The Complainant is Oralect Licensing, Ltd. of Dallas, Texas, United States of America (“United States”), represented by Carstens & Cahoon, LLP, United States.
The Respondent is Tracey Bell, Tracey Bell Clinic of Douglas, Isle of Man, the United Kingdom of Great Britain and Northern Ireland (“UK”). 2. The Domain Name and Registrar
The disputed domain name is registered with Register.IT SPA (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2016. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 19, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent´s 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2016. At the Respondent´s request, the due date for Response was extended to June 27, 2016. The Response was filed with the Center on June 27, 2016.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 11, 2016. 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
From the limited details included in the Complaint, it appears that the Complainant is involved in the provision of dental technology such as braces for teeth. In any event, the Complaint includes evidence that the Complainant owns trademark registrations for FASTBRACES in at least the United States, Canada and the European Union. These include:
- United States Trademark No. 2,130,607, registered on January 20, 1998 in respect of orthodontic services in International Class 42 which claims a first use in commerce on January 1, 1997.
- United States Trademark No 3,044,111, registered on January 17, 2006 in respect of orthodontic appliances in International Class 10 which claims a first use in commerce on November 30, 2004.
- Community Trademark No. 001270214, registered on July 31, 2000 in respect of orthodontic and dental services in International Class 42.
- Community Trademark No. 008204737, registered on October 12, 2010 in respect of dental apparatus and instruments, orthodontic appliances and brackets, parts and fittings in International Class 10 and orthodontic and dental services in International Class 44.
It appears that the Respondent carries on a dental or orthodontics practice. So far as can be gleaned from the Complaint and the Response, the Respondent appears to have its headquarters on the Isle of Man with branches in other parts of the UK: Liverpool and Birkdale.
According to the Registrar, the Respondent registered the disputed domain name on May 11, 2013.
The disputed domain name resolves to a website headed “Fast Braces Isle of Man Looking for Fast dental braces and options to straighten your teeth?” It then sets out a range of different products for braces with an explanation of each and an estimated price range for the different options to be fitted. The options listed include traditional metal braces, ceramic braces, Fastbraces®, Lingual Braces including incognito braces, Invisalign braces, Damon braces, Clear Braces and 6 Month Smile Braces.
It would appear that the reference to the Fastbraces® product on the Respondent’s website is in fact a reference to products sourced from the Complainant. There are also indications in the Response that the Complainant may have interrupted supply of its products to the Respondent once the dispute over the disputed domain name arose. The Respondent also alleges that, for some unspecified period, the Complainant attempted to charge “licence fees” for the disputed domain name to the credit card that the Respondent used to pay for products it purchased from the Complainant. According to the Response, a dispute about that practice has been resolved. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for FASTBRACES identified in section 4 above including a registration in Canada.
The Respondent contends that the disputed domain name is not confusingly similar to the Complainant’s trademark.
The second stage of the inquiry, however, simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (“gTLD”) component as a functional aspect of the domain name system, See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the “.com” gTLD, the disputed domain name differs from the Complainant’s trademark by the addition of the geographical reference “Isle of Man” (without spaces). The addition of a geographical identifier such as that, however, is not sufficient to avoid a finding of confusing similarity. See WIPO Overview 2.0, paragraph 1.5.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview 2.0.
The Complainant states:
“The Respondent has used the domain to promote the Respondent’s orthodontic practice despite numerous notifications from the Complainant to cease doing so. The Respondent has also used the domain to fraudulently imply that Respondent is an affiliate of the Complainant, licensed to offer Complainant’s certified Fastbraces(R) orthodontic brackets and services.”
On the other hand, the Respondent appears to contend that it bought the disputed domain name lawfully, being apparently the first person to register it. Further, the Respondent contends it uses the disputed domain name to educate patients about the various options available to them when considering dental braces and accuses the Complainant of over-reaching in terms of its claims about the scope of its trademark rights.
