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November 4, 2010 / Nate Harris

Herbalife Int’l of America v. Haider

Summary of Herbalife International of America, Inc. a wholly owned subsidiary of Herbalife International, Inc. v. Zainl K.. Haider, P.O. Box  1080, Manama — Kingdom of Bahrain
(Nat. Arb. Forum Claim No. 1343621)

Filed: August 26, 2010; Decided: September 29, 2010 (Panelist: David S. Safran)

Disputed domain name: <uaeherbalife.com>

uaeherbalife.com

The Parties

Complainant Herbalife International of America, Inc. (“Herbalife”) is a wholly-owned subsidiary of Herbalife International, Inc. It sells weight loss and nutrition products. Herbalife owns several U.S. trademark registrations for the mark HERBALIFE dating back to at least 1983.

The decision does not state when Respondent Zainl K.A. Haider (“Haider”) of Bahrain registered the disputed domain name. At any rate, Haider sells “genuine” HERBALIFE products, and only in a country in which Herbalife admits it owns no trademark rights and conducts no business. [Neither the decision nor the website at the disputed domain makes clear where Haider operates–Bahrain, the United Arab Emirates, or both.]

Procedural

The Panel notes that the WHOIS information for the disputed domain contains contact information that does not explicitly identify Haider. However, “the Panel has accepted the Response’s self-identification of the Respondent, the case caption having been changed, above, accordingly.”

Identity or Confusing Similarity

The Panel accepts Herbalife’s trademark registrations as proof of its rights in the HERBALIFE mark, “regardless of whether Complainant owns a trademark registration in the country where Respondent resides.”

The disputed domain incorporates the HERBALIFE mark, and merely adds the geographically descriptive term “UAE” (an abbreviation referring to the United Arab Emirates). Accordingly, the Panel finds the disputed domain is confusingly similar to Herbalife’s mark.

Rights or Legitimate Interest

Because the Panel finds that Herbalife fails to satisfy the bad faith prong below, it declines to consider whether Hader has rights or legitimate interest in the disputed domain.

Bad Faith

Given that it has been taken as admitted fact that Respondent is selling genuine HERBALIFE products in a country in which Complainant holds no trademark rights in the name and conducts no business and that Complainant has taken no action to enforce its mark relative to the thirteen domains listed by Respondent (such that, absent evidence to the contrary which has not been submitted by Complainant, Respondent could have reasonably believed that it could use the domain at issue) . . . the Panel finds that it has not been established that Respondent has registered or used the <uaeherbalife.com> domain name in bad faith, it not having been established that Respondent has violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use[.]

In summary, the Panel finds that Haider may have legitimately believed it could register the domain on the ground that (1) Herbalife doesn’t operate in where Haider is located and (2) several third parties use the mark HERBALIFE in their domains. Thus, Herbalife has not proven registration and use in bad faith.

Decision

“[I]t is Ordered that the <uaeherbalife.com> domain name be RETAINED by Respondent.”

Commentary

This decision is frustratingly short on details. Among other things, it doesn’t state when the disputed domain was registered (as far as I can tell, January 12, 2010), what country Haider is located in for purposes of the bad faith analysis, or what the third party domains are that Haider offered into evidence. Therefore, it’s impossible to tell whether the third party domains were even in existence at the time Haider registered the domain, which is the relevant time period for determining bad faith registration.

The bigger problem is the bad faith analysis itself. The Panel makes much of the fact that Herbalife was not operating in the same country as Haider. This would be irrelevant for purposes of the first prong of the UDRP, so the Panel’s theory is apparently that Haider was unaware of the HERBALIFE mark, and therefore may have innocently registered the disputed domain. But that ignores the fact that Haider was selling genuine HERBALIFE products at the time! Furthermore, it is improper to draw any inferences from the fact that Herbalife didn’t “refute[]” the third party registrations incorporating HERBALIFE. Those third party registrants may have been licensees of Herbalife. Or Herbalife may have been pursuing cybersquatting lawsuits or  UDRP proceedings against those sites. That’s very plausible, considering that Herbalife or its related companies have had seven UDRP complaints decided in 2010 alone.

As I see it, there is no way that Haider could have registered the disputed domain in anything other than bad faith. It knew of Herbalife’s products, and, by extension, knew or should have known of the HERBALIFE mark. It had no basis to assume that Herbalife didn’t enforce those rights, and in fact the opposite appears to be true. In my humble opinion, the Panel got this wrong.

It may be a hyper-technical point I’ve made before, but it seems odd when the Panel, as here, orders that the domain be retained by the respondent. That’s different than denying the complaint, isn’t it?

Epilogue

<uaeherbalife.com> still points to the Respondent’s website.

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2 Comments

  1. Bret Moore / Nov 5 2010 7:56 am

    This case is a little troubling, I agree. I think reading between the lines, maybe the Complainant’s counsel just didn’t put together a very persuasive complaint. I mean, you’d have to think that it would be blatantly obvious that you’re required to explain how/if others are allowed to register a domain name with your mark in it, if you don’t have a blanket policy that prohibits such registrations. Is the panel saying that a brand owner has to go after every single third party registrant? Seems like it could be cost prohibitive, and anyway, I don’t know where they are reading that from the UDRP.

  2. Nate Harris / Nov 5 2010 12:03 pm

    I agree, Bret. Though it’s hard to tell what the complaint looked like, it’s a safe bet they didn’t push back enough on the third party registrations.

Comments are closed.