Michael Londo a/k/a Body Balance System LLC v. Doug Zucco / Fast Fit Body Sculpting
Claim Number: FA2008001908282
Complainant is Michael Londo a/k/a Body Balance System LLC (Complainant”), represented by Micheal Londo of Body Balance System LLC, Nevada, USA. Respondent is Doug Zucco / Fast Fit Body Sculpting (“Respondent”), represented by The Thornton Firm, LLC, Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <slimsculpt.com>, registered with GoDaddy.com, 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.
Jeffrey M. Samuels, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 13, 2020; the Forum received payment on August 13, 2020.
On August 14, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <slimsculpt.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 August 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 2020 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@slimsculpt.com. Also on August 18, 2020, 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.
A timely Response was received and determined to be complete on September 8, 2020.
On September 14, 2020, the Forum received from Complainant’s counsel an additional submission captioned “Complaint in Accordance with the Uniform Domain Name Dispute Resolution Policy.”
On September 21, 2020, the Panel issued Procedural Order No. 1 requesting the parties to submit further argument on whether Complainant’s marks are in use. Complainant submitted further argument on this issue on September 23 and September 30, 2020. Respondent submitted further argument on this issue on September 28, 2020.
On September 28, 2020, the Panel issued Procedural Order No. 2 extending the time for issuance of its decision from September 28 to October 5, 2020.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Michael Londo a/k/a Body Balance Systems LLC owns U.S. Trademark Registration No. 5,390,243 for the trademark “Slim Sculpt,” as used since August 2016, on electronic light therapy apparatus for the skin. Complainant also owns U.S. Trademark Registration No. 5,597,445 for the service mark “SlimSculpt Studios (and Design),” as used in connection with providing cosmetic body care services in the nature of non-surgical body contouring. Both registrations issued in 2018.
Complainant asserts that it has never authorized Respondent to use its trademarked name and that Respondent is using the disputed domain name <slimsculpt.com> in bad faith. Complainant maintains that the disputed domain name redirects web traffic to Respondent, who offers the same or similar services as Complainant.
B. Respondent
Respondent is the owner and operator of Fast Fit Body Sculpting LLC, which provides cosmetic body care services in the nature of non-surgical body contouring. It notes that it purchased the disputed domain name in the early half of 2018, the domain name having been for sale at hugedomains.com from at least 2013.
Respondent contends that the disputed domain name, <slimsculpt.com>, is neither identical nor confusingly similar to Complainant’s marks. Respondent asserts that Complainant no longer offers “Slim Sculpt” light therapy apparatuses on its website. According to Respondent, Complainant currently offers a completely different line of products, including newer LED light therapy beds. Thus, Respondent maintains, “the strength of Complainant’s marks is significantly diminished. Put simply, the consuming public is no longer able to associate Complainant’s goods with the Slim Sculpt mark.”
With respect to Complainant’s “Slim Sculpt” mark, Respondent argues that Complainant has failed to establish any likelihood of confusion between Respondent’s domain and Complainant’s goods and services, given that the goods and services offered by the parties “are completely different.”
With respect to Complainant’s “SlimSculpt Studios (and Design)” mark, Respondent submits that use of the term “Studios” in Complainant’s mark “creates a completely different commercial impression in the minds of the public.”
Furthermore, “and most concerning,” Respondent indicates that, at the time of filing, Slim Sculpt is unlicensed in the State of Nevada, with the company status listed as dissolved, and that Slim Sculpt Studios is not open for business. “Put simply,” Respondent asserts, “the SlimSculpt Studios mark is clearly not being used in commerce and is thus not entitled to protection under trademark law or rules.”
In sum, Respondent asserts, Complainant’s “SlimSculpt” mark is directed to a completely different area of commerce, Complainant’s “Slim Sculpt Studios (and Design)” mark is not confusingly similar to the <slimsculpt.com> domain name, and, “Complainant’s nonuse of both the Slim Sculpt and Slimsculpt Studios marks in commerce makes Complainant’s assertion of likelihood of confusion moot.”
