Herbalife International, Inc. v Leschuk Semyon Vadimovich
WIPO Case No. D2024-4490
•18-12-2024
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Herbalife International, Inc. v. Leschuk Semyon Vadimovich
Case No. D2024-4490
1. The Parties
The Complainant is Herbalife International, Inc., United States of America, represented by Brand Monitor
Limited Liability Company, Russian Federation.
The Respondent is Leschuk Semyon Vadimovich, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <mirherbalife.com> is registered with Nicenic International Group Co., Limited
(the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2024. connection with the disputed domain name. On November 3, 2024, 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 (NICENIC INTERNATIONAL GROUP CO., LIMITED / REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 4, 2024, 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 November 8, 2024.
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 November 12, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2024. The Respondent sent email communications to the Center on November 4, 2024, and November 21, 2024.
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The Center appointed Alissia Shchichka as the sole panelist in this matter on December 6, 2024. 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 is Herbalife International Inc., a global company specializing in nutrition, including dietary and nutritional supplements as well as personal care products. Founded in 1980, the Complainant has established a significant presence in the industry and markets its “HERBALIFE” brand widely in the United States and internationally. According to Euromonitor (CH2024 edition, based on 2023 global market share data), Herbalife is recognized as a leading brand in active and lifestyle nutrition.
The Complainant has evidenced to be the registered owner of numerous trademarks worldwide relating to its trademarks HERBALIFE including, but not limited, to the following:
- Russian Trademark Registration No. 429452, for the word mark HERBALIFE, registered on February 3, 2011, in classes 3, 5, 29, 30, 32, 35, 41, 43, and 44
- Russian Trademark Registration No. 531919, for the word mark HERBALIFE, registered on January 14, 2015, in classes 11, and 21
- Internation Trademark Registration No. 1174496, designating numerous counties, for the word mark HERBALIFE SKIN, registered on August 2, 2013, in class 3.
The aforementioned trademarks were registered prior to the disputed domain name, which was registered on company HERBALIFE, and displays HERBALIFE trademarks.
March 7, 2022. The disputed domain name resolves to a website that commercializes products bearing the
According to the disclosed WhoIs information, the Respondent of the disputed domain name is located in the
Russian Federation.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
The Complainant claims that the disputed domain name is confusingly similar to its HERBALIFE trademark, as it incorporates the trademark in its entirety as a dominant element. The addition of the term 'mir' (meaning 'world' in Russian) at the beginning of the Complainant's trademark does not prevent a finding of confusing similarity.
The Complainant further asserts that the Respondent lacks rights or legitimate interests in the disputed domain name for several reasons. First, the Respondent has neither used nor demonstrated any preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Instead, the sole purpose of the Respondent's use of the disputed domain name is to engage in commercial transactions through a website offering goods bearing the Complainant’s HERBALIFE trademark.
Second, the Respondent is not affiliated with, licensed by, or otherwise authorized to use the HERBALIFE trademark in connection with the disputed domain name. Third, the Respondent is not commonly known by the disputed domain name and has not acquired any trademark rights associated with it.
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Finally, the Complainant asserts that the Respondent has registered and is using the disputed domain name in bad faith for several reasons. First, the Respondent had actual or constructive knowledge of the Complainant's trademark at the time of registering and using the disputed domain name, given the Complainant's popularity and extensive presence in the media and popular culture. Second, the Respondent has intentionally sought to attract Internet traffic for commercial gain by creating a likelihood of confusion with the Complainant’s HERBALIFE trademark. Third, the Respondent is deliberately misleading Internet users for commercial benefit by falsely claiming to be “an official Herbalife store” and creating the false impression that the Complainant sponsors, endorses, or is affiliated with the Respondent's website. As a result, it is inevitable that some consumers searching online for the Complainant's dietary and nutrition products will encounter the Respondent's website and mistakenly purchase goods from the Respondent instead of from the Complainant.
The Complainant requests that the disputed domain name be transferred to the Complainant.
