Syneron Medical Ltd. v. Sabria Mosrati
Claim Number: FA1306001504874
Complainant is Syneron Medical Ltd. (“Complainant”), represented by Sylvia Mulholland of Law Office of Sylvia Mulholland, California, USA. Respondent is Sabria Mosrati (“Respondent”), represented by Khansaa Nuria Ruiz Garrido, Libya.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <memyelosinternational.com> and <memyelosinternational.net>, registered with Tierranet Inc. D/B/A Domaindiscover.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 14, 2013; the National Arbitration Forum received payment on June 14, 2013.
On June 14, 2013, Tierranet Inc. D/B/A Domaindiscover confirmed by e-mail to
the National Arbitration Forum that the <memyelosinternational.com> and
<memyelosinternational.net> domain names are registered with Tierranet Inc.
D/B/A Domaindiscover and that Respondent is the current registrant of the
names. Tierranet Inc. D/B/A Domaindiscover has verified that Respondent is
bound by the Tierranet Inc. D/B/A Domaindiscover 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
On June 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2013 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 email@example.com, firstname.lastname@example.org. Also on June 21, 2013, 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 July 8, 2013.
Complainant submitted a timely Additional Submission on July 15, 2013, which was in compliance with Supplemental Rule 7.
On July 16, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol Stoner, 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 names <memyelosinternational.com> and <memyelosinternational.net> be transferred from Respondent to Complainant.
Complainant alleges as follows:
Complainant uses the ME MY ELOS mark to sell devices that assist the process of hair removal. Complainant has obtained a trademark registration with the European Office for Harmonization in the Internal Market (“OHIM”) for the ME MY ELOS mark (Reg. No. 9,472,689 registered April 1, 2011).
Respondent merely appended the term “international” to Complainant’s trademark to arrive at the disputed domain names of <memyelosinternational.com> and <memyelosinternational.net>.
Respondent is not a licensee of Complainant, nor has Respondent received authorization or permission to use the ME MY ELOS mark.
Respondent’s use of the <memyelosinternational.com> domain name is not a bona fide use of the mark, as Respondent’s competing sale, of counterfeit or “grey market” versions of Complainant’s goods, is illegitimate.
Respondent uses the <memyelosinternational.com> domain name to confuse Internet users into believing that Complainant sponsors or endorses Respondent’s business venture.
Respondent sells grey market goods or counterfeits of Complainant’s own goods in direct competition with Complainant’s products through the <memyelosinternational.com> domain name.
Respondent’s <memyelosinternational.net> domain name is being held out for sale, with no other active use.
Respondent alleges as follows:
Respondent submitted the Response that it photographed.
Respondent registered the following domain name registrations:
<memyelosinternational.com>, registered March 31, 2012.
<memyelosinternational.net>, registered March 2, 2013.
Respondent buys Complainant’s goods and then resells them around the world. Respondent can use Complainant’s marks any way it wishes to generate a profit. Respondent constantly promotes Complainant’s goods, and relies on the success of Complainant to sell more units of Complainant’s products.
Respondent registered the domain name <memyelosinternational.net> and held it as inactive to block others from possessing this domain names, as Respondent wants to keep the name for its own use. Respondent does not plan to sell the domain name; rather, the parking service places the message that the domain name is for sale.
Respondent is using the domain name to resell Complainant’s own goods, and is thus not engaged in any bad faith activity. Respondent is only being targeted because it is able to exploit the mark, so as to obtain a more favorable position in search engine results than Complainant.
C. Additional Submissions
Complainant further alleges as follows:
In addition to the Community Trademark registration ME MY ELOS, submitted with the Amended Complaint, Complainant is also the owner of the registered Community Trademark ELOS, Registration No. 004434593, a certified copy of which is attached
hereto as Annex 1; and of the trademark ME MY ELOS, registered in Israel as Registration No. 233261, a true copy of which is attached as Annex 2.
All of Complainant's registered trademarks relied upon in these proceedings are valid and in good standing.
