Adding a geographic indicator to a trademark does not distinguish a domain name; is unlikely to support a right or legitimate interest; and generally the domain name is found to have been registered in bad faith. “Usa” added to “rangerover” and “denver” to “univision” are two recent examples. But the complaint involving “uae” added to “herbalife” was denied. Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. v. Zainl K.A. Haider, P.o. Box 1080, Manama – Kingdom of Bahrain, FA1008001343621 (Nat. Arb. Forum September 29, 2010)(<uaeherbalife.com>). The question is, Why?

The Panel explains that

Respondent’s contentions that it is selling genuine HERBALIFE products in a country in which Complainant holds not trademark rights in the name and conducts no business has not been refuted by Complainant and the Panel finds such facts as admitted as a result.

However, the Respondent’s website is offering the “genuine” goods in English (to an English speaking market) not UAE Arabs thereby competing directly with the Complainant. The answer for denying the complaint apparently rests on the “admission” together with the Complainant’s non-action in “enforc[ing] 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).” But, the phrase “could have reasonably believed” does not appear in the Policy as a defense to bad faith. In slightly different language the defense does appear in the ACPA, 15 U.S.C. §1125 (d)(1)(B)(ii):

Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.

It is a stretch to apply this principle to the Respondent in Herbalife who clearly has actual knowledge of the Complainant and it is questionable for the Panel to import it into UDRP on such flimsy grounds.

It is true in the precedential cases the Panel cites that “mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii),” Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). Starwood, however, is unusual in that “Complainant has not proven that the STARWOOD mark was so famous in Korea at the time of Respondent’s registration of the Domain Name in January 2000 that Respondent must have known of the mark and must have intended to register the Domain Name with a bad faith intent to profit from Complainant’s trademark.” In the other cited case, Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) “Complainant and Respondent are not in the same field of business, and therefore are not competitors. Since there is no potential for confusion by Internet users, Respondent may maintain rights in the GRAMAN mark.”

While the facts in the cited cases clearly support their conclusions, they do not in Herbalife. There can be no dispute that the Respondent had actual knowledge of HERBALIFE. Since it admits to selling “genuine” goods no inference is necessary. There is also no dispute that it has incorporated the Complainant’s trademark together with a geographic indicator in its entirety in the domain name for the obvious purpose of capturing Internet users that would otherwise be purchasing the same goods from the Complainant. Ergo, a clear departure from precedent.

Levine Samuel, LLP. <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com