The Complainant is Phi Medical Aesthetics Ltd., Canada, represented by Burnet, Duckworth & Palmer LLP, Canada.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Jonathan Lee, Lita Group of Companies, Inc. (O/A LAB11), Canada. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2020. On February 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 18, 2020, 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 February 18, 2020, 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 February 21, 2020. 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 February 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2020. The Center appointed Christopher J. Pibus as the sole panelist in this matter on April 3, 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 owns and operates a business in Calgary, Alberta, Canada, which provides medical aesthetics services in the field of cosmetic injectables, skin care, and related consultation services. The name Phi Medical Aesthetics was chosen by the founders as early as December 2017. It has operated its business, and advertised its goods and services under the Phi Medical Aesthetics name since it opened its clinic in February 2018. The Complainant attempted to register the disputed domain name but found that it was unavailable because it had been registered by the Respondent on February 9, 2018. The Respondent also carries on business as a skin-care and cosmetic injectables clinic in Calgary, Alberta, Canada, under the name LAB11. The disputed domain name directs to LAB11’s homepage, namely “www.lab11.ca”. 5. Parties’ Contentions A. Complainant The Complainant has established common law rights in the name and trademark PHI MEDICAL AESTHETICS. Brand awareness for the PHI MEDICAL AESTHETICS name and mark has been built up by virtue of advertising and promotions since early 2018. The Complainant’s logo, business cards, and promotional materials all prominently display the Complainant’s trademark. Over the years 2018 and 2019 the Complainant spent over CAD 40,000 in marketing and advertising. As early as January 11, 2018, the Complainant entered into an agreement for marketing and communications services with Anstice Communications Ltd. to assist the Complainant in creative direction, graphic design, brand strategy, and project coordination. The Complainant developed and used digital advertising through Facebook and Google to promote its name and trademark. The Complainant also purchased various services from creative agencies to create commercial photographs, graphics, and video content for promotional purposes. The Complainant also held ten promotional events for customers and potential customers to promote the Complainant’s business in the Calgary area. The name and mark PHI MEDICAL AESTHETICS is a unique combination of elements, which highlights the word PHI, and evokes the “golden ratio” as it can be applied to facial beauty. The Complainant asserts that it has tangible common law rights in a distinctive trade name and trademark. The disputed domain name is confusingly similar to the Complainant’s trademark as it replicates the trademark in its entirety. The Complainant contends that the Respondent must have been aware of the Complainant’s business name, as the Complainant’s and Respondent’s clinic co-exist in the Calgary market, and are connected by virtue of the fact that one of the founders of the Complainant was an employee of the Respondent prior to the opening of the Complainant’s business. The Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent was not licensed, authorized, or affiliated with the Complainant in any manner. Further, the Respondent is not using the disputed domain name in a bona fide offering of goods and services. The disputed domain name reverts to the Respondent’s website, which offers clinical services in direct competition with the Complainant. The Complainant also contends that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent registered the disputed domain name in attempt to interfere with the Complainant’s business, and is directing the disputed domain name to the Respondent’s website, which is offering direct competitive services for the purposes of monetary gain. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements: (i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (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. A. Identical or Confusingly Similar The Panel finds that the Complainant does have common law trademark rights in the trademark PHI MEDICAL AESTHETICS, for purposes of the Policy, by virtue of the use of its name as its principal business identifier, particularly in the Calgary area, since its inception. The Complainant’s evidence of the development of its branding, its use of creative consultants, along with its web presence and promotional events over the relevant period, are sufficient to support a finding of common law rights for purposes of the Policy. The Panel finds that the disputed domain name Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Useful commentary relating to the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to the Respondent’s lack of rights and legitimate interests. The Complainant clearly owns rights in the common law mark PHI MEDICAL AESTHETICS as noted in section 4 of this Decision. The Complainant has used its trademark PHI MEDICAL AESTETICS since at least as early as February 2018 and has an established reputation in the provision of medical aesthetic services. The evidence filed in this proceeding, which was not contested by the Respondent, supports the fact that the Respondent was most likely aware of the Complainant’s trademark. The Respondent chose to use the disputed domain name to direct customers to its own website for purposes of monetary gain, which is not a bona fide offering of goods and services under the Policy. In this situation, the burden shifts to the Respondent to bring forward evidence of rights or legitimate interests. The Respondent did not respond to the Complaint. Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith As set out above, the Panel is prepared to infer that, on the balance of probabilities, the Respondent was aware of the Complainant’s common law trademark rights in the PHI MEDICAL AESTHETICS mark when it registered the disputed domain name (1) the Complainant’s common law trademark is a distinctive combination of elements; (2) the Respondent carries on business in the same city as the Complainant, in the same field of clinical services under a name apparently unrelated to PHI MEDICAL AESTHETICS; (3) there was a business connection between the parties, as one of the founders of the Complainant’s clinic had previously served as an employee of the Respondent; (4) the Respondent chose to register a domain name that was comprised of the Complainant’s distinctive common law trademark in its entirety; and (5) the Respondent directed the disputed domain name to its own website, which offers virtually identical clinical services. This conduct and indeed all of these factors support on balance a finding of registration and use in bad faith. In addition, the Panel notes that the Respondent has not submitted any response in this proceeding to show its motivations in the registration and use of the disputed domain name, and it has not rebutted the Complainant’s case on registration and use of the disputed domain name in bad faith. The Complainant has therefore satisfied the requirements under paragraph 4(a)(iii) 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 Christopher J. Pibus
Sole Panelist
Date: April 8, 2020
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