Rightsy — Protect your rights: IP search and flat-fee legal services

Search trademarks

Herbalife International, Inc. v. Sergey Podyakov also known as Herbatel

WIPO Case No. D2001-1419

Outcome
Transfer
Domain names
herbatel.com
Complainant
Herbalife International, Inc.
Respondent
Sergey Podyakov also known as Herbatel
Panelist
Ian Barker QC
Registrar
Tucows, Inc., of Toronto, Canada ("the Registrar")
Decided
19 Feb 2002
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-1419.html

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Herbalife

International Inc v. Sergey Podyakov (aka herbatel)

Case

No. D2001-1419

1. The Parties

The Complainant is Herbalife

International, Inc., a Nevada corporation with its principal place of business

at Los Angeles, CA, U.S.A. The Complainant is represented by Mr. Mark Chizhenok

of the law firm Gorodissky & Partners, Moscow, Russian Federation.

According to the Response

filed, the true Respondent is Sergey Podyakov of St. Petersburg, Russia.

The Respondent is represented by Mr. Vladimir Dmitriev of Quantum Ltd,

Attorneys of St. Petersburg, Russian Federation.

2. The Domain Name and

Registrar

The domain name at issue

is <herbatel.com>. The domain name is registered with Tucows, Inc., of

Toronto, Canada ("the Registrar"). The domain name was registered

to Mr. Podyakov on May 15, 2000. However, the registrant of the domain

name as advised by the Registrar is Herbatel, Box 172, Express Post, St Petersburg,

Russia. There is no mention of the Respondent, Sergey Podyakov, in the records

of the Registry.

3. Procedural History

A Complaint submitted by

Herbalife International, Inc., was received on November 30, 2001,

(electronic version) and December 4, 2001, (hard copy) by the World Intellectual

Property Organization Arbitration and Mediation Center ("WIPO Center").

Some minor amendments were made to the Complaint before dispatch to the Respondents

named by the Complainant, viz Dermajetics/Herbatel. The Complaint related to

two names, ie <dermajectics.com> and <herbatel.com>. The Complainant

named as Respondent for both names "Dermajetics/Herbatel" alleging

that there was only one person involved as Respondent in both domain name disputes.

On December 7, 2001,

a request for Registrar verification was transmitted by the WIPO Center to the

Registrar, requesting it to:

- Confirm that a copy of

the Complaint had been sent to it by the Complainant as required by WIPO Supplemental

Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"),

paragraph 4(b).

- Confirm that the domain

name <herbatel.com> is registered with the Registrar.

- Confirm that the person

identified as the Respondent is the current registrant of the domain name.

- Provide full contact

details, i.e., postal address(es), telephone number(s), facsimile number(s),

email address(es), available in the Registrar’s WHOIS database for the registrant

of the disputed domain name, the technical contact, the administrative contact

and the building contact for the domain name.

- Confirm that the Uniform

Domain Name Dispute Resolution Policy ("UDRP") was in effect.

- Indicate the current

status of the domain name <herbatel.com>.

By email dated December 7,

2001, the Registrar advised WIPO Center as follows:

- It had received a copy

of the Complaint from the Complainant.

- It is the Registrar of

the domain name registration <herbatel.com>.

- "Herbatel"

is shown as the "current registrant" of the domain name.

- The administrative, billing

and technical contact is Administrator, System, Box 172, Express Post, St. Petersburg,

Russian Federation.

- The UDRP applies to the

domain name.

- The domain name registration

<herbatel.com> is currently on "hold" status.

- The Registrar has currently

incorporated in its agreements the Uniform Domain Name Dispute Resolution Policy

("UDRP") adopted by the Internet Corporation for Assigned Names and

Numbers ("ICANN") (hereinafter simply the "Policy").

- The advice from the Registrar

that the domain name in question is on "hold" indicates the Respondent

has not requested that the domain name be deleted from the domain name database.

The Respondent has not sought to terminate the agreement with the Registrar.

Accordingly, the Respondent is bound by the provisions of the Policy. The Respondent

has not challenged the jurisdiction of the Panel.

- Having verified that

the Complaint satisfied the formal requirements of the Policy and the Rules

for Uniform Domain Name Resolution Policy ("Rules"), the WIPO Center

on December 18, 2001, transmitted by post-courier and by email a notification

of the Amended Complaint and Commencement of Administrative Proceedings to the

Respondent as named in the Complaint. A copy of the Amended Complaint was also

emailed to the Registrar and ICANN.

