Zeltiq Aesthetics, Inc. v. Green W0rld
Claim Number: FA1201001425392
Complainant is Zeltiq Aesthetics, Inc. (“Complainant”), represented by Carrie Shufflebarger of Thompson Hine LLP, Ohio, USA. Respondent is Green W0rld (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coolsculptings.com>, registered with Go Daddy.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 19, 2012; the National Arbitration Forum received payment on January 19, 2012.
On January 19, 2012, Go Daddy confirmed by e-mail to the National Arbitration Forum that the <coolsculptings.com> domain name is registered with Go Daddy and that Respondent is the current registrant of the name. Go Daddy has verified that Respondent is bound by the Go Daddy registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@coolsculptings.com. Also on January 24, 2012, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on February 13, 2012.
An Additional Submission from Complainant was received on February 16, 2012 and was held to be compliant with Supplemental Rule 7. An Additional Submission from Respondent was received on February 21, 2012 and was held to be compliant with Supplemental Rule 7.
On February 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that it is a medical technology company that has exclusive rights in the technology underlying a non-invasive, patented, clinically proven procedure to remove fat cells by freezing them. This results in reshaping of body contours. Complainant’s device was approved in September 2010 by the US Food and Drug Administration (FDA).
Complainant states that it markets its device and procedure under the registered trademark COOLSCULPTING which it distributes exclusively to authorized medical professionals. The mark is registered in many countries around the world, in particular in the U.S.A. and in Australia. The mark has been extensively advertised and is well known. Complainant also owns registrations for hundreds of domain names containing its mark.
According to Complainant, the disputed domain name is confusingly similar to its mark because the only difference is the addition of the letter “s”.
Complainant states that the disputed domain name was registered in September 2010, days after the FDA’s approval of Complainant’s procedure, and seven months after Complainant had filed its first US trademark application.
Further, says Complainant, it has not authorized or licensed Respondent to use any of its marks, nor does Respondent own one of Complainant’s devices, nor is Respondent a trained provider of Complainant’s services.
Complainant alleges that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. Rather, Respondent uses the disputed domain name for a web site that appears to provide information on Complainant’s procedure but instead contains links to advertisers of weight loss services and other goods and services that are not related to Complainant. Respondent derives revenue from those advertising links. Complainant cites UDRP precedents to support its position.
Further, according to Complainant, Respondent’s use of the disputed domain name constitutes registration and use in bad faith under the Policy, because it diverts Internet users and creates confusion. Complainant cites numerous UDRP precedents to support its position.
B. Respondent
Respondent alleges that Complainant’s trademark was registered in October 2010, one month after the registration of the disputed domain name.
According to Respondent, its website is an informational website which promotes the technology used by Complainant to reduce weight. All of the remarks/contents on the web site at the disputed domain name are positive remarks which help promote Complainant.
Respondent states that its website includes advertisements as would any other websites which allow users to click through based on their interests. Google advertisements provide platforms for major companies which may include clinics that offer the weight reduction technique provided by Complainant. This is in Complainant’s interest. It does not disrupt Complainant’s business and Respondent does not compete with Complainant since both parties are promoting the same technology.
C. Additional Submissions
In its Additional Submission, Complainant alleges that it filed its application to register its mark in February 2010, and that its rights date back to at least this date, which is seven months prior to the registration of the disputed domain name.
Further, says Complainant, it first registered its <coolsculpting.com> domain name in March 2008, years before the registration of the disputed domain name.
According to Complainant, it does not matter whether Respondent’s website at the disputed domain name contains “positive remarks” which help to promote Complainant’s products and services: Respondent still does not have the right to use Complainant’s mark without authorization to derive a profit, which it is admittedly doing.
Indeed, says Complainant, Respondent admits to using the disputed domain name to provide “Google links”. Numerous UDRP Panels have held that such conduct constitutes bad faith registration and use under the Policy.
In its Additional Submission, Respondent states that Complainant’s mark was only filed in Australia in October 2010.
