The Complainant is Sourcis, Inc., United States of America (“United States”), represented by Rothschild & Associates LLC, United States.
The Respondent is Darrell Kent Roberts, United States, represented by Peterson Watts Law Group, LLP, United States. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2019. On December 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 27, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 30, 2019, 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 December 30, 2019. 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 January 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 22, 2020. The Center notified the Respondent of default in meeting the due date for Response on January 23, 2020. The Response was filed with the Center on January 23, 2020, along with an explanation for the delay in filing and a request for an automatic extension to file the Response. The Center appointed W. Scott Blackmer as the sole panelist in this matter on January 27, 2020. 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 is a business corporation organized under the law of the United States state of California, with principal locations in Folsom, California and Tijuana, Mexico, according to its English-language website at “www.mexicobariatriccenter.com.” The online database of the California Secretary of State indicates that the Complainant has been registered as a corporation since October 10, 2012. The Complainant operates a weight-loss surgery center in Tijuana, Mexico catering to patients from other countries, especially the United States and Canada, in an industry dubbed “medical tourism”. As explained on the Complainant’s website: “Mexico Bariatric Center (MBC), owned by SOURCiS, Inc., is a dedicated center for bariatric and metabolic surgery. The founder of MBC, Ron Elli, Ph.D., has transformed his 10-year experience in medical tourism to form Mexico Bariatric Center in 2012.” The Complainant’s website advertises the services of Mexican bariatric surgeons at the Center and states that the Complainant has served more than 10,000 patients who “can not afford weight loss surgery elsewhere overcome obesity”. The Complainant’s services are advertised on its website and on social media (Facebook, Twitter, YouTube, Pinterest, and Instagram) under the names “Mexico Bariatric Center”, “mexicobariatriccenter”, and “mexicobariatric”. The website highlights the fact that the Complainant is certified by the Medical Tourism Association. The Complainant obtained United States Trademark Registration Number 4512884 on the Supplemental Register of the United States Patent and Trademark Office (“USPTO”) on April 8, 2014 for the standard character mark MEXICO BARIATRIC CENTER, disclaiming exclusive right to “bariatric center” apart from use in the mark as shown. Registration on the Supplemental Register is for marks that are inherently descriptive and not registrable on the Principal Register at the time of registration but that are capable of acquiring distinctiveness with use (see Lanham Act Sections 23-28, 15 U.S.C. sections 1091-1096). Subsequently, the Complainant obtained United States Trademark Registration Number 5610986 for the same mark on the Principal Register (registered November 20, 2018). The Registrar reports that the Domain Name The Complaint and the Response agree that the parties are competitors in the business of medical tourism aimed at bringing primarily United States and Canadian patients to Mexico for weight loss procedures. The Respondent indicates that he first registered the Domain Name The Domain Name The Respondent’s website includes a “Best Price Guarantee”, and terms published on the site expressly mention the Complainant and two other competitors in defining the parameters of this guarantee: “Our Best Price Guarantee offer applies strictly to comparable gastric sleeve surgery packages offered by Mexico Bariatric Center®, A Lighter Me®, and Pompeii Surgical …” The Internet Archive’s Wayback Machine shows that from May 2015 through at least February 2019 the Domain Name On August 6, 2019, the Complainant filed a lawsuit in United States federal court against the Respondent for false advertising, unfair competition, unjust enrichment, trademark infringement, and cybersquatting, SOURCiS, Inc. v. Darrell K. Roberts, et al., Case No. 2:19-cv-01500-MCE-CKD (US Dist. Ct., ED Cal.). The Respondent filed an Answer and Counterclaims on November 27, 2019. Both documents are attached to the Response. 5. Parties’ Contentions A. Complainant The Complainant asserts that both Domain Names “convey[] the same meaning to a typical consumer” as its trademark MEXICO BARIATRIC CENTER and that “consumers regularly contact Complainant with customer service inquires and complaints related to services actually purchased from Respondent.” The Complainant states that the Respondent uses the mark MEXICO BARIATRIC CENTER “as a keyword for advertising” to divert customers to the Respondent’s websites. The Complainant argues that the Respondent cannot be considered to have rights or legitimate interests in the Domain Names because “it has intentionally cloned Complainant’s business in order to steal business from Complainant and create consumer confusion in the marketplace”. The Complainant infers that the Respondent registered the Domain Names in bad faith and “cloned” the Complainant’s “website, business model, content, and products” in an effort to disrupt a competitor’s business and divert Internet users for commercial gain. B. Respondent The Respondent denies that the Domain Names are confusingly similar to the Complainant’s MEXICO BARIATRIC CENTER trademarks and argues that the Complainant is estopped from enforcing any rights in those marks because it has used “various domain name derivatives of ‘Mexico bariatric’ as part of a campaign of false advertising and illegal business activities”. The Respondent objects principally to the Complainant’s use of other domain names and especially an ostensibly neutral “consumer guide” to steer customers to the Complainant’s website and services. In the litigation pending between the parties, the Respondent argues that the Complainant’s trademarks were obtained in bad faith and are subject to cancellation. The Respondent argues that it is the Complainant, not the Respondent, that has created confusion concerning the term “Mexico bariatrics”. The Respondent contends that it has a legitimate interest in using both Domain Names for its business in “fair competition” with the Complainant and asserts that the Respondent did not register and use the Domain Names to disrupt the Complainant’s business or mislead Internet users. The Respondent argues that the Domain Name Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the 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 domain name; and (iii) the domain name has been registered and is being used in bad faith. Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. 6.1 Preliminary Matter: Untimely Response The Response was submitted a day late. Counsel for the Respondent included a request for an automatic four-day extension, explaining that this was not submitted the previous day because an office staffer left early due to illness and did not receive counsel’s instructions to submit the request for an extension. The Complainant has not objected, and the Response was received with the extension request one day after the due date for the Response, so the filing delay was not substantial. Accordingly, the Panel accepts the Response for consideration in the proceeding. 6.2 Preliminary Matter: Consolidation The Registrar identified registrants with two slightly different names and with two different postal addresses for the two Domain Names. The Complainant combined the Domain Names in a single Complaint with the representation that the Domain Names were owned by the same individual, known to the Complainant, and noted that the same telephone number was given in the registration contact details. The Response acknowledges that the same individual registered the two Domain Names and that they have both been used for the medical tourism business with which he is associated, as described in the Factual Background section above. Neither party objects to consolidation, and the Panel determines on the basis of equity and efficiency to proceed to a decision with both Domain Names. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, (“WIPO Overview 3.0”), section 4.11.1, 4.11.2 6.3 Preliminary Matter: Suspension Pending Litigation The Respondent requests a “stay” of the UDRP proceeding pending the outcome of the litigation between the parties. The litigation might or might not ultimately determine material issues concerning trademark rights, the use of the Domain Names, and the parties’ conduct. The Policy provides a mandatory but non-exclusive form of relief for complainant trademark holders, which does not prevent complainants or respondents from “submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded” (Policy, paragraph 4(k)). “All other disputes between you and any party other than us regarding your domain name registration that are not brought pursuant to the mandatory administrative proceeding provisions of Paragraph 4 shall be resolved between you and such other party through any court, arbitration or other proceeding that may be available.” (Policy, paragraph 5) The Panel has broad discretion where there are parallel proceedings: “In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.” (Rules, paragraph 18(a)) As noted in the WIPO Overview 3.0, sections 4.14.1 and 4.14.2, UDRP proceedings are expeditious and limited in scope. They do not entail all the procedures available and all the issues that can be addressed in civil litigation. UDRP panels are cognizant of the fact that their decisions are not binding on the courts but give the parties prompt resolution of one important operational issue – who controls the disputed domain name, at least until other pertinent legal challenges are finally laid to rest. Hence, UDRP panels are typically reluctant to suspend or terminate proceedings in deference to ongoing judicial proceedings of indeterminate duration. This Panel is of the same view and declines, therefore, to suspend or terminate the present proceeding. A. Identical or Confusingly Similar The Complainant holds a MEDICAL BARIATRIC CENTER trademark registered on the Principal Register of the USPTO, which satisfies the requirement of paragraph 4(a)(i). The Complainant also cites its earlier trademark registration on the USPTO Supplemental Register, but this would not establish standing for UDRP purposes without further evidence of acquired distinctiveness, which is lacking on this record. See WIPO Overview 