- The Complainant elected

to have its Complaint resolved by a single Panelist; it has duly paid the amounts

required of it to the WIPO Center.

- The Respondent was advised

that a Response to the Complaint was required within 20 calendar days.

The Respondent was also advised that any Response should be communicated, in

accordance with the Rules, by four sets of hard copy and by email. The Respondent

Sergey Podykov filed a Response by email on January 8, 2002, and by hard

copy of January 15, 2002. He protested at the joinder of the two domain

names in the one Complaint and disavowed any connection with the domain name

<dermajetics.com>.

- WIPO Center invited the

Honorable Sir Ian Barker QC of Auckland, New Zealand to

serve as Sole Panelist in the case. It transmitted to him a statement of acceptance

and requested a declaration of impartiality and independence.

- The Panelist duly advised

acceptance and forwarded to the WIPO Center an executed declaration of impartiality

and independence. The Panel finds that the Administrative Panel was properly

constituted in accordance with the Rules and the Supplemental Rules. Upon receipt

of electronic copies of the Complaint and Responses (including a Response filed

in support of the name <dermajectics.com>) the Panelist issued a Procedural

Order which is annexed hereto as Annexure 1. The Panel severed the Complaint

into two, each involving one of the names in the original Complaint. This decision

therefore relates solely to the domain name <herbatel.com>. The Complaint

in relation to the domain name <dermajectics.com> has now been terminated

at the Complainant’s request.

- On January 14, 2002,

WIPO Center forwarded to the Panel by courier the relevant submissions and the

record. In terms of Rule 5(b), in the absence of exceptional circumstances,

the Panel was required to forward its decision by January 28, 2002. However,

because of the matters raised in the Procedural Order and discussed above, the

date for forwarding the decision is extended to February 1, 2002.

- The Panel has independently

determined and agrees with the assessment of WIPO Center that the Complaint

meets the formal requirements of the Rules and the Supplemental Rules.

4. Factual Background

The Complainant owns the

trademark "Herbatel" which is registered in the European Community

(No. 001345610) and the United States (No. 2269048). This trademark is used

by the Complainant for long-distance telephone services. The mark is not registered

in Russia.

5. Parties’ Contentions

Complainant:

The disputed domain name

is identical to the Complainant’s trademark.

The Respondent has no rights

or legitimate interest in respect of the disputed domain name because:

- the Complainant did not

authorise the Respondent to use the name;

- the Respondent has no

corresponding trademark registrations for HERBATEL;

- The Respondent does not

have a trade name or a company name similar to the disputed domain name. The

information in Whois about the name of the Respondent should be considered fictitious

since for each domain name the Respondent owns a different name of person is

mentioned while the address remains the same.

- The Respondent has not

been commonly known by the domain name in question nor does the Respondent offer

any particular service or information through the name.

The disputed domain name

was registered by the Respondent in bad faith because of the following:

- The Respondent registered

the domain name in question in order to prevent the Complainant from reflecting

its mark in a corresponding domain name. According to Network Solutions’ WHOIS,

the Respondent has registered more than 100 (one hundred) ".com"

domain names using the address the same or close to that for <herbatel.com>.

- The way the Respondent

used the disputed domain names cannot be considered as bona fide offering of

goods and services. The catalogue of WWW resources that was presented at the

website is a simple compilation of links to commonly-known Russian recourses.

This web catalogue may be compiled in two minutes by every frequent user of

the Russian internet. The said web catalogue may be seen now under most of the

other domain names referred to above (some of them marked "For sale").

The website also presents nothing special (only imported news-string and web-form).

The same content may be found under other domain names of Respondent.

Respondent:

The domain name <herbatel.com>

was registered by a Californian company on March 9, 1998. The application

by the Complainant for trademark registration was first made on July 20,

1998, and was used in commerce by the Complainant only since May 1998.

Hence the domain name has been used in commerce prior to the first use of the

Complainant’s mark.

The Respondent has for

a long time specialized in the raising, cultivation and sales of medicinal herbs,

he has a great interest in collecting plants, and is nicknamed "Herbatel"

in English spelling. He has been commonly known by this name as an individual.

The word "Herbatel" is derivative from the noun "Herb" (in

Russian herbarium) with the suffix "tel" meaning a person occupied

in a definite kind of activity (like the suffix "-er" in the words

"builder", "teacher").

In 1999 the Respondent

wished to found his own business for raising, cultivating and selling herbs

in medical purposes. He then discovered the domain name <herbatel.com>

was available.

In 2000, the Respondent

applied to "ExpressPost" (a domain name Registrar in Russia) to register

the domain name. This company granted him a temporary mailing address (P.O.

