The Complainant is BTL Industries, Bulgaria, represented by Marks & Clerk Intellectual Property, United Kingdom.
The Respondent is Eva Juhasz, Chelsea Women’s Clinic Limited, United Kingdom, represented by Stobbs IP Limited, United Kingdom. 2. The Domain Names and Registrars
The disputed domain names The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2021. On May 7, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On May 7, 2021, the Registrar Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 10, 2021, the Registrar Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 May 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2021. Upon request of the Respondent, the due date for Response was automatically extended to June 12, 2021, pursuant to the Rules, paragraph 5(b). The Response was filed with the Center on June 12, 2021. The Center appointed Steven A. Maier as the sole panelist in this matter on June 22, 2021. 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 company registered in Bulgaria, with a branch in the United Kingdom. It is a manufacturer of medical equipment and related products, including non-invasive body shaping devices supplied under the marks EMSCULPT and EMSCULPT NEO. The Complainant is the owner of various trademark registrations for the marks EMSCULPT and EMSCULPT NEO, including for example: - European Union Trade Mark number 17263799 for the word mark EMSCULPT, registered on February 15, 2018 in International Classes 10 and 44; - European Union Trade Mark number 018196580 for the word mark EMSCULPT NEO, registered on July 1, 2020 in International Classes 10 and 44. The disputed domain name The disputed domain name Neither party has exhibited screenshots relating to either of the disputed domain names. However, at the time of the Decision, the disputed domain name The Complainant states that it is one of the world’s major manufacturers of medical equipment, its activities including physical therapy, cardiology, and medical aesthetics. It states that it has promoted its EMSCULPT device throughout the world since 2018 and the EMSCULPT NEO device since 2020. It submits that EMSCULPT is an invented term and that the Complainant has obtained significant trading goodwill in its trademarks in the United Kingdom and elsewhere. The Complainant submits that the disputed domain names are identical to its trademarks EMSCULPT and EMSCULPT NEO and that the generic Top-Level Domain (“gTLD”) “.clinic” must be disregarded for the purpose of this assessment. The Complainant submits that the Respondent has no rights or legitimate interests in respect of either of the disputed domain names. It states that it has never authorized the Respondent to use its EMSCULPT or EMSCULPT NEO trademarks for the purpose of domain names. It further contends that, while the Respondent is using the disputed domain names to offer services using the Complainant’s devices, its use of the disputed domain names falsely suggests a close affiliation between the parties or the Complainant’s sponsorship or endorsement of the Respondent’s services. The Complainant states that no such relationship exists, and indeed that certain of the Respondent’s services are not recommended by the Complainant. The Complainant refers to the criteria set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (which are further discussed in section 2.8.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)) for the consideration of circumstances in which a registrant may legitimately register and use a domain name which incorporates a third-party trademark. The Complainant submits that present case fails to meet necessary criteria, principally because the Respondent’s websites do not accurately and prominently disclose the Respondent’s relationship with the Claimant: in fact, they falsely imply that the Respondent is the owner of the Complainant’s trademarks and that the websites are official, whereas the Respondent is only one of many clinicians offering services using the Complainant’s devices. The Complainant adds that, while the Respondent does own one of its EMSCULPT devices, it has never purchased an EMSCULPT NEO device, which further emphasizes its lack of any rights or legitimate interests in respect of the relevant disputed domain name. The Complainant contends that the disputed domain names were registered and have been used in bad faith. The Complainant says that the Respondent was obviously aware of the Complainant’s EMSCULPT and EMSCULPT NEO trademarks at the time of registering the disputed domain names, and that it has registered and used those names falsely to create an association with the Complainant. The Complainant submits that the Respondent has taken unfair advantage of the goodwill in the Complainant’s trademarks by attempting to attract Internet users to the Respondent’s websites for commercial gain by falsely suggesting an affiliation with, or endorsement by, the Complainant. The Complainant requests the transfer of the disputed domain names. B. Respondent The Respondent submits that it is one of a group of companies that legitimately markets and operates equipment purchased from the Complainant. The Respondent states that, since being notified of the Complainant’s concerns, it has removed the wording “THE OFFICAL EMSCULPT CLINIC” from the website connected to the disputed domain name The Respondent accepts that the Complainant is the owner of trademarks identical to the disputed domain names but submits that the disputed domain names have been used in a descriptive manner to inform the end user of the services being provided. The Respondent