Respondent contends that it has rights or legitimate interests in the disputed domain name. He maintains that it made a good faith purchase of the domain name in the early half of 2018 and used Complainant’s light therapy beds at one point and was aware of Complainant’s Slim Sculpt apparatuses, but was also under the good faith assumption that Complainant had discontinued use of the Slim Sculpt mark and had begun marketing light therapy beds under the BodyBalance, Ovation, and TruBeam marks.
Finally, Respondent indicates that it registered and is using the disputed domain name in good faith. It notes that it uses the disputed domain name to redirect traffic to the fastfitbodysculpting.com domain, that it does not offer any light therapy beds that could be confused with those formerly sold by Complainant, and that the services it provides are easily distinguishable from those offered by the currently closed and unlicensed SlimSculpt Studios.
C. Additional Submissions
As noted above, on September 14, 2020, the Forum received from Complainant’s counsel an additional submission captioned “Complaint in Accordance with the Uniform Domain Name Dispute Resolution Policy.” In this submission, Complainant maintains that it began making and selling “Slim Sculpt” light therapy beds and red-light therapy pad systems in October 2016. Complainant further indicates that, in April 2017, Respondent purchased a “Slim Sculpt” red-light therapy bed from Complainant and, during the following nine months, Respondent bought additional “Slim Sculpt” re-light therapy beds from Complainant. Thereafter, Complainant asserts, Respondent purchased the disputed domain name.
According to Complainant, during the period October 11, 2016 to June 29, 2020, Complainant made and sold 38 “Slim Sculpt” red-light therapy beds and 176 “Slim Sculpt” red-light therapy pad systems to various businesses in the U.S. and Canada. Complainant submits that both current and prospective “Slim Sculpt” bed clients complained to Complainant about the disputed domain being redirected to Respondent, who competed with Complainant’s clients.
Complainant further relates that, on July 27, 2018, it commenced retail weight-loss and body contouring studio operations under the “SlimSculpt Studios” mark but that, due to a variety of unfavorable business factors, “SlimSculpt Studios” discontinued business operations on October 31, 2019.
In view of the above, Complainant “contends that Respondent’s use of `<slimsculpt.com>’ is an identical, unauthorized and unethical use of Complainant’s trademarked `Slim Sculpt’™ name.”
D. Submissions in Response to Procedural Order No. 1.
As noted above, the Panel, on September 21, 2020, issued Procedural Order No. 1 requesting further submissions by the parties on whether Complainant’s marks are in use. In its submission, Complainant contended as follows:
a. Complainant declares that our trademarked Slim Sculpt™ mark and brand was in use as of August 13, 2020, the date of the instant Complaint, is still in use as of the date of this submission (9/23/2020) and will be in use at least until May 2023 for Slim Sculpt™ products sold through June 2020. As previously attested, Complainant has sold thirty-eight (38) Slim Sculpt™ branded red-light therapy beds and one-hundred and seventy-six (176) Slim Sculpt™ branded red-light therapy pad systems to businesses and customers across the U.S. and Canada. Each of the two-hundred and fourteen (214) Slim Sculpt™ branded electronic light apparatuses were sold with a Three-Year Manufacturer’s “Slim Sculpt™ Warranty”. The terms and conditions of the Slim Sculpt™ three-year warranty period dictate Complainant’s warranty repairs and servicing are to be primarily performed with Slim Sculpt™ branded parts where the repaired and/or replaced parts are visible to the public. Complainant’s company, Body Balance System, LLC, is currently manufacturing and performing warranty work with various Slim Sculpt™ branded parts to comply with the terms and conditions of said warranties.
b. Complainant contends that Respondent’s use of <slimsculpt.com> creates real and consequential confusion with Complainant’s existing Slim Sculpt™ customer base when they seek online information and assistance for sales, service and repairs of their previously purchased Slim Sculpt™ light products. The Slim Sculpt™ Manufacturer’s Warranty referenced above is a binding agreement well known by Complainant’s customer base of loyal Slim Sculpt™ customers who regularly complain about Respondent’s use of slim sculpt.com to redirect web traffic to Respondent’s company, which has no relation to Complainant’s Slim Sculpt™ products, services and warranties.
c. Complainant currently has additional Slim Sculpt™ branded products planned for market release whereby Complainant contends the confusion created by Respondent’s use of <slimsculpt.com> will be financially harmful to Complainant, the Registered Trademark owner of Slim Sculpt™.
d. For the reasons stated above, Complainant declares that the Slim Sculpt™ brand and marks are currently in use and Respondent’s use of <slimsculpt.com> causes confusion and deleterious business effects to Complainant. Complainant respectfully requests the Panel to award Complainant full use of the domain <slimsculpt.com>.
