The Complainant is Black Tie Medical Inc., United States of America (“United States”), represented by Robert W. Hicks & Associates, United States of America.
The Respondent is PrivacyGuardian.org / ITCO.PK, Mohsin Mubarak, Pakistan. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2020. On May 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 27, 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 June 3, 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 June 3, 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 June 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2020. An email communication was received on June 5 2020, from info@tulipmedicals.com (see below). However, no formal Response was filed with the Center. Further emails were also received by the Center on June 23, 2020 from various other email addresses claiming to be from the domain re-registrar and hosting provider company. These asserted that the Disputed Domain Name had been registered by a hosting company in Pakistan on behalf of a Pakistani company that was registered in the Sialkot Chamber of Commerce. However the link provided in the emails in question does not resolve to any page providing information about a specific company. The Center appointed Nick J. Gardner as the sole panelist in this matter on July 21, 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 incorporated in Nevada United States. It trades as “Tulip Medical Products” and manufactures and sells a range of surgical instruments primarily relating to the field of cosmetic surgery. It adopted the word “tulip” as part of its trading style as one of its original products, a canula hub, resembled the flower of that name in shape. It owns a registered trademark for the word “tulip” – United States trade mark No. 2499251 registered on October 23, 2001. This trademark is referred to as the “TULIP trademark” in this decision. The Complainant promotes its business and offers products for sale via its website which is linked to the domain name tulipmedical.com The Disputed Domain Name was registered on February 27, 2019. Filed evidence shows it was linked to a website (the “Respondent’s Website”) which offered for sale a range of surgical instruments very similar to those offered by the Complainant. It provides under the heading “location” an address in Japan. 5. Parties’ Contentions A. Complainant The Complainant alleges that Respondent do not operate a legitimate business. It says they do not actually sell medical products, or anything else. Rather, Respondents operate an imposter website, posing as Complainant’s website. Respondents take online orders and payments from customers, but never send them any products. Respondents use the Disputed Domain Name, which simply as the letter “s” to the end of Complainant’s domain name, to trick potential customers into believing they are dealing with Complainant. The Complainant says the Respondents’ website includes pirated versions of Complainant’s copyrighted photos and descriptions of its products as well as an old Tulip Medical logo. In addition to using the “TULIP” trademark in the Disputed Domain Name, Respondents use the TULIP trademark throughout its website. It also uses the term “Tulip Medical” (and not “Tulip Medicals”) throughout. The Complainant’s contentions as to the Policy can be summarized as follows. The Disputed Domain Name is similar to the TULIP Trademark. The Respondent has no rights or legitimate interests in the term TULIP or Tulip Medicals. In consequence, the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. The Complainant says the Respondents are using it to impersonate the Complainant and defraud potential customers. B. Respondent No response has been received. As noted above an email was received from info@tulipmedicals.com. This reads as follows: “thanks for email sorry for late reply because covied 19 our company close so what i help you about our domain regester [sic[] in pakistan and and also manufacturer Surgical Instruments so you company name tulip medical produce but our company name Tulip Medcials Pakistan so what do you have any problem just our company Tulip Name if the world have 110 company register so do you problem with any company our name also different with you”. This email is discussed further below. 6. Discussion and Findings Preliminary Matters The Panel notes that no formal Response has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909). The Panel also notes this is a case where one Respondent (“PrivacyGuardian.org”) appears to be a privacy or proxy service. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows: “Panel discretion In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed. Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.” In the present case the Panel considers the substantive Respondent to be ITCO.PK, Mohsin Mubarak and references to the Respondent or Respondents are to that person. Substantive Matters To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that: (i) the Disputed Domain Name is identical with or confusingly similar to a 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; (iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has rights in the TULIP trademark. The Panel finds the Disputed Domain Name is confusingly similar to this trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000‑0662). It is established that, where a mark is recognizable within a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark. It is also established that the addition of a descriptive term (such as here “medicals”) to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not prevent a finding of confusing similarity under the first element (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006‑0189). It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests The Panel finds the TULIP trademark is, on the evidence before the Panel, a term in which the Complainant has developed a significant reputation in the field of medical instruments. Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name: (i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 the respondent 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. None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the TULIP trademark. The Complainant has prior rights in the TULIP trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003‑0455). The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Even assuming the Respondent is associated with a company in Pakistan called “Tulip Medicals” as appears to be suggested in email correspondence the Center received (see above) it seems more likely than not to the Panel that such a name was deliberately adopted as part of a scheme to impersonate the Complainant. That does not confer a legitimate interest. Further it should be noted that what paragraph 4(c)(ii) of the Policy requires is that the Respondent demonstrates that he is commonly known as the Disputed Domain Name. It is not sufficient for the Respondent to say his company name is “Tulip Medicals” – he has to show that he is commonly known (i.e., legitimately trades as) as “tulipmedicals”. No evidence at all to this effect has been produced by the Respondent. The Panel therefore considers that even if the Respondent has an interest in a company called; “Tulip Medicals” that alone does not entitle him to claim a right or legitimate interest in the Disputed Domain Name. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith In the present circumstances the evidence as to the extent of the reputation the Complainant enjoys in the TULIP trademark, and the fact that the Disputed Domain Name was linked to the Respondent’s Website which manifestly plagiarises and impersonates the Complainant’s own website lead the Panel to conclude the registration and use were in bad faith. The Panel has examined the filed evidence and whilst the Respondent’s Website is not a literal copy of the Complainant’s website it clearly plagiarises significant content from the Complainant’s website and displays it in a way manifestly intended to represent it is a website operated by the Complainant. The Panel concludes that the Respondent chose to register a name comprising the Complainant’s trademark combined with the descriptive word “medicals” in order to facilitate a scheme where the Respondent’s website impersonated that of the Complainant. The Disputed Domain Name simply adds an “s” to the shortened rendering of the Claimant’s name “tulip medical” and was manifestly chosen as part of a scheme to impersonate the Complainant. The Panel notes that the Respondent’s website does not even bother to use the term “Tulip Medicals” anywhere in its content but instead uses “Tulip Medical” throughout Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (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. In the present circumstances the Panel agrees with the Complainant that factor (iv) applies as the Respondent was seeking to achieve commercial gain by impersonating the Complainant. The Panel does not know whether or not the Complainant is correct when it says the Respondent’s Website is entirely fraudulent and no goods are ever supplied in respect of any orders placed. The Panel does not consider this matters. Even if goods were supplied the Respondent is doing so by impersonating the Complainant which is squarely within factor (iv). The Panel also notes that the Respondent has not filed a proper Response and hence has not availed himself of the opportunity to present any case of good faith that he might have. The Panel infers that none exists. In reaching this conclusion the Panel has considered the email received from info@tulipmedicals.com (see above) and the other email received apparently from a hosting provider which has some involvement in these matters (see above). Even assuming these emails represent the Respondent’s case they does not come close to dealing with the evidence produced by the Complainant, nor do they properly set out evidence of whatever case it is that the Respondent wishes to advance. They seem simply an attempt to delay matters and/or obfuscate the truth. The Panel also notes that these emails provide no explanation for why the Respondent’s Website contains a location address in Japan. Taking this material as a whole the Panel concludes it does not advance any credible case that rebuts the material the Complainant has placed in evidence, which establishes bad faith. Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 Nick J. Gardner
Sole Panelist
Date: August 10, 2020
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