172, ExpressPost, Saint-Petersburg, 193015, Russia) and informed him that the

domain name <herbatel.com> was free as of May, 2000. He then registered

the domain name and started preparations for organizing his own business. For

that purpose he registered several more domain names (e.g. >herbatel.spb.ru>).

In November, 2001, the establishment of this business was suspended due to lack

of funding.

It is a commonly known

practice for companies registering domain names for their clients to provide

standardized content for their websites, also known as modules or parking pages.

Such technique is used by the leaders of the market like Verisign, Inc. or Register.com,

Inc. The website content in this case is provided usually for free or for a

small fee offering a temporary solution for clients developing their websites.

Thus hundreds or thousands of websites can share the same or similar content.

This common practice cannot lead to the conclusion that a domain name holder,

using standardized content for its website, acts in bad faith.

Thus, the Complainant has

failed to prove that the Respondent Sergey Podyakov has no rights or legitimate

interest in the domain name <herbatel.com> and that the domain name <herbatel.com>

has been registered and used in bad faith.

6. Discussion and Findings

Paragraph 15(a) of the

Rules instructs the Panel to:

"decide a complaint

on the basis of the statements and documents submitted in accordance with the

policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant,

under paragraph 4(a) of the Policy, is to show:

- That the domain name

registered by the Respondent is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and

- That the Respondent has

no legitimate rights or interests in respect of the domain name; and

- That the domain name

has been registered and used in bad faith.

The disputed domain name

is identical to the Complainant’s mark. The Respondent’s claim that the domain

name was originally registered before the Complainant applied for its mark is

irrelevant because the Respondent was not the registrant at the time. One cannot

speculate on the reason why the Californian first registrant registered the

name. The focus on the time is when this Respondent registered the name, and

his motivations at that time. Significantly, he has not chosen to disclose why

the name was not registered in his own personal name but in the name of "herbatel".

As to whether the Respondent

has any legitimate rights, the Complainant gave him none. However, Paragraph

4(c) of the Policy allows a Respondent to rely on, inter alia, (a) a claim

that Respondent is commonly known by the disputed domain name and/or (b) Respondent

has made demonstrable preparations to use the disputed domain names in connection

with a bona fide offering of goods and services. Although the Response

is somewhat confused, the Respondent appears to rely on both the above.

The evidence that Respondent

is commonly known by the name "herbatel" is spartan in the extreme.

There is no affidavit from him or anybody else verifying this broad assertion.

Nor is there any evidence from some expert in the Russian language to support

the linguistic argument asserted. The Panel finds that Respondent fails to supply

sufficient evidence that he comes within this provision of Paragraph 4(c).

Likewise, the claim that

Respondent had made demonstrable preparations to use the disputed domain name

in connection with a bona fide offering of service is fatally weak. The evidence

of demonstrable preparation, apart from the Respondent’s unsubstantiated assertion,

comes down to the mere registration of the name and acceptance of a module of

a website provided by ExpressPort. There is not shown any attempt to develop

the website. Nor is there any indication of how or what goods were to be marketed

on the website.

Accordingly, the Complainant

has discharged its onus on the second criterion.

As to bad faith, there

is no allegation that the Respondent in Russia was ignorant of the Complainant’s

marks registered in the European Community and the United States. The fact that

Respondent has registered other names with "herbatel" overtones indicates

that he well knew of the Complainant. Indeed, if he were an authority on herbal

remedies (as he asserts), one can infer that he must have heard of the Complainant.

The fact that he purchased the name indicates a lack of enquiry or a reckless

disregard for Complainant’s possible trademark rights. The fact that he purchased

the domain name other than in his own name indicates a desire not to be readily

associated with the name.

The lack of development

of the website indicates continuing bad faith particularly, if, as Respondent

alleges, he was financially unable to complete the website. One has to wonder

why he wishes to retain the name in these circumstances.

Accordingly, the Panel

finds the third criterion proved.

7. Decision

For the foregoing reasons,

the Panel decides:

(a) That the domain name

registered in the name of "herbatel" is confusingly similar to the

trademark to which the Complainant has rights; and

(b) That neither the Respondent

nor "herbatel" (i.e. the domain name registrant) have any rights or

legitimate interests in respect of the domain name; and

(c) That the domain name

has been registered and is being used in bad faith.

Accordingly, pursuant to

paragraph 4(i) of the Policy, the Panel requires that the registration of the

domain name <herbatel.com> be transferred to the Complainant.