Respondent, in its Submission in response to Procedural Order No. 1, notes that Complainant “failed to offer any proof that any Slim Sculpt products are currently being offered today.” Respondent refers to Annex 4 of Complainant’s Additional Submission which refers to a Body Balance System website that was active from October 2016 to June 2020, “during which time the company sold Slim Sculpt™ red-light therapy line of products.”
With respect to Complainant’s reliance on its warranty to support its allegation of use of the “Slim Sculpt” mark, Respondent responds that Complainant offers no proof that any such branded product is currently being used to replace defective or damaged goods sold in the past.
Respondent also contends that Complainant asserted the SLIMSCULPT Studios (and design) mark in bad faith, “knowing that this business has been closed for nearly a year and is not entitled to any protections under trademark law.”
Respondent elaborates on the argument advanced in its Response with respect to the issue of rights or legitimate interests. It states as follows:
In the early half of 2018, Respondent made a good faith purchase of the <slimsculpt.com> domain. Respondent had purchased at least fourteen of Complainant’s light therapy beds, the first purchase having been made in early 2017. At one point in the business relationship between Complainant and Respondent, Respondent was offered a forty-nine percent partnership stake in Body Balance Solutions where Respondent would help promote Complainant’s beds in Respondent’s body sculpting locations. Respondent originally used the <slimsculpt.com> domain under the mutual assumption that use of such a domain name would be beneficial to both Complainant in word of mouth advertising and for Respondent’s services. And though the business relationship ultimately soured, Respondent continued to use the <slimsculpt.com> domain under the good faith belief that Complainant had discontinued use of the Slim Sculpt mark and had begun marketing light therapy beds under the BodyBalance, Ovation, and TruBeam brands (See Annex 4).
Respondent also elaborates on the issue of bad faith registration and use:
Respondent, at one point, was Complainant’s largest customer. Respondent purchased at least fourteen of Complainant’s units for his business. Respondent was offered a partnership interest in Complainant’s company as a result. It cannot be emphasized enough that Respondent’s sole motivation to purchase the <slimsculpt.com> domain was because he had purchased light therapy beds from Respondent, and wished to help market the Slim Sculpt brand because Complainant refused to purchase and use the domain. Respondent has been using the <slimsculpt.com> domain to redirect traffic to the www.fastfitbodysculpting.com domain in good faith because the Slim Sculpt mark is no longer being used in commerce. Respondent has never offered to sell the <slimsculpt.com> domain to Complainant. When Respondent purchased the domain, business relations between Respondent and Complainant were good. Furthermore, Respondent did not purchase the <slimsculpt.com> domain to disrupt Complainant’s business. On the contrary, Respondent was using Complainant’s machines at the time of purchase of the domain with Respondent being offered a partnership in Complainant’s business. Not once in the course of this business relationship did Complainant raise any concern about this use. It was not until the business relationship soured that Complainant initiated this dispute.
In an email forwarded to the Forum on September 30, Complainant asserts that the mark is on its website and has always been on its website. The email includes a link to the website. The website shows use of the mark SLIM SCULPT and Design RELEASE YOUR THIN WITHIN in connection with a body contouring system.
The Panel finds that: (1) the disputed domain name is confusingly similar to a mark in which Complainant has rights; and (2) the disputed domain name was not registered and is not being used in bad faith.
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.
A threshold inquiry with respect to this element of the Policy requires consideration of whether Complainant has rights in the marks in issue. The evidence indicates that Complainant owns valid and subsisting U.S. trademark registrations for the marks “Slim Sculpt” and “SLIMSCULPT Studios (and Design).” Panel decisions under the UDRP are to the effect that registration of a trademark with a national authority serves as prima facie evidence of one’s rights in the mark. See, e.g., DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
However, this is a rare case where Respondent has raised the issue of whether Complainant has rights in the marks in issue, in view of the assertion that Complainant no longer is using either the “SlimSculpt” or “SLIMSCULPT Studios (and Design)” mark. It is a fundamental principle of U.S. trademark law that rights are dependent upon use of a mark and not upon registration. See, e.g., Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190 (9th Cir. 2012).
