The Complainant is Solta Medical, Inc., United States of America (“United States”), represented by Baker & McKenzie LLP, United States.
The Respondent is Domains By Proxy, LLC, United States / Jianjun Fan, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2020. On August 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 7, 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 August 12, 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 the 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 August 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2020. The Center appointed Jon Lang as the sole panelist in this matter on September 23, 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 global leader in non-surgical skin therapy. It owns numerous trademark registrations dating back to at least 2009 for its SOLTA MEDICAL mark (the Mark), including in the United States (Registration No. 3905770, registered on January 11, 2011) which claims use in connection with, inter alia, “Medical devices for contracting skin, body sculpting, and soft tissue reconstruction in a non-invasive manner…”.The Complainant also owns the domain name registration The Complainant changed its name from Thermage, Inc. to Solta Medical, Inc. on January 12, 2009. The domain name in dispute The following is a brief summary of some of the main contentions of the Complainant. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights SOLTA is a term coined by the Complainant and is the distinctive, initial and dominant portion of the Complainant’s Mark. Its inclusion in the Domain Name makes the Mark and Domain Name confusingly similar. Indeed, the dominant element of both Mark and Domain Name i.e., SOLTA, are identical. The addition of “biotech” in the Domain Name does not diminish this confusing similarity. The Domain Name resolves to an “imposter website” containing the Complainant’s products, trademarks, and a fictitious corporate identity, which leaves little doubt that the Respondent selected the Domain Name because of its confusing similarity to the Complainant’s Mark. The Respondent has no rights or legitimate interests in respect of the Domain Name The Respondent registered the Domain Name (on November 5, 2019) approximately 10 years after the Complainant began using its SOLTA MEDICAL mark and years after the Complainant’s Mark gained worldwide consumer recognition. The Respondent uses the Domain Name to falsely hold itself out as the source of the Complainant’s goods and the owner or authorized user of the Complainant’s trademarks. The Respondent does not use the Domain Name in connection with the bona fide offering of goods or services. Instead, the Respondent uses the Domain Name to create the false impression that it is a pioneer in the field of non-surgical cosmetic skin therapy and the manufacturer of the Thermage, a leading device in that field. Neither claim is true. Those claims apply only to the Complainant, who genuinely is a global leader in non-surgical skin therapy, and who is the owner of the THERMAGE trademark (United States Registration No. 4288351, registered on February 12, 2013) and manufactures the medical device sold in connection with that mark and markets it globally. The Respondent is not licensed in any way to supply the Complainant’s products or authorized to use the Complainant’s trademarks. It has no relationship with the Complainant at all. Yet the Respondent’s website (which is overflowing with misleading statements) displays the Complainant’s THERMAGE trademark and photos of its device on the landing page, thus creating the false impression that the Respondent is the device’s originator and an industry leader. The medical device bearing the Thermage Pro mark appearing on the Respondent’s site is, in fact, a photoshopped image of the Complainant’s Thermage FLX device, but with the genuine Thermage FLX mark replaced with the infringing Thermage Pro Mark. The Respondent is clearly passing off the Complainant’s goods as its own. The Respondent’s site also contains a quote from a Justin Benson, who is described as the “Solta biotech CEO”, which is lifted word-for-word from the Complainant’s site. The Respondent uses the Domain Name to deceive consumers into thinking it is affiliated with or sponsored by Complainant. There is no evidence that the Respondent was known by the Domain Name prior to its registration. The Domain Name was registered and is being used in bad faith The Respondent registered and is using the Domain Name primarily for the purposes of disrupting the Complainant’s business, or to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, location, or of a product on the Respondent’s website. The Respondent’s use of the Complainant’s trademarks, images of the Complainant’s products and content, and claims from the Complainant’s own “www.solta.com” website, is clearly an intent to mislead consumers. The Respondent’s website is designed to create the false impression that the Respondent is an affiliate or subsidiary of the Complainant for the purposes of selling infringing or counterfeit surgical devices to deceived consumers. The Respondent does this by describing itself as an “Originator. Innovator. Leader.” in the aesthetic medical device space, and provides a timeline of the Complainant’s corporate growth but deceptively inserts itself into the chronology. The final entry of that chronology states that in 2019, Thermage Pro, a “high-end instrument brand” was launched. This statement is false as the image of the device on the Respondent’s site bearing the name Thermage Pro is actually a misdescribed Thermage FLX device from the Complainant’s product line. The Respondent has simply erased the Complainant’s Thermage FLX mark and replaced it with the Thermage Pro mark. The