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 Rafaela Robles of Mexico / Perfect Privacy, LLC. of Jacksonville, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Network Solutions, LLC (the “Registar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2016. On April 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 26, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 2, 2016.
The Center verified that the Complaint together with the amendment to 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 May 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2016.
The Center appointed Gabriela Kennedy, Lorelei Ritchie and Kiyoshi Tsuru as panelists in this matter on June 21, 2016. 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 was established in 1980, and is an international nutrition company that develops and distributes dietary and nutritional supplements, as well as personal care products. The Complainant owns registered trade mark rights in HERBALIFE and other related marks in the United States of America (“USA”) and various other jurisdictions, including the HERBALIFE trade mark registered in the USA on October 18, 1983 (registration number 1254211). In addition to the HERBALIFE mark, the Complainant owns marks that include the term HERBALIFE plus other terms, such as HERBALIFE KIDS and design, and HERBALIFE 24FIT.
The Respondent is an individual based in Mexico, who registered the Disputed Domain Name on January 6, 2016 through the proxy service provider, Perfect Privacy, LLC. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
(a) The Complainant is the owner of HERBALIFE trade mark registrations in the USA, the earliest of which was registered on October 18, 1983 (registration number 1254211).
(b) The Disputed Domain Name is confusingly similar to the Complainant’s HERBALIFE trade mark. The only difference between the Disputed Domain Name and the Complainant’s trade mark is the addition of “ventas-“ in front of the word “herbalife”. “Ventas” is a Spanish word which means “sale” in English. The addition of “ventas” does not distinguish the Disputed Domain Name from the Complainant’s HERBALIFE trade mark, as it is a generic and descriptive word.
(c) The Complainant has not licensed or otherwise permitted the Respondent to use any of its HERBALIFE trade marks, and there is no evidence to show that the Respondent is commonly known by the Disputed Domain Name. The Respondent is using the Disputed Domain Name to sell goods that compete with the Complainant’s goods, and which are depicted as bearing the Complainant’s HERBALIFE design trade mark, which was registered by the Complainant in the USA on November 27, 2001 (registration number 2512368). Therefore, the Respondent is not using the Disputed Domain Name for a bona fide offering of goods or services, as he is seeking to take advantage of the Complainant’s well-known mark. The Respondent is also not making a legitimate noncommercial or fair use of the Disputed Domain Name, as he is using it to sell products online.
(d) The Respondent must have had actual or constructive knowledge of the Complainant’s HERBALIFE trade mark. The Complainant was established in 1980 and has become one of the most well-recognised companies in the field of dietary and nutritional supplements. The Respondent registered and used the Disputed Domain Name in bad faith to intentionally confuse Internet users who are seeking to purchase the Complainant’s products, in order to redirect them to the Disputed Domain Name. The Respondent is seeking to mislead Internet users into believing that its website to which the Disputed Domain Name resolves is sponsored or endorsed by or affiliated with the Complainant, as it has the overall look and feel of the Complainant’s website (e.g. using the same white and green colours as the Complainant’s website). B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the HERBALIFE trade mark, and other marks that incorporate HERBALIFE (e.g. the design mark), based on its USA trade mark registrations.
The Disputed Domain Name incorporates the Complainant’s HERBALIFE mark in its entirety, the only difference being the addition of “ventas-” before “herbalife” in the Disputed Domain Name. The word “ventas” is a generic Spanish term, which means “sales” in English. It is well established that where the distinctive and prominent element of a disputed domain name is the complainant’s mark, and the only difference is a generic term that adds no distinctive element, then such a generic term does not negate the confusing similarity between the disputed domain name and the mark (see Oakley, Inc. v. Joel Wong/BlueH- INC,WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim,WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service,WIPO Case No. D2010-0088).
The Panel finds that “herbalife” is the distinctive component of the Disputed Domain Name and the addition of “ventas-” does nothing to distinguish it from the Complainant’s trade mark.
