The Complainants are Mr. René-François Niforos of Lyon, France, and 55 Medispa SARL of Paris, France, represented by Bugnion S.A., Switzerland, referred to hereafter as the Complainant.
The Respondents are Mr. Geoffrey Mullan and Glow Medical Aethetics Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Lewis Silkin, United Kingdom of Great Britain and Northern Ireland, referred to hereafter as the Respondent. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2010. On November 9, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Disputed Domain Name. On November 9 and 11, 2010, Tucows Inc. transmitted by email to the Center its verification response confirming that Geoffrey Mullan is listed as the registrant and providing the contact details. The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced November 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2010. The Response was filed with the Center December 2, 2010.
The Center appointed Alistair Payne, M. Scott Donahey and Tony Willoughby as panelists in this matter on January 5, 2011. The Panel finds that it was properly constituted. Each member of 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 owns Community Trade Mark 5728217 for MEDICEUTICS for various cosmetic related items in class 3 dating from March 2, 2007. It also owns a number of domain name registrations incorporating its MEDICEUTICS mark. For example these include: , , and all were registered on October 20, 2008. The Complainant launched its MEDICEUTICS range in November 2009.
The Respondent Mr. Mullan is a cosmetic surgeon who in partnership operates non-surgical cosmetic treatment clinics through Glow Medical Aesthetics Limited, as co-Respondent, and which company trades under the name Medecetics. Mr. Mullan registered the Disputed Domain Name on December 18, 2007 and commenced trading on March 4, 2008. On August 7, 2008 the Respondent applied for registration of MEDICETICS (in figurative form) as a United Kingdom trade mark for goods and services in classes 3 and 44. The application was withdrawn on the filing of an opposition by the Complainant in February 2009. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns Community Trade Mark 5728217 for MEDICEUTICS and that the key distinguishing element of the Disputed Domain Name is confusingly similar to this trade mark.
As far as rights or legitimate interests are concerned the Complainant says that the Respondent is not making a bona fide offering of goods or services under the Disputed Domain Name and is attempting to take advantage of the Complainant’s prior rights in the MEDICEUTICS mark and business and further is attempting to divert Internet consumers to its website. The Complainant says that the Respondent does not have any registered trade mark rights or prior usage rights and has not been authorised to use the Complainant’s MEDICEUTICS trade mark.
The Complainant says that the Respondent should have been aware of its prior MEDICEUTICS registered trade mark at the time of registration of the Disputed Domain Name around 8 months later and relies on paragraph 4(b)(iv) of the Policy to submit that regardless of the Respondent’s state of mind at the point of registration, its subsequent use in bad faith is sufficient under the Policy following the decision in Octogen Pharmacal Company, Inc. v Domains By Proxy, Inc, WIPO Case No. D2009-0786.
The Complainant submits that the Respondent’s use in bad faith is only reinforced by the Respondent’s failure to respond in trade mark opposition proceedings and its continued infringing conduct following receipt of the Complainant’s cease and desist letters. It says that this is a case of typosquatting in which the Respondent is relying that when Internet users misspell the Complainant’s mark they will be diverted to the Respondent’s website at the Disputed Domain Name and will be confused as to the source or sponsorship of the Disputed Domain Name under paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent claims to have trade mark rights in MEDICETICS and submits that there is a distinctive conceptual difference between MEDICETICS and MEDICEUTICS in that although the second part of the latter mark (“ceutics”) conjures up pharmaceuticals the second half of the Respondent’s mark (“cetics”) has no meaning. The Respondent says that this was a term coined from the second and third words of its corporate name Glow Medical Aesthetics Limited. It says further that there is a distinct aural and visual difference between the marks. It also says that the parties’ respective goods and services are quite distinct – the Complainant’s mark is registered in relation to perfumery products and assorted items in class 3 while the Respondent’s mark is used in relation to class 44 cosmetic and surgical services. Based on the conceptual, visual and aural dissimilarities and the use in relation to very different goods and services, the Respondent submits that the Disputed Domain Name is not confusingly similar to the Complainant’s MEDICEUTICS trade mark.
The Respondent says that once it discovered that “Glow” was an unsuitable mark it undertook an involved brand selection process prior to choosing its MEDICETICS trade mark and prior to registering the Disputed Domain Name. This process involved its graphic designer creating a new brand and included Internet searching and its trade mark advisers undertaking trade mark searches to determine whether there were any potential conflicts. The searches undertaken before the Complainant had registered its domain names, revealed no conflicting domain names or trade marks and the Respondent says that it was not aware of the Complainant’s mark when it registered the Disputed Domain Name. The Respondent notes that the relevant site belonging to the Complainant is in French and targets French consumers but that the Respondent does not have a translated site and has never targeted French patients. Further the Complainant’s MEDICEUTICS range was only released two years after the Respondent registered the Disputed Domain Name. According to the Respondent this only reinforces its argument that it had no intention of diverting the Complainant’s customers and acted legitimately in registering the Disputed Domain Name.
The Respondent submits that as it was unaware of the Complainant’s mark when it registered the Disputed Domain Name it could not have been engaging in typosquatting. Based on its explanation of the independent creation of its mark and of the registration of the Disputed Domain Name prior to registration of the Complainant’s domain names and without knowledge of the Complainant’s mark, the Respondent says that there can be no question but that it registered the Disputed Domain Name in good faith. It says that its use of the Disputed Domain Name has only been for bona fide purposes in relation to its business as described above. Further, its failure to respond to the Complainant’s January 2009 Notice of Opposition was tactical and was in no way an acknowledgement of the Complainant’s rights. 6. Discussion and Findings
The Panel finds that Mr. Niforis as owner of the trade mark MEDICEUTICS and 55 Medispa SARL as the exclusive licensee of this trade mark are appropriately joined as the Complainant.
The Panel also finds that the interests of Mr. Mullan as the registrant of the Disputed Domain Name and of Glow Medical Aesthetics Limited which trades under the MEDICETICS name or mark and operates the website at the Disputed Domain Name are aligned and these parties are appropriately named as the Respondent in these proceedings. Registered and Used in Bad Faith
Fundamentally, the Policy is concerned with cybersquatting but this is not a case concerning cybersquatting.
There is nothing that suggests to the Panel that the Disputed Domain Name was registered with knowledge of the Complainant’s trade mark rights, or that this is a case of typosquatting. The Respondent has described a credible path of independent creation for its coined trade mark MEDICETICS which it has used for its legitimate business activities in a field of activity that is quite distinct from that of the Complainant. In the Panel’s view there is nothing to suggest that the Respondent acted with knowledge, illegitimately or did not have the right to coin its mark and to register the Disputed Domain Name in the manner described.
Neither is there anything to suggest that the Disputed Domain Name has been used in bad faith by the Respondent. The Respondent has used the Disputed Domain Name to resolve to a website for its non-surgical cosmetic treatment business based in London which is marketed under the corresponding MEDICETICS name or mark. The Complainant’s allegation that the Respondent has attempted to confuse and divert Internet consumers in terms of paragraph 4(b)(iv) of the Policy is not credible in circumstances of the parties’ very different fields of activity, the Complainant’s website obviously being targeted at French speaking consumers and the fact that the Complainant only commenced product distribution two years after the registration of the Disputed Domain Name. Neither does the Panel consider that the Respondent’s failure to respond to the Complainant’s trade mark opposition in 2009 is indicative of bad faith.
Accordingly, the Panel finds that the Complaint fails in relation to the third element of the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Alistair Payne
Presiding Panelist
M. Scott Donahey
Panelist
Tony Willoughby
Panelist
Dated: January 19, 2011
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