Hon. Sir

Ian Barker QC

Sole Panelist

Dated: January 28,

2002

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL

PROCEDURAL ORDER NO. 1

Herbalife International, Inc., v dermajetics.com and herbatel.com

Case No. D 2001-1419

Case No. D2002-0154

Background

1. A Complaint was filed

with the WIPO Arbitration and Mediation Center ("the Center") on November

30, 2001, by Herbalife International, Inc., of Century City, California, USA.

The Complaint concerned two Domain Names, <dermajetics.com> and <herbatel.com>.

2. The Respondents cited

by the Complainant were "herbatel.com" of Box 172, St Petersburg,

Russia, and "dermajetics.com" of Box 544, St Petersburg, Russia.

3. The Complainant alleged

"that the same Respondent hides behind these two addresses because of the

following":

"- both domain

names were associated with common name-server ns.neonet.com 208.239.240.71 (at

least till September 12, 2001, see Annex 2);

- there were the same

content on the web-servers for these two domain names (at least till June 04,

2001, see Annex 3);

- disputed domain names

are only a small part of the huge domain name pool (about 200 domain names),

the Whois record of which shows the same name-server and contact details as

mentioned above (see Annex 4)."

4. After obtaining Registrar

verification (from a different Registrar for each name) the Center requested

certain amendments to the Complaint. An amendment to the Complaint was filed

by the Complainant on December 11, 2001 (email) and December 14, 2001 (hard

copy). This Complaint was then sent by the Center to the addresses referred

to in paragraph 2 above with the usual notifications to Respondent.

5. On January 8, 2002,

a Response was filed (by email and fax only and not by hard copy) by Sergey

Podyakov "also known as Herbatel" in respect of the Domain Name <herbatel.com>

only by a law firm on his behalf. The hardcopies were received by the Center

on January 15, 2002.

6. On January 9, 2002,

a Response was filed (by email and fax and not by hard copy) by "OOO Artema"

in respect of the Domain Name <dermajetics.com> only. The same law firm

as acted for Sergey Podyakov filed this Response. The hardcopies were received

by the Center on January 15, 2002.

7. Both Respondents asserted

that they were not connected and objected to the joinder of the two Domain Names

in the one Complaint. Counsel referred to Rule 4(c) of the Policy.viz. "The

complaint may relate to more than one domain name, provided that the domain

names are registered by the same domain-name holder".

8. On January 9, 2002,

the Complainant sought leave to file supplementary submissions on the grounds

that some of the allegations in the Responses were untrue.

Order

9. The Panel considers

that the Complainant has not proved that, as at the date of filing of the Complaint,

the two domain names were registered by the same domain name holder. The evidence

presented by the Respondents suggests otherwise.

10. The Panel further considers that since both Respondents have filed Responses,

no injustice is done by severing the two Complaints and considering them separately

on the information supplied by the parties. A similar decision was reached by

the learned Panelist in WIPO Case No. D2000-0836

which this Panel follows with approval.

11. The Complainant has shown no particular reason why the administrative process

should be prolonged by its filing of a further pleading. I adopt, in this case,

the reasoning on this aspect of the learned Panelist in WIPO

Case No. D2000-0596 on the filing of additional material.

12. In view of the foregoing,

the Administrative Panel hereby orders as follows:

Case D2001-1419 shall be

severed into two separate administrative proceedings as follows:

(a) D2001-1419A - Herbalife

International Inc v Sergey Podyakov

[The Center subsequently numbered this case D2001-1419.]

(b) D2001-1419B - Herbalife

International Inc v OOO Artema.

[The Center subsequently numbered this case D2002-0154.]

13. The Complainant is

required to pay an additional USD1,500 corresponding to a filing fee for case

D2001-1419B by no later than seven (7) calendar days following the notification

of Procedural Order No. 1 to the Parties. In the event that the Complainant

fails to make the requested payment, Case No D2001-1419B as presently filed

shall be considered terminated.

14. There shall be no further

written submissions in either of the cases, except as specifically directed

by the Administrative Panel following further review of the case records.

15. In view of the presence

of exceptional circumstances, the deadline for the issuance of the Panel’s decisions

in both cases is postponed to February 1, 2002, as permitted by Paragraph 10(c)

of the Rules.

16. The Center is directed

to distribute this request to the Complainant via its authorized representative

and to the Respondents at all known e-mail addresses.

Hon. Sir

Ian Barker QC

Sole Panelist

Dated: January

16, 2002

More cases by this complainant

Open this decision on Rightsy