The Panel has carefully reviewed the parties’ submissions on the issue of use, including those submitted in response to Procedural Order No. 1. It appears from such submissions, including Annex 4 to Complainant’s Additional Submission of September 14, 2020, that Complainant sold 38 “Slim Sculpt” red-light therapy beds and 176 “Slim Sculpt” red-light therapy pad systems from October 2016 to June 2020. This seems to suggest that Complainant is no longer selling these products under the “Slim Sculpt” mark. The Panel notes that a mark is deemed to be in use under U.S. trademark law when it is used in a way sufficiently public to identify or distinguish the marked goods to an appropriate segment of the public as those of the mark owner. This test may be met even in the absence of sales of the trademarked product. See New England Duplicating Co. v. Mendes, 190 F.2d 415, 418 (1st Cir. 1951).
While Complainant argues that its “Slim Sculpt” mark remains in use due to its three-year warranty, requiring that repairs and services are to be primarily performed with “Slim Sculpt” branded parts where the repaired and/or replaced parts are visible to the public, the mere repair of a trademarked good has been found not to constitute use of a mark in commerce,” as that term is defined in the federal Trademark (Lanham) Act[i], unless the repair constituted a complete rebuild of the product. See Karl Storz Endoscopy-America v. Surgical Technologies Inc., 285 F.3d 848 (9th Cir. 2002).
Given the limitations inherent in the UDRP process, the Panel is not prepared to rule one way or the other as to whether Complainant has rights in the “Slim Sculpt” mark. It does appear, however, that Complainant is no longer using the “SLIMSCULPT STUDIOS (and Design)” mark. Complainant concedes that “SlimSculpt Studios” discontinued business on October 31, 2019, and Complainant has offered no evidence or argument in support of any current use of such mark.
However, the Panel notes that Complainant’s website refers to and displays the mark “SLIMSCULPT (and Design) RELEASE YOUR THIN WITHIN” in connection with a body contouring system. This is the same service recited in Complainant’s registration for the “SLIMSCULPT STUDIOS (and Design)” mark.
In the view of the Panel, such use is sufficient to give rise to trademark rights. Further, the Panel finds that the disputed domain name, in incorporating the most distinctive term in the “SLIMSCULPT (and Design) RELEASE YOUR THIN WITHIN mark,” is confusingly similar to such mark.
In sum, the Panel concludes that Complainant has met its burden of proof on this element of the Policy.
In view of the Panel’s determination with respect to the issue of registration and use in bad faith, the Panel exercises its discretion in declining to address this element of the Policy.
The Panel concludes that Complainant has not met its burden of establishing that the disputed domain name was registered and is being used in bad faith.
The uncontradicted evidence is to the effect that the parties, at one point, were in negotiations to establish a business partnership under which Respondent was offered a 49% interest in Complainant and would promote Complainant’s beds in Respondent’s body sculpting locations. Respondent registered the disputed domain name under the assumption that such registration would help market the “Slim Sculpt” brand and only after Complainant refused to purchase the domain name. Complainant, apparently, voiced no concern over Respondent’s registration of the disputed domain name until the business relationship soured.
While the business relationship soured, Respondent continued to use the disputed domain name under the good faith belief that Complainant had discontinued use of the “Slim Sculpt” mark and had begun marketing light therapy beds under the BodyBalance, Ovation, and TruBeam marks. In view of the evidence discussed with respect to the issue of whether Complainant has rights in the asserted marks, as well as the Panel’s review of Complainant’s website, which includes prominent and numerous references to the BodyBalance, Ovation, and TruBeam marks, such good faith belief on the part of the Respondent appears entirely reasonable.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <slimsculpt.com> domain REMAIN WITH Respondent.
Jeffrey M. Samuels, Panelist
Dated: October 5, 2020
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