submits that it has rights or legitimate interests in respect of the disputed domain names. First, it disputes that it has no authorization to use the Complainant’s trademarks. It states that it was mutually understood that the Respondent was purchasing the Complainant’s products to provide services under the EMSCULPT marks. The Respondent exhibits a purchase order and other contractual documentation passing between the parties and submits that there is no prohibition in that documentation against using the Complainant’s trademarks. The Respondent further asserts that the Complainant contracted to “provide access to [the Complainant’s] exclusive marketing materials portal […] and various materials for the clinic”, which the Respondent interprets as permitting its use of the disputed domain names. The Respondent adds that the Complainant does not provide any treatment services on its own behalf and therefore relies on third-party providers to provide such services. The Respondent points to third-party websites which include the mark EMSCULPT in the relevant domain name, including “www.emsculpt-salzburg.at” and “www.emsculpt-dresden.de”, which it contends are promoted on the Complainant’s own website. The Respondent submits that the Complainant has therefore expressly or impliedly consented to the use of the EMSCULPT marks within relevant domain names. The Respondent also lists numerous other third-party websites which include the mark EMSCULPT within the relevant domain name and/or make reference to that mark within their website content. Concerning the Oki Data criteria for the legitimate use of a third-party trademark, the Respondent submits that it is genuinely offering services using the Complainant’s EMSCULPT devices, that it is using its websites only to sell those services and that it is not making any attempt to “corner the market” in relevant domain names, as evidenced by the many other third-party domain names which include the EMSCULPT mark. The Respondent states that it not only purchased an EMSCULPT machine for GBP 138,000, but was also in commercial negotiations with the Complainant to purchase an EMSCULPT NEO machine and registered the The Respondent states that it has been in complex commercial negotiations with the Complainant and does not believe that the present proceedings are genuine. The Respondent says that the Complainant has been under pressure from other commercial partners to restrict the Respondent’s use of the disputed domain names and that the Complainant has sought to challenge certain of the Respondent’s medical procedures. The Respondent submits that the UDRP is not the appropriate forum for resolving what is in fact a dispute about medical practice. The Respondent exhibits an email exchange with the Complainant dating from October 2020, which it says evidences the Complainant’s intent to obtain the disputed domain names from the Respondent by offering a deal including a significant discount on the price of an EMSCULPT NEO machine. The Respondent contends that the Complainant is seeking to obtain the disputed domain names by way of the present proceedings having recognized their considerable commercial value. The Respondent points to the conjunctive requirement under paragraph 4(a)(iii) of the Policy that the disputed domain names must have been both registered and used in bad faith. The Respondent submits that the disputed domain names were not registered in bad faith because the Complainant agreed to supply EMSCULPT products, training, and promotional materials to the Respondent. The Respondent submits in summary that it registered the disputed domain names with a legitimate intention of using them to promote services using the Complainant’s products and that it has used the disputed domain names legitimately in connection with its offering of EMSCULPT treatments. It contends that the Complainant cannot therefore make out the conjunctive test to establish bad faith. The Respondent further submits that, as is apparent from the breakdown in the commercial relationship between the parties, the Complainant is using the UDRP in an improper attempt to obtain the disputed domain names by way of “reverse domain name hijacking”. 6. Discussion and Findings In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are: (i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and The Complainant has established that it has registered trademark rights in the marks EMSCULPT and EMSCULPT NEO. The disputed domain names are identical to those trademarks, ignoring in each case the gTLD “.clinic”, which is typically to be disregarded for the purpose of the assessment made under paragraph 4(a)(i) of the Policy. The Panel therefore finds that that the disputed domain names are identical or confusingly similar to trademarks in which the Complainant has rights. B. Rights or Legitimate Interests The Respondent contends that it has rights or legitimate interests in respect of the disputed domain names because it registered and has used them to refer to and promote its use of the Complainant’s EMSCULPT and EMSCULPT NEO products. The Respondent also relies on its contractual relationship with the Complainant, including its purchase of an EMSCULPT device and the Complainant’s agreement to provide training and promotional materials, as further evidencing its entitlement to use the disputed domain names. In the view of the Panel, even accepting that the Respondent’s intentions were as it contends, there are two overwhelming flaws in the Respondent’s case. First, each of the disputed domain names comprises the unadorned adoption of the