The Complainant is LPG Systems SA of Valence, France, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Durand Miller, South Patron CC of Johannesburg, South Africa. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2017. On April 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 21, 2017, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on April 27, 2017 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 amended Complaint on the same day.
The Center verified that the Complaint together with the amended 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 May 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2017. The Response was filed with the Center on May 24, 2017. On May 26, 2017, the Complainant filed a Supplemental Filing. On May 30, 2017, the Respondent filed a Supplemental Filing.
The Center appointed Alistair Payne as the sole panelist in this matter on June 9, 2017. 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 has since 1986 operated a business producing professional machines for use in cellular stimulation and the treatment of connective tissue. It also produces a line of cosmetics which it distributes through 60,000 centers in 110 countries. The Complainant’s business has been carried on since 1991 under the ENDERMOLOGIE brand and it owns numerous registrations for this mark including a trade mark registration in the United States under registration number 2215536. It also operates a website at at which it receives considerable Internet traffic.
The disputed domain name was registered on November 28, 2016. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns registered trade mark rights in its ENDERMOLOGIE mark as set out above. It says that the disputed domain wholly incorporates its mark without any distinguishing element prior to the “. clinic” generic top-level-domain name (“gTLD”) element. The Complainant submits that the “. clinic” gTLD does not distinguish the disputed domain name and only adds further to its confusing character. As a result, the Complainant submits that the disputed domain name is confusingly similar to its ENDERMOLOGIE mark.
The Complainant asserts that the Respondent is not associated or affiliated with it in any way and is not authorised to use the Complainant’s mark or the disputed domain name. It further says that the Respondent is not commonly known by the disputed domain name and is not making a legitimate non-commercial or fair use of the disputed domain name. In re-directing the disputed domain name to which advertises the Respondent’s services as a beauty clinic using the Complainant’s ENDERMOLOGIE technology, the Complainant asserts that the Respondent is seeking to create a false impression of association with it.
Although the Complainant confirms that the Respondent is not an authorised seller of its products, it notes that the criteria, as set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, are not fulfilled as the website to which the disputed domain name resolves does not accurately disclose the Respondent’s relationship with the Complainant in that it conveys the false impression that the Respondent is authorised to use the Complainant’s ENDERMOLOGIE mark. The Complainant notes that the Respondent is attempting to sell its beauty treatments using the Complainant’s technology with no disclaimer regarding its lack of affiliation with the Complainant.
The Complainant says that it has used its ENDERMOLOGIE mark since 1991 which is well before the Respondent’s registration of the disputed domain name on November 28, 2016. Considering that the disputed domain name wholly incorporates the Complainant’s mark and resolves to a website that promotes services using the Complainant’s technology and products, the Complainant says that it is implausible to think that the Respondent was not aware of the Complainant’s business and mark upon registration of the disputed domain name.
The Complainant maintains that the Respondent is using the disputed domain name to intentionally confuse consumers and attract them to its website by creating confusion as to source, affiliation or endorsement of the disputed domain name for the Respondent’s own commercial gain in terms of paragraph 4(b)(iv) of the Policy. In addition, the Complainant says that the Respondent’s use of the disputed domain name amounts to a disruption of the Complainant’s business and qualifies as bad faith registration and use under paragraph 4(b)(iii) of the Policy. Further, says the Complainant the Respondent’s use of a privacy service to hide its identity and its failure to respond to the Complainant’s cease and desist letter sent prior to the commencement of these proceedings is additional evidence of its bad faith. B. Respondent
The Respondent did not file a Response within the time frame required under the Policy. 6. Discussion and Findings
The Respondent did not file a response within the required time frame. When the Response was sent to the Center for filing it was accompanied by no explanation of special circumstances explaining the delay in filing. Panels have in general treated the deadline for filing a response under the Policy as a strict deadline unless there are genuinely special circumstances to explain the delay. No such circumstances have been raised in this case and therefore the Panel will disregard the late filed Response and the Respondent’s Supplemental Filing. Equally it is appropriate that the Panel also disregards the subsequent submission filed by the Complainant that responds to the late-filed Response. A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns various trade mark registrations for or of which the word mark ENDERMOLOGIE is the dominant feature. In particular, the Complainant owns United States trade mark registration number 2215536 which was filed on July 10, 1995 and registered on December 29, 1998 for its ENDERMOLOGIE mark.
