The Complainant is Smiledirectclub, LLC, United States of America (“United States”), represented Al Tamimi & Company, United Arab Emirates.
The Respondent is Rasool Kuhestani, Rayan Dadeh Negar Dena, Iran (Islamic Republic of).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2021. On October 20, 2021, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On October 23, 2021, IRNIC 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 .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 12, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2021. On December 7, 2021, the Center notified the Respondent’s default.
The Center appointed Luca Barbero as the sole panelist in this matter on December 17, 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 BackgroundThe Complainant was founded in 2014 by Jordan Katzman and Alex Fenkell. It is based in Nashville, United States. The Complainant has been in business since 2015, and adopted the trade name and trademark SMILE DIRECT CLUB on March 29, 2016. Trading since then under the SMILE DIRECT CLUB name and trademark, the Complainant offers a medtech platform enabling doctor directed, remote clear aligner teeth straightening and providing related goods such as lip balm, teeth whitening products, toothbrushes and toothpaste.
The Complainant’s aligners and orthodontic products are delivered directly to consumers pursuant to the prescription of a dentist or orthodontist licensed in the jurisdiction where the customer resides, so that they can straighten their teeth without the necessity of multiple in-person office visits to an orthodontist or dentist. Complainant’s customers can use the Complainant’s proprietary tele dentistry platform remotely and under the remote supervision and clinical care of licensed dentists and orthodontists who also use the platform to treat these customers as their patients.
Since 2016, the Complainant has spent approximately USD 750 million in sales and marketing expenditures to advertise and promote its goods and services under the trademark SMILE DIRECT CLUB.
The Complainant is the owner of several trademark registrations for SMILE DIRECT CLUB, including the following, as per trademark certificates submitted as Annex 5 to the Complaint:
- United States trademark registration No. 5926755 for SMILE DIRECT CLUB (word mark), filed on March 26, 2019 and registered on December 3, 2019, in international classes 9, 14 and 25;
- United States trademark registration No. 6285613 for SMILE DIRECT CLUB (word mark), filed on January 20, 2019 and registered on March 9, 2021, in international class 3;
- United States trademark registration n. 6285614 for SMILE DIRECT CLUB (figurative mark), filed on January 20, 2019 and registered on March 9, 2021, in international class 3;
- United States trademark registration n. 5827012 for SMILE DIRECT CLUB (word mark), filed on January 20, 2019 and registered on August 6, 2019, in international class 18;
- United States trademark registration n. 6286135 for SMILE DIRECT CLUB (word mark), filed on March 2, 2020 and registered on March 09, 2021, in international class 21;
- United States trademark registration n. 6331720 for SMILE DIRECT CLUB (word mark), filed on March 2, 2020 and registered on April 27, 2021, in international class 03.
The Complainant is also the owner of the domain name
The disputed domain name
The Complainant contends that the disputed domain name is identical to the trademark SMILE DIRECT CLUB in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the country code Top-Level Domain “.ir”.
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is in no way connected or affiliated with the Complainant, nor is it authorized to carry out commercial or noncommercial activities on its behalf.
The Complainant further asserts that the Respondent is not commonly known by the disputed domain name, and has made no demonstrable efforts to use the disputed domain name in connection with a bona fide offering of goods or services or for noncommercial or fair use, considering the Respondent’s website prominently displays the Complainant’s trademark and offers similar or competing services to those of the Complainant, in an attempt to blatantly create a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship affiliation or endorsement of its website.
The Complainant further submits that the Respondent is not a licensee of the Complainant and has apparently used the disputed domain name to trade off the Complainant’s goodwill, integrity and world renown with the aim of fraudulently impersonating the Complainant whilst leading consumers into believing that the Respondent is in some way affiliated, authorized or sponsored by the Complainant.
Moreover, the Complainant highlights that the disputed domain name is also associated with email addresses using “[…]@smiledirectclub.ir”, which cannot and does not amount to a bona fide or legitimate noncommercial or fair use of the disputed domain name.
With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondent’s unauthorized use of the disputed domain name and of the Complainant’s trademarks to impersonate the Complainant constitutes in itself bad faith registration and use.
The Complainant emphasizes that, considering the circumstances of the present case, the Respondent was well aware of the Complainant and its intellectual property rights at the time of registering the disputed domain name and, indeed deliberately registered the disputed domain name in an attempt to divert Internet users to its website by passing off as the Complainant, in an attempt to gain financially from the Complainant’s goodwill and world renown.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAccording to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered or is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant has established rights over the trademark SMILE DIRECT CLUB based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annex 5 to the Complaint.
As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)1 , the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
In the case at hand, the Panel finds that the disputed domain name is identical to the trademark SMILE DIRECT CLUB as it reproduces the trademark in its entirety with the sole addition of the country code Top-Level Domain “.ir”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsIt is well established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the Respondent.
Accordingly, in line with previous decisions, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
Moreover, based on the Registrar-disclosed WhoIs records of the disputed domain name and the additional documents submitted by the Complainant, there is no element from which the Panel could infer a Respondent’s right over the disputed domain name, or that the Respondent might be commonly known by the disputed domain name.
Based on the evidence on record and in the absence of a Response, the Panel finds that the Respondent’s use of the disputed domain name, identical to the Complainant’s prior trademark, to redirect Internet users to a website reproducing without authorization the Complainant’s figurative trademark and promoting dental products and services which look identical and compete with the ones of the Complainant, does not amount to bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademarks.
In addition, the Panel notes that the disputed domain name is identical to the Complainant’s trademarks, which carries a high risk of implied affiliation (section 2.5.1 of the WIPO Overview 3.0).
Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.
C. Registered or Used in Bad FaithParagraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered or is being used by the Respondent in bad faith.
The Panel finds that, in light of i) the prior registration and use of the Complainant’s trademark SMILE DIRECT CLUB in connection with the Complainant’s dental products and services also online via the Complainant’s website “www.smiledirectclub.com”, ii) the identity of the disputed domain name with the trademark SMILE DIRECT CLUB, and iii) the Respondent’s use of the Complainant’s figurative trademark on the website to which the disputed domain name resolved, the Respondent very likely registered the disputed domain name having the Complainant’s trademarks in mind.
In view of the Respondent’s use of the disputed domain name in connection with a website misappropriating the Complainant’s trademark and promoting products identical to the ones offered by the Complainant under the identical domain name
Lastly, the Panel notes that the disputed domain name is currently resolving to a suspended website. However, as established in several prior decisions, the non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. See Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003 and Section 3.3 of the WIPO Overview 3.0.
Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Luca Barbero
Sole Panelist
Date: December 31, 2021
1 Noting the substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has referred to WIPO Overview 3.0, where appropriate.