Complainant is My Goals Solutions, United States of America (“United States”), represented by Lurie Strupinsky LLP, United States.
Respondent is Registration Private, Domains By Proxy, LLC, United States / Broadview Manager, flexsculpt, 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 July 22, 2021. On July 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 26, 2021, 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 Complainant on July 27, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant did not file an amendment to the Complaint. 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 Respondent of the Complaint, and the proceedings commenced on August 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 30, 2021. The Center appointed Robert A. Badgley as the sole panelist in this matter on September 2, 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 Complainant describes itself as “[…] a New York for profit corporation which provides, inter alia, marketing and other administrative services for certain affiliated medical practices.” Trading under the name Goals Aesthetics and Plastic Surgery, which is branded to all affiliated practices, Complainant works with doctors “[…] to create new forms of procedures that have trade names.” Among these procedures is one called “flexsculpt,” a method of “mixed surgical and non-surgical body sculpting to have their clients/patients achieve a specific aesthetic look.” On March 25, 2021, Complainant filed an application with the United States Patent and Trademark Office (“USPTO”) for the service mark FLEXSCULPT in connection with “Cosmetic and plastic surgery; Cosmetic body care services; Liposuction and surgical body care services.” The USPTO application states that Complainant’s first use of the mark FLEXSCULPT occurred on March 22, 2021. According to Complainant, to date the USPTO application has “received no opposition.” The mark has not yet been registered. Complainant’s entire body of evidence of its use of FLEXSCULPT as a trademark is an Instagram entry describing the FLEXSCULPT service. This entry shows 423 “likes.” There is no evidence in the record regarding the number of clients who have used the FLEXSCULPT service, the extent of Complainant’s marketing of its FLEXSCULPT services, or the extent of acquired distinctiveness or consumer recognition achieved by the FLEXSCULPT mark. Nothing is known about Respondent, and there is no allegation or evidence in the record that there was or is any relationship between the Parties. The Domain Name was registered on November 17, 2020, four months before Complainant used the FLEXSCULPT mark in commerce. The Domain Name redirects to a page at the “www.brandbucket.com” website which states: “FLEXSCULPT.COM IS NO LONGER FOR SALE ON BRANDBUCKET.” The Domain Name apparently is listed for sale at an unidentified website for USD 29,000. According to Complainant, it had originally been listed for USD 1,000. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the three elements required under the Policy for a transfer of the Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and The Panel concludes that the Domain Name is identical to the purported FLEXSCULPT trademark, but the evidence that Complainant actually enjoys trademark rights in FLEXSCULPT at this point is rather flimsy. There is no registered mark. The alleged first use of the mark was March 22, 2021, and the evidence of common law use and actual consumer recognition is almost nonexistent in this record. Nonetheless, the Panel is prepared to find that Complainant has cleared this first UDRP hurdle. Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your 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 The Panel declines to decide this element, given its ruling below on the “bad faith” element. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or The Complaint fails on this element. As noted above, the Domain Name was registered more than four months before Complainant used FLEXSCULPT as a trademark. There is no evidence that Respondent was aware that Complainant would be launching a service under the FLEXSCULPT mark. Further, as noted above, there is no evidence that Complainant’s unregistered mark enjoys any meaningful degree of renown among consumers. In sum, there is no evidence that Respondent had the (emerging) FLEXSCULPT mark in mind when registering the Domain Name, and hence bad faith registration is absent here. Complainant has failed to establish Policy paragraph 4(a)(iii). 7. Decision For the foregoing reasons, the Complaint is denied. Robert A. Badgley
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Sole Panelist
Date: September 16, 2021
Full & Egal Universal Law Academy