Complainant's Registered Trademarks ME MY ELOS, relied upon in these
proceedings are used and registered for the goods described in the registrations as:
Medical aesthetic devices used for skin treatment and hair removal, using radio
frequency, electrical energy/, intense pulsed light, and other types of light.
Complainant's Registered Trademark ELOS, registered in 2005, is used and
registered for goods described in the registration as:
Medical apparatus and instruments, lasers for medical purposes, lamps for medical purposes; and cosmetic utensils.
Complainant has used its Trademark ELOS since at least as early as 2005 in
association with the aforesaid goods. The coined word "ELOS" also functions as
the Complainant's NASDAQ stock trading symbol.
The disputed domains include the entirety of Complainant's registered Community Trademarks ME MY ELOS and ELOS, and Complainant's Registered Trademark ME MY ELOS, in Israel.
Complainant does not know the source of the goods being sold on Respondent' s website for the disputed domain <memyelosinternational.com>. They may be the goods of the Complainant, new and/or refurbished; they may be grey market goods, or they may be counterfeit goods. As Complainant has no nexus with Respondent, Complainant cannot know the legitimacy of these goods.
Respondent argues that these goods being sold by Respondent are goods
manufactured by Syneron, the Complainant, as distributed to Respondent by
Homedics. Complainant, by way of response to these unsupported statements,
submits the following:
(i) Complainant has never authorized Respondent to sell its goods, nor to use or display Complainant's registered trademarks ME MY ELOS or ELOS;
(ii) Complainant has never provided Respondent with any web content, information about its products, technical information, photographs, brochures, or any other material to Respondent in order to allow Respondent to display, market, promote, or sell, Complainants products;
(iii) An e-mail inquiry made to David Hill, EMEA Marketing Manager for Homedics Group Limited, by Complainant's attorney, has revealed that Homedics has, in fact, no agreement to sell Complainant's goods to Respondent. The e-mail response of David Hill, dated July 10, 2013, is attached hereto as Annex 3.
(iv) Complainant has never had any communication with Respondent, and all attempts by Complainant's attorney to reach Respondent and communicate its objection to her use of the disputed domains have proven to be futile, until this NAF Complaint was filed, at which time she has finally come forward.
(v) A cease and desist letter, dated May 24, 2013 was mailed to Respondent to the Libya address listed above, and as displayed on the Tierranet WHOIS database as the address for Respondent. The cease and desist letter was also sent to the address: 14871Memorial Drive, Houston, Texas, 77079, USA, as presented on the disputed domain website as the US address for Respondent's operations. The Complaint in
these proceedings, as well as the Amended Complaint was all sent to the Libya addresses given for Respondent. NONE of these mail pieces were returned to Complainant's attorney as "undeliverable" and no response was ever received to these communications by Respondent. Complainant submits that, if as Respondent alleges, she has never received mail correspondence from Complainant or its counsel, it is because Respondent does not reside or conduct her business from either the Libya address or the Houston, Texas address and that both addresses as presented on Tierranet (for the Libya address) and on Respondent's website (for the Houston address) are false and misleading and evidence the bad faith of the Respondent in an effort to mislead and confuse the public and consumers of Complainant's products.
(vi) Respondent argues that: "we have been using this domain for years, since the launch of the first model ME MY ELOS." This is another false statement. The information provided on Tierranet's database indicates that the disputed domain is little more than one year old, having been registered by Respondent on March 3l, 2012. This obvious and flagrant misstatement is no more than an attempt to mislead the National Arbitration Forum, and further evidences Respondent's bad faith.
In summary, Respondent has not filed a scintilla of evidence to support any of her
contentions as presented in the Response. There is no proof or record of any
communications with Complainant, agreement, invoice, or other proof of purchase
from Respondent's alleged source of the goods, Homedics. Respondent appears to be
operating as a rogue distributor or reseller of Complainant's MEMYELOS branded
products, obtained from some unknown source, to her own advantage and to the
disadvantage of Complainant, and Complainant's legitimate authorized resellers, and
maintenance providers for its products.