First, the Panel notes that the Complainant has been less than frank in its disclosure about the nature of its relationship with the Respondent. It is clear from both the Complaint and the Response, however, that the Complainant did not authorise the Respondent to register the disputed domain name or to use it.
Secondly, it is also clear that the disputed domain name is not derived from the Respondent’s name.
Thirdly, it is apparent from the Respondent’s website that it operates in the field covered by the Complainant’s Community Trademark registrations. The Respondent does in fact, or at least until the dispute over the disputed domain name arose did, use the Complainant’s trademarked products in providing those orthodontic services.
In the present case, that is not a complete answer to the Complainant’s claims. First, the Respondent points out that the website has never carried any commercial revenue generating advertising such as Google Adwords and, as noted, points to its educational or informational nature. That is true, so far as it goes. However, the website to which the disputed domain name resolves is plainly advertising or promoting the orthodontic services provided by the Respondent. For example, the first lines of text on the landing page state:
“Looking for Fast dental braces and options to straighten your teeth?
Isle of Man, Liverpool, Birkdale
At Tracey Bell we provide a number of Fast braces options that are suitable for patients of all ages and with different presenting dental problems.”
While the reference to “Fast braces” quoted in the preceding paragraph may be an attempt to use the Complainant’s trademark in a descriptive or generic sense, the products which are then described include traditional metal braces, ceramic braces as well as newer, potentially faster options. Moreover, the website is not devoted solely or even substantially to promotion of the Complainant’s “Fastbraces” product. Rather, the “Fastbraces” product is just one of several different products – some branded, some not – which the Respondent offers to its customers. The information provided about the different options includes approximate price ranges. That is, the Respondent uses the disputed domain name to promote its orthodontic practice and a range of dental braces solutions.
This is not a noncommercial use. It is not a case of criticism, commentary, news reporting or other form of noncommercial expression. Rather, it is commercial use. It is use of the Complainant’s trademark to attract potential customers to the Respondent’s orthodontic practice. While one of the products available is the Complainant’s “Fastbraces” product, there are numerous other competing products also available and which are being promoted on the website to which the disputed domain name resolves. Use of the Complainant’s trademark in connection with the supply, or potential supply, of competing products on this scale does not constitute a good faith offering of goods or services under the Policy. The fact that the Respondent was the first to register the disputed domain name does not itself confer a right or entitlement to it as against the Complainant in the circumstances of this case. Domain name registration operates on a first come, first served basis but is subject to recognized trademark norms including, in particular, the Policy. Accordingly, bearing in mind the Complainant’s trademark rights, the Respondent has not rebutted the Complainant’s showing that the Respondent does not have rights or legitimate interests in the disputed domain name.
In these circumstances, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The use of a domain name based on a trademark to direct traffic to a website selling both the trademarked products and products competitive with the trademark products qualifies as use in bad faith under the Policy, at least where, as here, the trademarked products are only one of numerous possibilities. That type of use involves taking advantage of the trademark significance of the trademarked term for the promotion and sale of competitive products.
The Respondent admits that it registered the disputed domain name before it commenced supplying services using the Complainant’s products. The Respondent, however, does not deny that it was aware of the Complainant’s trademark when it registered the disputed domain name in the face of the Complainant’s allegation that the Respondent was so aware. Moreover, as already noted, the Respondent’s website does in fact include the Complainant’s “Fastbraces” products as the third of the listed options available. In these circumstances, the Panel infers that the Respondent was aware of the Complainant’s trademark when registering the disputed domain name and, further, that the disputed domain name was registered for the purpose for which it was put to use: to promote the various options available for dental braces from the Respondent’s orthodontics practice which include products competitive to the Complainant. As such, the nature of the use does not qualify as use in good faith under the Policy as discussed above. Accordingly, the Panel finds that Complainant has established the third requirement under the Policy. 6. 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 be cancelled.
Warwick A. Rothnie
Sole Panelist
Date: July 25, 2016
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