Further, says Respondent, it is not using Complainant’s mark because the disputed domain name adds an “s” at the end.
Respondent alleges that it was not aware that Complainant had filed for a trademark until the present Complaint was filed. The Complaint was filed 16 months after the registration of the disputed domain name. The revenue from the click-through advertising is used to cover the cost of the web site. This does not constitute bad faith use of the disputed domain name, particularly since Complainant did not react earlier.
Complainant filed for registration of the mark COOLSCULPTING in February 2010. That mark is used to market weight reduction products and services.
Respondent registered the disputed domain name in September 2010.
Respondent is not licensed or authorized by the Complainant to use its mark.
The web site at the disputed domain name contains links to Complainant’s website and click-through advertising links to products and services that compete with those of Complainant. Respondent derives revenue from those links.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
It is not contested that Complainant has rights in the mark COOLSCULPTING. The disputed domain name is obviously confusingly similar, in the sense of the Policy, to Complainant’s mark. Indeed the addition of a single letter fails to differentiate the disputed domain name from Complainant’s mark. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)). Further, it is settled case law under the Policy that the addition of a generic top-level domain (“gTLD”) is irrelevant when determining whether a disputed domain name is confusingly similar to a mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Respondent alleges that the disputed domain name was registered before Complainant had rights in its mark. That allegation does not concern this element of the Policy: it will be dealt with below under the third element of the Policy.
Thus the Panel holds that Complainant has satisfied its burden of proof for this element of the Policy.
Complainant alleges that the disputed domain name is not being used for either a bona fide offering of goods or services or a legitimate noncommercial or fair use, because it resolves to a website which at first blush appears to be an informational website regarding Complainant’s procedure but which is actually filled with links to other weight-loss services and products which compete with Complainant’s weight-loss offerings. The panels in ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), and Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007), found that the display of links which compete with the complainant is not a protected use of a website.
It is not disputed that Respondent is not authorized to use Complainant’s mark.
As Complainant rightly states, Respondent does not have the right to use Complainant’s mark without authorization to obtain revenue, in particular because it offers referrals to products and services that compete with those of Complainant. As explained below, this constitutes bad faith registration and use in the sense of the Policy.
The Panel holds that Respondent does not have rights or legitimate interests in the disputed domain name.
As noted above, Respondent alleges that the disputed domain name was registered before Complainant had rights in its mark. Such a situation could result in finding that the registration could not have been made in bad faith. Indeed, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, states for this issue, at 3.1:
Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date, when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.
The WIPO Overview is available at: http://www.wipo.int/amc/en/domains/search/overview2.0/index.html
The key matter in the present case is to determine when Complainant’s trademark right was first established. It is settled precedent under the Policy that trademark rights date back to the date of the filing of a trademark application. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Nor does it matter that Complainant’s Australian trademark was filed later: Complainant’s rights date back to its first trademark application, the one filed in the US, irrespective of the fact that Respondent is based in Australia. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent has admitted that it derives revenue from click-through advertising for products and services that compete with those of Complainant. It asserts that this does not constitute bad faith registration and use because those revenues are merely used to cover the cost of the web site at the disputed domain name. But this defense is not available under the Policy. It is settled precedent under the Policy that what Respondent is doing does constitute bad faith registration and use.
The confusingly similar nature of the disputed domain name diverts Internet users from Complainant’s website and attracts them to Respondent’s website which displays numerous links to other weight loss goods and services. Thus the Panel has no choice but to hold that Respondent registered and is using the disputed domain name in order to create confusion and to take commercial advantage of Internet users’ mistakes as to the disputed domain name’s source, which indicates bad faith pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Respondent alleges that Complainant’s inaction for 16 month should prevent a finding of bad faith use and registration of the disputed domain name. But the Policy does not specify any time limits or time bars for actions by a complainant. Complainant may file a Complaint many years after the registration of the disputed domain name. Thus the delay invoked by Respondent does not constitute a defense under the Policy.
The Panel holds that Complainant has satisfied its burden of proof for this element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coolsculptings.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: February 26, 2012
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