It is also well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain extensions, in this case “.com”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant registered and began using the HERBALIFE trade mark well before the Disputed Domain Name was registered and has never authorised the Respondent to use its HERBALIFE trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove it has rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Panel accepts that the Respondent has not provided any evidence to demonstrate that he has become commonly known by the Disputed Domain Name, or a name corresponding to it.
The Disputed Domain Name is currently being used to resolve to a website (“Respondent Website”) which purports to sell goods and products bearing the HERBALIFE trade mark. The Complainant has made no assertions as to whether or not the goods being sold by the Respondent via the Disputed Domain Name are counterfeit or genuine products of the Complainant being resold by the Respondent.
Pursuant to Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”) and Paragraph 2.3 of the WIPO Overview 2.0, a reseller can be found to be making a bona fide offering of goods, and therefore have a legitimate interest in the relevant domain name, if it meets the following criteria:
(1) the respondent must actually be offering the goods or services at issue;
(2) the respondent must use the website to sell only the trade marked goods;
(3) the respondent must accurately disclose its relationship with the trade mark owner on the website; and
(4) the respondent must not “corner the market” in all domain names that reflect the trade mark in question.
Even if the Panel were to assume that the Respondent is a reseller of the Complainant’s HERBALIFE products, the Panel finds that the Respondent has failed to satisfy the Oki Data test, and the Disputed Domain Name has not been used to make a bona fide offering of goods. This is based on the following:
(a) The Respondent Website claims to be operated by “Herbalife”, and does not attempt to distinguish itself or to explain its alleged relationship with the Complainant (e.g. reseller).
(b) The Respondent has taken images from the Complainant’s website and incorporated them into the Respondent Website, including images of the Complainant’s HERBALIFE branded products. This is based on the screenshots provided by the Complainant of the Respondent Website, and the Panel’s review of the Complainant’s website at “” (“Complainant Website”) (in accordance with the Panel’s powers granted under paragraph 10(a) of the Rules).
(c) The look and feel of the Respondent Website and the Complainant Website are very similar, using the same colour scheme and similar or identical images, and the Respondent has incorporated the Complainant’s registered HERBALIFE design trade mark on the front page of the Respondent Website. The Respondent Website also claims to be operated by “Herbalife”. The Respondent is clearly trying to pass itself off as the Complainant, and does not attempt to distinguish itself or to explain its alleged relationship with the Complainant (e.g. reseller).
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel accepts that the Respondent likely knew of the Complainant and the Complainant’s HERBALIFE trade mark registrations at the time it registered the Disputed Domain Name, and registered and used the Disputed Domain Name in bad faith, based on the following:
(a) the Respondent registered the Disputed Domain Name in June 2016, more than 36 years after the Complainant was first established and about 33 years after the Complainant obtained its first registration for the HERBALIFE trade mark;
(b) the Respondent Website features the Complainant’s registered HERBALIFE design trade mark, and has the same look and feel of the Complainant Website;
(c) the Respondent Website incorporates images that are identical to those which appear on the Complainant Website, including images of the Complainant’s products bearing the HERBALIFE trade mark; and
(d) the Respondent Website is purporting to sell products and to be in the same industry as the Complainant; and
(e) the Respondent Website claims to be operated by “Herbalife”.
Based on the above, the Panel reasonably believes that the Respondent registered and is using the Disputed Domain Name with the intent of trading on the reputation of the Complainant’s HERBALIFE trade marks to intentionally attempt to attract Internet users to the Respondent Website, by creating a likelihood of confusion with the Complainant’s HERBALIFE trade marks as to the source, sponsorship, affiliation, or endorsement of the Respondent Website, for commercial gain.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied. 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.
Gabriela Kennedy
Presiding Panelist
Lorelei Ritchie
Panelist
Kiyoshi Tsuru
Panelist
Date: July 5, 2016
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