Complainant’s EMSCULPT and EMSCULPT NEO trademarks, with no addition other than the gTLD “.clinic” in each case. It is well established in jurisprudence under the UDRP that a domain name which is identical to a trademark carries a high risk of implied affiliation with the trademark owner and can rarely be legitimate unless the trademark owner has authorized such use of its trademark: see e.g., section 2.5.1 of WIPO Overview 3.0. In this case, the Panel does not accept the Respondent’s arguments that its purchase of an EMSCULPT device, or any aspect of the contractual relationship between the parties, amounted to an express or implied authorization to register and use domain names identical to the Complainant’s trademarks. Nor is the Panel of the view that the addition of the gTLD “.clinic” serves to distance the disputed domain names from the Complainant’s trademarks: on the contrary, the Panel finds that in view of the nature of the Complainant’s products for medical aesthetic procedures, the gTLD “.clinic” is at least equally likely to imply an affiliation with the Complainant. In the view of the Panel, therefore, the disputed domain names are by their nature inherently misleading and will inevitably falsely imply to Internet users that the website to which they direct are owned, operated or authorized by the Complainant. Secondly, the Respondent’s use of the disputed domain names fails to meet the criteria set out in the Oki Data case (as further discussed in section 2.8 of WIPO Overview 3.0) in that the Respondent’s websites have not accurately and prominently disclosed the Respondent’s relationship with the Complainant. Indeed, its websites have presented a highly misleading impression of affiliation with the Complainant by their use of the terminology “OFFICIAL EMSCULPT® CLINIC” and the “OFFICIAL EMSCULPT NEO® CLINIC”, both of which use the term “official” and imply a legal connection with the Complainant’s trademarks. While the Panel notes the Respondent’s assertion that it changed the relevant wording from “THE OFFICIAL EMSCULPT CLINIC” upon becoming aware of the Complainant’s objection, the website at “www.emsculpt.clinic” continues to be headed (as of the date of this Decision) “OFFICIAL EMSCULPT® CLINIC”, while the website at “www.emsculptneo.com” is headed “OFFICIAL EMSCULPT NEO® CLINIC” and continues “The OFFICIAL EMsculpt Neo LAUNCHED in the UK, Dec 2020.” In the view of the Panel, therefore, the disputed domain names, which are themselves inherently misleading, have also been used in a manner which only compounds the likelihood of confusion as to an official affiliation with the Complainant. The Respondent is unable in these circumstances to establish any bona fide commercial use of the disputed domain names, regardless of the fact that it may actually be providing services using the Complainant’s products. The Panel finds in the circumstances that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith Similar considerations arise in connection with the issue of bad faith as are discussed under rights or legitimate interests above. It is clear that the Respondent was aware of the Complainant’s trademarks when it registered the disputed domain names and that it registered them with specific reference to those marks. However, the disputed domain names are by their nature inherently misleading and have also been used in a manner which compounds the misleading impression which they provide of an official affiliation with the Complainant. The Panel infers in the circumstances that it has been the Respondent’s intention to benefit from the false impression of an affiliation with Complainant, which constitutes the taking of unfair advantage of the Complainant’s commercial goodwill. The Panel therefore accepts the Complainant’s submission that, by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of its websites or of products or services on its website (paragraph 4(b)(iv) of the Policy). Furthermore, the Panel notes the Respondent’s claims regarding the purchase of the Complainant’s products and alleged express or implied authorization to use the Complainant’s trademark and/or register the disputed domain names. While the record supports the Respondent’s claimed purchase of the Complainant’s products, the Panel does not find that mere sale of a product would impliedly authorize the registration of the seller’s trademark in a domain name. In this regard, the Panel is unable to find any evidence in the record to support claims of authorization, either express or implied, for the Respondent to register the disputed domain names or use the Complainant’s EMSCULPT trademark in a domain name. While the Respondent refers to other third party domain names and websites, which include the Complainant’s EMSCULPT trademarks, the present proceedings fall to be decided on their own merits and in accordance with the terms of the Policy. There is no evidence before the Panel concerning the Complainant’s relationship with the other third parties in question or its reasons for any action or inaction concerning those parties and the Panel does not find this issue to be material to the facts of the present case. Nor does the Panel accept the Respondent’s submission that the Complainant has brought the present proceedings improperly. The Panel finds in the circumstances that the disputed domain names have been registered and are being used 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 disputed domain names, Steven A. Maier
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: July 6, 2021
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