Can adding a geographic indicator to a domain name avoid trademark infringement? – Herbalife International, Inc. v. Zainl K.A. Haider

In Herbalife International, Inc. v. Zainl K.A. Haider Herbalife International of America brought UDRP proceedings in relation to the Respondent’s registration of the domain name

The Complainant requested transfer of the name on the following grounds:

1. the domain is confusingly similar to its trademarks
2. The Respondent has no rights or legitimate interests in the domain and are not using the domain to sell goods and/or services and;
3. The Respondent’s registration and use is in bad faith as it is attempting to pass itself off as Complainant for commercial gain to disrupt the complainant’s business.

The Respondent responded by pointing out it was legitimately selling genuine Herballife products in a country where the complainant had no trademark rights or did business. Neither had the Respondent ever given the appearance of being related in any way to the Complainant. The Respondent also argued there were many other third party domains incorporating the Complainant’s trademark.

The Respondent didn’t dispute the contention it didn’t have trademark rights in the UAE or that there were 13 third party domains which also incorporated their trademarks and against whom it hadn’t ever brought enforcement action.

The Panel, the National Arbitration Forum, found the Complainant had trademark rights under s4(a)(i) of the UDRP Policy, even if they didn’t have rights in the country the Respondent resided in. The Complainant successfully argued that the domain name is confusingly similar to their trademark insofar as it only adds the geographic indicator UAE, and was therefore confusingly similar to Complainant’s trademark under 4(a)(i). Two previous decisions were cited where it had been held that merely adding a geographic term to the end of a domain name won’t prevent the name from being confusingly similar. The Panel stated a domain name consisting of a well-known mark, with a geographically descriptive term added would be confusingly similar to the mark.

However as the respondent hadn’t proved bad faith registration and use under Policy 4(a)(iii) it decided it wasn’t necessary to determine whether the other two elements were satisfied under the UDRP policy.

However, in most cases, merely adding a geographic indicator to a trademark does not sufficiently distinguish a domain name from a trademark and a wouldn’t entitle a Respondent’s the right to the domain name.

However, where a trademark owner fails to protects it’s name and there are other domain names in existence in countries which also incorporate their trademark, a Respondent may have a better chance of retaining the domain name.

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