B. Respondent
The Respondent did not provide a formal or substantive reply to the Complainant’s contentions. However, the Respondent submitted four informal email communications in English and Russian, stating that the website operates in Russian Federation and does not infringe any rights. The Respondent further noted that Herbalife’s withdrawal from Russian Federation had affected its distributors and questioned the grounds of the Complaint, asserting that no rules had been violated.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in
which the Complainant has rights; and
| (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and The Respondent’s default in the case at hand does not automatically result in a decision in favor of the | (iii) | that the disputed domain name has been registered and is being used in bad faith. |
Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from the
Respondent’s failure to submit a substantive response as it considers appropriate.
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.
The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.
The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
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Although the addition of other terms, here, 'mir' (meaning 'world' in Russian) may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.8.
The Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.
In this regard, the Panel particularly believes that Respondent’s use of the disputed domain name is not bona fide in light of the criteria set forth in “Oki Data test” and the Respondent thus is not entitled to use the disputed domain name accordingly. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; and WIPO Overview 3.0, section 2.8.
Those criteria, if fulfilled, may enable a respondent, such as a reseller or independent service provider, to establish rights or legitimate interests in a domain name that incorporates a trademark owner’s mark. However, the criteria set forth in Oki Data are not satisfied in the present case. The website linked to the disputed domain name fails to accurately and prominently disclose the nature of the relationship - or the lack of it - between the Respondent and the Complainant.
On the contrary, the content of the Respondent’s website strongly suggests an affiliation with the Complainant. This includes the prominent display of the Complainant’s trademarks and official product images, as well as statements implying an official association, such as “the official Herbalife store” and references to “All products are 100% original and delivered directly from Herbalife's warehouse”. In summary, the overall content of the Respondent’s website clearly conveys the message that the Respondent is an official or authorized reseller/distributor of the Complainant’s products, creating a misleading impression that the disputed domain name is either endorsed by or formally associated with the Complainant.
Finally, given the composition of the disputed domain name, wholly incorporating the Complainant’s
trademark with the addition of the descriptive term “mir” (meaning 'world' in Russian) and the absence of any
relationship between the Respondent and the Complainant, the disputed domain name carries a risk of
implied affiliation with the Complainant, and can constitute neither a bona fide use nor a legitimate
noncommercial or fair use of the disputed domain name. WIPO Overview 3.0, section 2.5.1.
The Panel finds the second element of the Policy has been established.
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C. Registered and Used in Bad Faith
The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
In this case, the Panel observes that the Complainant’s HERBALIFE trademark registrations significantly predate the Respondent’s registration of the disputed domain name. The choice of the disputed domain name is clearly not a coincidence. Given the deliberate inclusion of the term “mir”, meaning “world” in
Russian, in the disputed domain name, the Panel is convinced that the Respondent must have been aware of the Complainant and its trademark at the time of registration. The word “mir” in this context can suggest the availability of HERBALIFE products across a wide market or globally, emphasizing the scale of
operations. The addition of this term, combined with the HERBALIFE trademark, strongly suggests that the relation to a comprehensive online store for HERBALIFE products. This further demonstrates that, at the time of registering the disputed domain name, the Respondent planned to use it in connection with an online store to sell these products.
This, combined with the use of the Complainant’s trademarks and logo on the Respondent’s website, indicates an intention to mislead consumers into believing the site is officially affiliated with the Complainant.
Indeed, the Respondent’s website does not accurately indicate that there is no relationship between the owned by, connected to, or endorsed by the Complainant.
Such intentional use of the disputed domain name in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, constitutes use of the disputed domain name in bad faith for the purposes of the Policy. WIPO Overview 3.0, section 3.1.4.
Furthermore, Panels have held that the use of a domain name for illegal activity here, impersonation/passing off, or other types of fraud constitutes bad faith. WIPO Overview 3.0, section 3.4.
In this context, the Panel also attaches significance to the fact that the Center did not receive any substantive response from the Respondent. The Respondent sent an informal response to the Center and clearly acknowledged being the owner of the disputed domain name but did not present any arguments that could justify the good faith of its registration and use of the disputed domain name.
The Panel finds that, in the circumstances of this case, the Respondent’s registration and use of the disputed domain name constitute bad faith.
The Panel finds that the Complainant has established the third element 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 <mirherbalife.com> be transferred to the Complainant.
/Alissia Shchichka/
Alissia Shchichka
Sole Panelist
Date: December 18, 2024
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