The Complainant is iHerb, LCC of Irvine, California, United States of America (the “United States”), represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is Kadakuduru Srinivas of Eluru, India. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2019. On March 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 2019, 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 March 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2019, which was extended until April 9, 2019. The Respondent sent an email communication to the Registrar on March 10, 2019 undertaking to remove the offending content available under the disputed domain name after the reactivation of his services, under penalty of perjury.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on April 10, 2019. 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 Complainant was established in 1996 and is an online retailer for natural healthcare products.
It is the owner of numerous verbal trademark registrations for the term IHERB around the world including Australian trademark no. 1577565 (filed on August 29, 2013 for services in class 35) and United States trademark no 4322990 (filed on February 14, 2012 for services in class 35). An Indian trademark application no. 3009917 (filed on July 16, 2015 for services in class 35) is currently pending.
According to the Registrar’s verification response, the Respondent registered the disputed domain name on April 16, 2017.
The Panel further notes that currently the disputed domain name does not resolve to any active website. However, it results from undated evidence provided by the Complainant that at an earlier stage, the disputed domain name resolved to a website promoting and selling health, skincare and beauty products under the sign iHerb Australia.
Finally, on January 11, 2019 the Complainant sent an email through its attorneys to the Registrar highlighting the trademark rights and requesting transfer of the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant contends to be one of the world’s largest online retailers of natural healthcare products.
The Complainant submits that the disputed domain name is confusingly similar to its IHERB trademarks. The additional term “Australia”, is purely descriptive, referring to the country of Australia. Further, it is well settled that the generic Top-Level Domain(gTLD) “.com” should be disregarded for comparison purposes.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. In this context, that the Complainant affirms that it is not aware of any trademarks in which the Respondent may have rights that are identical with or similar to the disputed domain name. The Complainant therefore limits itself to affirm that the Respondent has not at any time been commonly known by the disputed domain name and that it is not making legitimate noncommercial or fair use of the disputed domain name.
Finally, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. In its view, the IHERB trademark enjoys a worldwide reputation. Furthermore, the Complainant considers the previous use of the disputed domain name for a website which clearly and deliberately infringed the trademark IHERB as clear intention to pass off the Respondent’s website as being operated by or associated with the Complainant. Finally, the current passive use is viewed in the context of the present set of circumstances, is evidence of bad faith use. B. Respondent
The Respondent did not substantively reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 in bad faith.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant has provided evidence that it is the registered owner of registrations for the verbal trademark IHERB, e.g. Australian trademark no. 1577565 (filed on August 29, 2013 for services in class 35) and United States trademark no 4322990 (filed on February 14, 2012 for services in class 35).
Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainS, Inc.,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant’s registered trademark IHERB is fully included in the disputed domain name.
The further term, “Australia”, will be understood as a mere geographic term indicating the country of Australia. According to the consensus view of UDRP panels, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, such as geographical terms, would not prevent a finding of confusing similarity under the first element (see section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition - “WIPO Overview 3.0”). It is the view of this Panel that the trademark IHERB is clearly recognizable within the disputed domain name. Consequently, the combination of that trademark with the element “Australia” does not avoid confusing similarity between the disputed domain name and the Complainant’s trademarks.
Hence, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark pursuant to the Policy, paragraph 4(a)(i). Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name:
Previous UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the case at hand, the Respondent failed to come forward with any allegations or evidence. Therefore this Panel finds that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.
Furthermore, it results from the Complainant’s undisputed allegations that the disputed domain name resolved in the past to a website promoting and selling health, skincare and beauty products under the sign iHerb Australia. At the date of this Complaint, however, the disputed domain name does not resolve to any active website anymore. The Panel assesses the prior use as being commercial, so that it cannot be considered a legitimate, noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy. Furthermore, neither this prior use nor the lack of any use combined with the lack of any demonstrable preparations of fair use can be qualified a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. All to the contrary: The Panel rather holds that the past use falsely suggested affiliation with the Complainant due to the evident correlation between the disputed domain name and the Complainant’s mark as well as the identical business sector in which both parties operate(ed).
In the circumstances of this case, the Panel therefore concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
The Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy for the following reasons: (i) The Respondent failed to submit a response or to provide any evidence of actual or contemplated good-faith use; (ii) it is implausible how the disputed domain name may actually be put in any good faith use; (iii) the Respondent accepting – in his email of March 10, 2019 directed to the Registrar, to remove the offending content from the website available under the disputed domain name (under penalty of perjury); (iv) finally, it results from the Complainant’s documented allegations that the disputed domain name was – in the past – connected to a website promoting and selling health, skincare and beauty products under the sign iHerb Australia.
For the Panel, it is therefore evident that the Respondent positively knew the Complainant’s marks.
Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the disputed domain name included the Complainant’s trademark when it registered the disputed domain name. Registration of the disputed domain name which contains a third party’s mark, in awareness of said mark and in the absence of rights or legitimate interests amounts to registration in bad faith (see e.g., KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; and Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320).
The Complainant has therefore satisfied 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.
Tobias Malte Müller
Sole Panelist
Date: April 24, 2019
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