant's current Registration Agreement online, at least one previous UDRP decision indicates the Registration Agreement for this Registrar has been published in both English and Chinese. See Lacoste Alligator S.A. v. Xinpeng Liu, D2009-0629 (WIPO 2009). The Complainant requested that the language of the proceeding be English.
The Panel cites the following with approval:
"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case." (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
a) The disputed domain name consists of Latin-script letters, rather than Chinese characters;
b) The website under the disputed domain name includes a copyright notice in the English language and the name of the website is presented in large font letters in the English letters "HERBALIFECN". In addition, many of the products bear labels in the English language. This is evidence that the Respondent is aware of the meaning of the words in English and is likely to understand English.
c) The Respondent did not respond or object to the Complainant's request that English be the language of the proceeding.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for this proceeding to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.
6.2. Substantive Issues A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant is the owner of trademark registrations for trademarks consisting of or incorporating the term "herbalife" around the world. For example: the Complainant owns registrations for the following marks: HERBALIFE (U.S. Reg. Nos. 3324677, 4402483, 1969346, and 1254211); HERBALIFE (plus design) (U.S. Reg. Nos. 2512368 and 1811780); HERBALIFE 24FIT (U.S. Reg. No. 4440861); HERBALIFE NUTRITION INSTITUTE (plus design) (U.S. Reg. No. 4170467); HERBALIFE KIDS (plus design) (U.S. Reg. No. 3617448); and HERBALIFE SKIN (U.S. Reg. No. 4590118).
The Panel finds the disputed domain name integrates the Complainant's HERBALIFE trademark in its entirety, as a dominant element.
The additional letters "cn" do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's trademark.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate a domain name from the relevant registered trademark: "The Panel agrees that with the wholesale incorporation of the YAHOO sign (which is the primary word element in the Complainant's YAHOO! mark), the addition of the descriptive word 'page' does not at all serve to remove the confusing similarity with the Complainant's mark, all the more in the context of webpages or websites". (See Yahoo! Inc. v. Blue Q Ltd., Romain Barissat,WIPO Case No. D2011-0702).
Also see: "the Disputed Domain Name integrates the Trademark in full to which is added a suffix (i.e. (shows), which is a generic term. The Panel consequently holds that the addition of this suffix does not distinguish the Disputed Domain Name from the Trademark to avoid a confusing similarity". (See Yahoo! Inc. v. Jesper Hansen,WIPO Case No. D2011-2227).
The addition of the gTLD ".com" to the disputed domain name does not avoid a finding of confusing similarity. (See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Thus, the gTLD ".com" is without legal significance since the use of a gTLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
In the present case, the Complainant has demonstrated to the Panel that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the HERBALIFE trademark, or a variation thereof, on the website under the disputed domain name in the way elaborated under Section 6.2.C below.
The Respondent has not submitted a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the HERBALIFE trademark since at least 1980. It is suggestive of the Respondent's bad faith that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The Complainant has generated vast goodwill in the dietary and nutritional supplements business. "It is very unlikely that the Respondent would have registered the Domain Names unless he knew either the existence of the trademark SWAROVSKI or that the Domain Names at issue might be of some type of economic advantage" (see Swarovski Aktiengesellschaft v. James Johnson,WIPO Case No. D2012-0080). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.
Further, the Respondent is offering to sell dietary products bearing the Complainant's HERBALIFE (plus LOGO) mark (which seems identical to U.S. Trademark Registration No. 2512368) on the website under the disputed domain name. In addition, it appears that the Respondent is attempting to create the false impression that the Complainant sponsors, endorses, or is affiliated with the Respondent's website. To that end the Complainant provided a rough translation of the Respondent's homepage, provided by Google translate, and the Panel reviewed the Respondent's website in the Chinese language and is satisfied that the Respondent presents himself as the Complainant's "flagship store" or "the official website" of the Complainant although the Complainant has granted no rights, permissions, or licenses to the Respondent to use the Complainant's marks on its website or in the disputed domain name. Such representations are clear evidence that the Respondent knew of the Complainant's trademark when he registered the disputed domain name and serves as evidence of bad faith registration and use of the disputed domain name.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the distinctiveness of the Complainant's trademark included in the disputed domain name in its entirety, and that the Respondent presents himself as the Complainant's "flagship store," or "official website" without the Complainant permission or authorization, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 7. Decision
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 be transferred to the Complainant.
Jonathan Agmon
Presiding Panelist
Gary J. Nelson
Panelist
C. K. Kwong
Panelist
Date: November 25, 2015
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