3.0, section 1.2.2. The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7. The Domain Name The Domain Name Accordingly, the Panel concludes that the Complainant has established the first element of the Complaint for the Domain Name Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following: (i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or (ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent urges its legitimate interest in using the Domain Names for a business described by the Domain Names. The Respondent has historically used both Domain Names for several years for a medical tourism business scheduling bariatric treatments in Mexico, although the Domain Name The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following suggested by the Complainant (in which “you” refers to the registrant of the domain name): “(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” The parties agree that they are competitors, but the Respondent denies that it competes unfairly or that it registered the Domain Names “primarily for the purpose of disrupting” the Complainant’s business, one of many in the field, or that it meant to attack the Complainant’s trademark, which is somewhat descriptive and was not registered on the Principal Register when either Domain Name was registered. The UDRP is fundamentally concerned with protecting against unfair exploitation of trademarks, thereby aiding consumers in identifying the source of competing products and services. The parties here clearly compete, but the Complainant’s trademark claims are weak at the relevant times and in the context of these Domain Names. The Complainant relies on its United States trademark registrations for MEXICO BARIATRIC CENTER on April 8, 2014, and November 20, 2018. The earlier registration, however, is on the USPTO Supplemental Register and therefore does not establish the distinctiveness of the mark at that time. As noted above, supplemental registrations are precisely designed for inherently descriptive marks that are not yet registrable as distinctive on the Principal Register. This is why UDRP panels “may scrutinize the degree of deference owed to such marks in assessing the second and third elements” (WIPO Overview 3.0, section 1.2.2). Applications to register marks on the Supplemental Register are not published for opposition. Registration of a descriptive mark on the Supplemental Register gives notice of the mark (without disclaiming common law trademark claims) and helps establish priority and continuous use. However, these marks do not receive the more substantial protections afforded to marks registered on the USPTO’s Principal Register, such as the presumption of validity of the mark, prima facie evidence of ownership of the mark and its continuous and exclusive use, and, after five years of uninterrupted use, incontestable status limiting the grounds of third-party challenges to cancel the mark. On the record here, there is no historical evidence of the Complainant’s advertising and sales under the mark three months after it was placed on the Supplemental Register, when the Respondent registered the Domain Name The Panel finds that it is also likely, however, that the Respondent was aware of the Complainant at that time, as the Respondent was entering the same business, marketing online to United States and Canadian customers seeking bariatric treatments in Tijuana, Mexico, and the Respondent acknowledges being a competitor of the Complainant. There are UDRP precedents finding bad faith in targeting an anticipated trademark. See WIPO Overview 3.0, section 3.8. But the mark at issue here was merely descriptive until it acquired distinctiveness, and both Domain Names are appropriately descriptive. One, Further, the Respondent’s website, in both its earlier and current versions, has hardly been a “clone” of the Complainant’s, as the Complainant charges. It is quite different in appearance and does not copy the Complainant’s logos or content. The Respondent has often offered service in more cities than the Complainant, as well as publishing more and different informational content. It does appear that both parties have engaged in vigorous advertising efforts to attract customers and to compete with each other and with a number of similar service providers. The Panel leaves it to the pending litigation between the parties to determine whether some of these measures amount to unfair competition or illegality, as both parties allege. The Complainant accuses the Respondent of using keyword advertising to confuse Internet users, for example, but does not furnish evidence with the Complaint in this proceeding. This is immaterial, however, as the Complainant has not demonstrated that it had protected trademark rights in July 2014 when the Respondent registered the Domain Name Moreover, the Panel does not find that the Domain Name The Panel concludes that while the Respondent was likely aware of the Complainant from the beginning, and it is possible that the Respondent meant from the time it registered the Domain Name Given these factual conclusions, the Respondent prevails on the third element of the Complaint, and the Respondent prevails as well on the second element. 7. Decision For the foregoing reasons, the Complaint is denied. W. Scott Blackmer
Sole Panelist
Date: January 30, 2020
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