Respondent uses the Complainant’s marks as well as images of its product without disclaimers or other indicia of independence, which encourages Internet users to believe that the Respondent and its website are affiliated with the Complainant. Moreover, one of the Respondent’s webpages copies all of the tabs and pull-down comments from the FAQ portion of the Complainant’s website relating to its THERMAGE treatment. The Respondent also uses the infringing mark, Thermage Pro with the FAQ’s, thus again reinforcing a false connection or association with the Complainant. The Complainant’s genuine contact information does not appear on the Respondent’s website, which allows consumers to contact it via email. However, an email sent to such address was returned as undeliverable. The Respondent’s website also contains what appears to be a fictitious mailing address in California, United States. According to the California Secretary of State, there is no record on file for Solta Biotech and it has not registered to do business there. The Respondent intentionally misrepresented its contact information when registering the Domain Name in an attempt to thwart enforcement action against the infringing domain name, in that the street address provided to the Registrar does not exist in the given City of residence. Moreover, the country code of the phone number provided corresponds to Afghanistan rather than China. The Respondent falsely claims affiliations with renowned institutions and world experts, inventing a global roster of healthcare experts with false names and accompanying photos from on-line stock photo sites. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed. A. Identical or Confusingly Similar The Complainant clearly has rights in the SOLTA MEDICAL mark. Ignoring the generic Top-Level Domain (“gTLD”) “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the first and dominant feature of the Complainant’s SOLTA MEDICAL mark (namely the word SOLTA), followed by the term “biotech”. As the SOLTA MEDICAL mark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity typically involves a comparison, on a visual or aural level, between the trademark and the domain name. To satisfy the test, the trademark to which the domain name is said to be confusingly similar, or at least a dominant feature of that trademark, would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent confusing similarity. The dominant part of the SOLTA MEDICAL mark, i.e., the coined term “solta” which appears first, is clearly recognizable within the Domain Name. The only real issue therefore is whether the term “biotech” which follows it, renders the Domain Name something other than confusingly similar (to the SOLTA MEDICAL mark). In the Panel’s view, it does not. Accordingly, the Panel finds that the Domain Name is confusingly similar to the SOLTA MEDICAL mark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established. B. Rights or Legitimate Interests By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding. Despite a respondent not having been licensed by or affiliated with a complainant, it might still be able to demonstrate rights or legitimate interests. For instance, a respondent can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers. There is no evidence to suggest that the Respondent was (or is) commonly known by the Domain Name. Given the use to which the Domain Name has been put i.e., to resolve to a website that uses, without permission, the Complainant's trademarks, and product images and content from the Complainants “www.solta.com” website, it can hardly be said that such use is “legitimate noncommercial or fair” or indeed “without intent for commercial gain to misleadingly divert consumers”. Indeed, the very purpose of the website to which the Domain Name resolves appears to be to mislead Internet users, and it contains numerous fictitious statements to that end. A respondent can also show that before any notice of dispute, it was using or had made 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. Again, given the use to which the Domain Name has been put, the Respondent could not possibly suggest that its offering of goods or services was bona fide. The Respondent’s website appears to be designed to create a false impression, most probably, as the Complainant suggests, for the purposes of selling infringing or counterfeit surgical devices to deceived Internet users. There is no evidence before this Panel which suggests that the Respondent has rights or legitimate interests in the Domain Name and the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. These appear to be the very circumstances present in this case. If a UDRP proceeding is commenced in circumstances where (as is the case here) a trademark (or dominant part thereof) is used in a confusingly similar domain name, and the Doman Name resolves to a website that appears to target a complainant or its products and in so doing makes, what are alleged to be, a number of false statements, it is incumbent on the respondent to come forward with an explanation if it is to avoid or attempt to avoid the risk of an adverse finding. The Respondent has not done so in this proceeding. Moreover, a respondent’s non-participation is a factor that can be taken into account, along with others such as the provision of false contact details, in considering bad faith under the Policy. The reality is that there is nothing much the Respondent in this proceeding could have said to justify its registration and the above-described use of the Domain Name and the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith. 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 Domain Name Jon Lang
Sole Panelist
Date: October 7, 2020
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