The disputed domain name wholly contains the Complainant’s ENDERMOLOGIE mark without any distinguishing features. It is therefore confusingly similar to the Complainant’s trade mark registration as noted above and the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests
The Complainant has submitted that the Respondent is not associated or affiliated with it in any way and is not authorised to use the Complainant’s mark or the disputed domain name. It further says that the Respondent is not commonly known by the disputed domain name and is not making a legitimate non‑commercial or fair use of the disputed domain name. The Complainant also submits that the manner in which the disputed domain name is being used, namely to re-direct to the domain name which resolves to a website that advertises the Respondent’s beauty clinic services and makes use of the ENDERMOLOGIE mark without authority is not a legitimate use of the disputed domain name.
In re-seller type cases, previous panels have applied the factors identified in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 in order to determine whether the respondent is a re-seller with a legitimate interest in the disputed domain name.
In that case the panel set out four minimum factor requirements in helping to decide whether a respondent is making a bona fide use of a disputed domain name, or not:
“Respondent must actually be offering the goods or services at issue. E.g. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306 (January 24, 2001) (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering);
- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab,WIPO Case No. D2000-1774 (February 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., CPR Case No. 0109 (July 25, 2001) (bait and switch is not legitimate);
- The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc.,WIPO Case No. D2001-0211 (April 25, 2001) (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton,WIPO Case No. D2000-1201 (November 14, 2000) (no bona fide offering because domain name improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods.,WIPO Case No. D2001-0344 (June 14, 2001) (no bona fide use when respondent suggested that it was the manufacturer of complainant's products);
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers,WIPO Case No. D2000-1525 (January 29, 2001) (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”).”
In this case it is apparent, as submitted by the Complainant, that the website to which the disputed domain name ultimately resolves does not feature any explanation or disclosure as to the Respondent’s relationship (or lack of it) to the Complainant. The impression that is left on Internet users on being re-directed to the website which features various uses of the ENDERMOLOGIE mark is that it may very well be associated with or authorised by the Complainant. Internet users might very well be confused into thinking that it is an officially endorsed website when this is not the case.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, which case has not been rebutted by the Respondent. Accordingly, the Panel finds that the Respondent has no rights or legitimate interest in the disputed domain name and the Complaint succeeds under this element of the Policy. C. Registered and Used in Bad Faith
The disputed domain name was registered in November 2016, many years after the Complainant first used the ENDERMOLOGIE mark and after its first registration of a trade mark for that mark.
As outlined above, the Respondent is using the disputed domain name to resolve to another domain name that also features the ENDERMOLOGIE mark and then ultimately to a website that uses the mark and could easily leave Internet users with the impression that it is an official agent or distributor of the Complainant or is somehow authorised by, or is affiliated with, the Complainant. The Panel finds that in these circumstances the Respondent is using the disputed domain name to intentionally confuse consumers and attract them to its website by creating confusion as to source, affiliation or endorsement of the disputed domain name for the Respondent’s own commercial gain in terms of paragraph 4(b) iv of the Policy.
The Complainant also submits that the Respondent’s use of the disputed domain name amounts to a disruption of the Complainant’s business under the Policy. In the Panel’s view this claim is also made out in that the Respondent appears to be masquerading at the website to which the disputed domain name resolves as an official or authorised agent, licensee or distributor of ENDERMOLOGIE products when this is not the case. This is potentially disruptive to the integrity of the Complainant’s business and the Respondent’s use of the disputed domain name in this manner trades on the goodwill and reputation attaching to the Complainant’s officially appointed and trained licensees or distributors. The strong inference is that the disputed domain name was registered precisely for this purpose and therefore to disrupt the Complainant’s business in the same field of activity in terms of paragraph 4(b)(iii) of the Policy.
The Respondent’s use of a privacy service to hide its identity and its failure to respond to the Complainant’s cease and desist letter sent prior to the commencement of these proceedings only serves to reinforce the Panel’s inference of registration and use in bad faith.
As a result, the Panel finds that the disputed domain name was both registered and used in bad faith and the Complaint also succeeds under this 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 be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: June 20, 2017
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