Zeltiq Aesthetics, Inc. v. coolsculptingbyzeltiq.net Private Registrant
Claim Number: FA1201001426820
Complainant is Zeltiq Aesthetics, Inc. (“Complainant”), represented by Carrie A. Shufflebarger of Thompson Hine LLP, Ohio, USA. Respondent is coolsculptingbyzeltiq.net Private Registrant (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coolsculptingbyzeltiq.net>, registered with New Dream Network, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 27, 2012; the National Arbitration Forum received payment on January 27, 2012.
On February 1, 2012, New Dream Network, LLC confirmed by e-mail to the National Arbitration Forum that the <coolsculptingbyzeltiq.net> domain name is registered with New Dream Network, LLC and that Respondent is the current registrant of the name. New Dream Network, LLC has verified that Respondent is bound by the New Dream Network, LLC 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 February 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 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@coolsculptingbyzeltiq.net. Also on February 2, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <coolsculptingbyzeltiq.net> domain name is confusingly similar to Complainant’s COOL SCULPTING mark.
2. Respondent does not have any rights or legitimate interests in the <coolsculptingbyzeltiq.net> domain name.
3. Respondent registered and used the <coolsculptingbyzeltiq.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Zeltiq Aesthetics, Inc., is the owner of the COOL SCULPTING and ZELTIQ marks. Complainant has registered the COOL SCULPTING mark (Reg. No. 3,921,045 registered February 15, 2011) with the United States Patent and Trademark Office (“USPTO”). Complainant has also registered with the USPTO the ZELTIQ mark (Reg. No. 3,897,576 registered December 28, 2010). Complainant uses its mark in connection with a fat reduction technique where fat cells are frozen so that they may naturally be eliminated.
Respondent, coolsculptingbyzeltiq.net Private Registrant, registered the disputed domain name on July 28, 2011. The <coolsculptingbyzeltiq.net> domain name resolves to a website that displays click-through advertisements that offer weight loss goods and services which compete with Complainant’s offerings whilst purporting to be an informational blog about Complainant’s products and services.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant argues that it has rights in the COOL SCULPTING mark. Complainant has provided the Panel with evidence of its registration through the USPTO for the COOL SCULPTING (Reg. No. 3,921,045 registered February 15, 2011) and ZELTIQ marks (Reg. No. 3,897,576 registered December 28, 2010). Panels have found that the registration of a mark with a federal trademark authority establishes rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). The Panel therefore finds that Complainant has rights in the COOL SCULPTING and ZELTIQ marks under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <coolsculptingbyzeltiq.net> domain name is confusingly similar to the COOL SCULPTING mark. The Panel finds that Respondent’s addition of Complainant’s other mark, ZELTIQ, to the COOL SCULPTING mark in the disputed domain name does not make the disputed domain name distinct from the mark, rather that it increases confusion. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”). The Panel also finds that Respondent’s addition of the generic term “by” does not differentiate the disputed domain name from the mark. See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark). The Panel finally finds that Respondent’s deletion of spaces between words and the addition of the generic top-level domain (“gTLD”) “.net” in the disputed domain is irrelevant to a determination of confusing similarity. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the <coolsculptingbyzeltiq.net> domain name is confusingly similar to Complainant’s COOL SCULPTING mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is met.
Complainant argues that Respondent does not have rights and legitimate interests in the disputed domain name. Policy ¶ 4(a)(ii) requires that Complainant present a prima facie against Respondent before the burden to prove rights and legitimate interests shifts to Respondent. The Panel finds that Complainant has made a prima facie case in support of this finding and thus that the burden shifts now to Respondent to dispute these claims. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel, however, is without the benefit of a Response from Respondent. Therefore, the Panel will make all inferences which are reasonable from the information available. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel will still review the record under the Policy ¶ 4(c) factors, however, for information suggesting that Respondent does have rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent is not commonly known by the disputed domain name. Complainant argues that Respondent does not operate a business under any name consisting of, or incorporating any part of, the <coolsculptingbyzeltiq.net> domain name. The WHOIS record for the disputed domain name lists “coolsculptingbyzeltiq.net Private Registrant” as the domain name registrant. While the WHOIS information may appear to indicate that Respondent is commonly known by the disputed domain name, past panels found in similar situations that a respondent must also provide information consistent with the WHOIS information to prove it is commonly known by a disputed domain name. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name). Respondent did not respond to this case and did not present such information. The Panel therefore finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s use of the disputed domain name does not give it rights or legitimate interests in the <coolsculptingbyzeltiq.net> domain name. The disputed domain name resolves to a website which purports to be an informational blog about Complainant’s products and services, but instead is filled with linked advertisements for other types of weight loss goods and services. The display of competing links on a disputed domain name is not a protected use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel therefore finds that Respondent’s use of the disputed domain name to display links to goods and services that compete with Complainant’s offerings is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) is met.
Complainant asserts that the <coolsculptingbyzeltiq.net> domain name was registered and is being used in order to disrupt Complainant’s business operations done under the COOL SCULPTING mark. Complainant contends that both Respondent and Complainant are involved in the cosmetic procedures and weight loss industries and therefore are competitors. Complainant claims that Respondent’s use of a confusingly similar domain name is intended to divert Internet users to the disputed domain name and then through the links displayed. Panels have found that disputed domain names which are identical or confusingly similar that display competing links are disruptive to the complainant’s business, constituting evidence of bad faith registration and use. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). Therefore, the Panel finds that Respondent’s bad faith registration and use of the <coolsculptingbyzeltiq.net> domain name is evidenced by the disruptive nature of the <coolsculptingbyzeltiq.net> domain name under Policy ¶ 4(b)(iii).
Complainant argues that the <coolsculptingbyzeltiq.net> domain name was also registered and is used to take commercial advantage of Internet users’ mistakes as to the source of the disputed domain name. Complainant contends that the use of the COOL SCULPTING mark in the disputed domain name and on the resolving website increases confusion as to whether Complainant is affiliated with the disputed domain name. Complainant asserts that Respondent creates and uses this confusion in order to motivate Internet users to click through the links displayed so that Respondent is compensated for the display of the links. Therefore, the Panel finds that Respondent’s registration and use of the <coolsculptingbyzeltiq.net> domain name was done in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent intended to take commercial advantage of Internet users’ mistakes as to the source of the disputed domain name. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).
Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the COOL SCULPTING mark prior to registration of the domain names. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark based on the content of the resolving website and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) is met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coolsculptingbyzeltiq.net> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 2, 2012
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