The Complainant is Parvin Mani, United States of America (“United States”), internally represented.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / James Wright, United States. 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 22, 2020. The Center sent two email communications to the Complainant on February 24 and 25, 2020, requesting the Complainant’s clarification regarding the nature of the Complaint. On February 26, 2020, the Complainant filed a new Complaint with the information requested by the Center. On February 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 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 March 2, 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 amendment to the Complaint on March 2, 2020. The Center verified that the Complaint, together with the amendment to 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 March 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2020. The Center appointed William R. Towns as the sole panelist in this matter on April 2, 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. On April 8, 2020, the Panel issued Administrative Panel Order No. 1, asking for the Parties to file additional submissions regarding the registration and use of the disputed domain name. On April 14, 2020, the Complainant filed its submissions regarding the Administrative Panel Order. The Respondent did not respond to the Panel Order. 4. Factual Background The Complainant, a licensed board certified physician, owns and operates a cosmetic laser clinic in San Diego, California. The Complainant since 2005 has operated the clinic as the San Diego Cosmetic Laser Clinic. The Complainant has promoted the San Diego Cosmetic Laser Clinic on her website since registering the domain name The Panel issued an Administrative Panel Order on April 8, 2020, seeking clarification from the Parties whether the Complainant’s registration of the disputed domain name expired or was deleted prior to the apparent registration/acquisition of control of the disputed domain name by the Respondent. The Panel also invited the Respondent to explain why the disputed domain name had been directed to the Complainant’s San Diego Cosmetic Laser Clinic website. The Complainant responded to the Panel Order on April 14, 2020. The Respondent did not respond to the Panel Order. The Complainant submits that the Registrar failed to auto renew the disputed domain name as scheduled for December 5, 2019, and then failed to provide notice to the Complainant of the domain name expiration per the Registrar’s “expiration timeline” as posted on its website. 5. Parties’ Contentions A. Complainant The Complainant submits that she has established unregistered or common law trademark rights in San Diego Cosmetic Laser Clinic, and that the disputed domain name The Complainant maintains that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent has somehow taken control of the Complainant’s website and is moreover infringing the website’s copyrighted content through use of the disputed domain name. The Complainant emphasizes that the website was created as a platform to offer information and contact methods for patients seeking the Complainant’s consultation and services. The Complainant asserts that the Respondent registered and has used the disputed domain name in bad faith. The Complainant contends the Respondent registered the disputed domain name and has in effect hijacked the Complainant’s website and its copyrighted content, including web pages, pictures, writing, videos, and graphics. According to the Complainant, the Respondent is directing all traffic from the Complainant’s patients and prospective patients to the website and duplicating patients’ contact information, and that patients are unable to reach the Complainant’s clinic. The Complainant explains that while a new domain name The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules, and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (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 with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel initially addresses whether the Complainant has established trademark rights in “San Diego Cosmetic Laser Clinic” for purposes of paragraph 4(a)(i) of the Policy. The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy has been held to encompass registered marks as well as unregistered or common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc.,WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association,WIPO Case No. D2001-0218. A complainant may demonstrate unregistered or common law trademark rights in a mark when as a result of continuous and substantially exclusive use in commerce it comes to be recognized by the public as a distinctive identifier of the complainant’s goods or services. See WIPO Overview 3.0, section 1.3. Where the asserted common law or unregistered trademark is comprised of descriptive or dictionary words, the complainant usually must present evidence of “secondary meaning” or acquired distinctiveness. See The Carphone Warehouse Limited and The Phone House B.V. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2008-0483. Relevant evidence demonstrating such acquired distinctiveness (or “secondary meaning”) includes a range of factors such as (i) the duration and use of the mark; (ii) the amount of sales under the mark; (iii) the nature and extent of advertising using the mark; (iv) the degree of actual public recognition; and, (v) consumer surveys. See WIPO Overview 3.0, section 1.3 and relevant cases cited therein. The record in this case reflects the Complainant’s substantially exclusive use of “San Diego Cosmetic Laser Clinic” as an indicator of source for more than 15 years. The Complainant has advertised and promoted her clinical services, maintaining an Internet and digital presence, as well as print ads in the San Diego Reader Magazine and digital marketing through the San Diego Reader Agency. The Complainant has furthermore acquired (media) recognition on her Yelp page, which includes unsolicited reviews submitted by customers over a number of years. The Complainant also publishes a newsletter regarding the clinic. In light of the foregoing, the Panel concludes that a sufficient showing has been made that the “San Diego Cosmetic Laser Clinic” has come to be recognized by the relevant public sector as a symbol that identifies the Complainant’s goods and services from those of others. The Respondent’s targeting of the Complainant after obtaining the disputed domain name, characterized by the Respondent’s appropriation of the Complainant’s website (i.e., passing off), further supports a determination that the Complainant’s “San Diego Cosmetic Laser Clinic” moniker has achieved significance as a source identifier. See WIPO Overview 3.0, section 1.3. The Panel finds that the disputed domain name In this case, the Complainant’s “San Diego Cosmetic Laser Clinic” mark is recognizable in the disputed domain name.2 When the relevant mark is recognizable in the disputed domain name the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.3 In this context, also noting the use to which the dispute domain name has been put, it is readily apparent that “sd” is an acronym or abbreviation for “San Diego”. See of particular relevance here, San Diego Hydroponics & Organics v. Innovative Growing Solutions, Inc.,WIPO Case No. D2009-1545 ( Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark. The Respondent notwithstanding has registered the disputed domain name, which is confusingly similar if not virtually identical to the Complainant’s mark, and has linked the disputed domain name with the Complainant’s website. Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a 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 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 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 name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy. The Panel concludes from the record that the Respondent in all likelihood was aware of the Complainant and the Complainant’s rights when registering the disputed domain name. The Panel considers that the Respondent registered the disputed domain name seeking to exploit or profit from the Complainant’s reputation and rights. The Respondent by directing the disputed domain name to the Complainant’s website is effectively passing himself off as the Complainant. The Respondent has offered no explanation for what appears to be a deliberate attempt on his part to do so. In light of the foregoing, the Panel finds that the Respondent has neither used nor demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed above, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraphs 4(a)(iii) and (iv) of the Policy. The Panel concludes from the attendant circumstances as reflected in the record that the Respondent registered and has used the disputed domain name in bad faith, seeking to exploit and profit from the Complainant’s reputation and rights. Accordingly, the Panel finds the Complainant has satisfied the requirements of 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 William R. Towns 1 See WIPO Overview 3.0, section 1.7. 2 See WIPO Overview 3.0, section 1.8 and cases cited therein. 3 Id. 4 See, e.g., THE FAMOUS SD CHICKEN, U.S. Reg. No. 6016996; DINE LOCAL SD, U.S. Reg. No. 5212671; LEGION SD, U.S. Reg. No. 5814335; RESTORE SD, U.S. Reg. No. 5925888 (owner: Restore SD Plastic Surgery). The USPTO typically requires a disclaimer of “SD” as a condition to registration when used as an acronym or abbreviation for “San Diego”. 5 See WIPO Overview 3.0 , section 1.11 . The meaning of a particular gTLD may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. See WIPO Overview 3.0, sections 1.11.2, 2.14, and cases cited therein.
Sole Panelist
Date: April 19, 2020
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