The domain names registered by Respondent, that is, <memyelosinternational.com> and <memyelosinternational.net>, are identical or confusingly similar to a trademark or service mark in which Complainant has rights; Respondent has no rights or legitimate interests in respect of the domain names; and the domain names have been registered, and are 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.
Complainant’s Annex 5 to its Complaint, evidences a certified copy of the Certificate of Registration for OHIM Trademark Registration (Reg. No. 9, 472,689) for its ME MY ELOS mark, dated April 1, 2011. The goods are for “ medical aesthetic devices used for skin treatment and hair removal, using radio frequency, electrical energy, intense pulsed light, and other types of light; all included in class 10.”
This trademark registration serves to establish Complainant’s rights in the ME MY ELOS mark. See Direct Mktg. Co. S.p.A. v. Morelli, D2010-1335 (WIPO Sept. 6, 2010) (finding Complainant’s European Union Office for the Harmonization of the Internal Market (“OHIM”) trademark registration sufficient to establish complainant’s rights in its GIORNO NOTTE mark under Policy ¶ 4(a)(i)); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Annex 5 also contains Complainant’s statement that it has used its trademark since as early as 2010 in association with the medical aesthetic devices. Complainant’s use of the mark in commerce is similarly shown by its Annex 6, which shows an advertisement for Complainant’s hair removal devices, displaying the trademark ME MY ELOS and by its Annex 7, which shows its website displaying the applicable products.
The Panel notes that both the <memyelosinternational.com> and <memyelosinternational.net> domain names are formed by removing the spacing from the mark, ME MY ELOS, by affixing the term “international,” and by appending the respective generic top-level domain (“gTLD”) “.com” or “.net.” While spacing is not permitted in a domain name, a gTLD is a necessary inclusion. Further, the addition of the generic term “international” does nothing to alleviate the confusing similarity between these domain names and Complainant’s registered mark. 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 J. Barbour & Sons Ltd. v. Whois Privacy Services Pty Ltd., D2013-0283 (WIPO April 21, 2013) (in the domain name barbourinternational.com>, the word “international” is generic because it describes goods promoted and distributed in many countries).
Consequently, the Panel concludes that the <memyelosinternational.com> and <memyelosinternational.net> domain names are confusingly similar to the ME MY ELOS mark under Policy ¶ 4(a)(i), despite their “mustachioed disguises.”
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent has not rebutted Complainant’s contention that it has not granted any permission to Respondent to use its domain name, nor has it granted any license or permission to Respondent to retail its goods. Respondent’s name is notably absent from Complainant’s list of distributors, on Annex 5 of its Additional Submission.
The Panel next identifies any evidence to show that Respondent has any rights or legitimate interest in the domain names. Panel notes that the listed WHOIS registrant of the <memyelosinternational.com> and <memyelosinternational.net> domain names is “Sabria Mosrati,” who proffers no evidence that she was known by any of the disputed domain names. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Panel was influenced by Complainant’s contention in its Additional Submission that, “Surely if Respondent were acting in Complainant’s best interests, and in fact working as a legitimate and authorized reseller of Complainant’s goods” they would not be jockeying for SEO positioning, as evidenced by Respondent’s statement in its Response that, “the simple problem…is that our site has managed to position in google
above their site <memyelos.com>….Had Syneron’s website been better, or had they invested the time and effort that we have, we would not be having this dispute, for they would have been at the top of google.”
Complainant credibly argues through its Annex 9 that Respondent’s use of the <memyelosinternational.com> domain name is not a bona fide offering of goods, but is a mere competing sale of counterfeit or grey market versions of Complainant’s goods. The panel in Caterpillar Inc. v. Huth tackled the issue of a respondent’s unauthorized resale of complainant’s goods and concluded that the respondent could never have a bona fide offering in its unilateral decision to sell either counterfeit products or complainant’s own merchandise. See FA 169056 (Nat. Arb. Forum Sept. 2, 2003). The Panel here agrees that Respondent’s decision to sell at the resolving website what may either be Complainant’s goods, or counterfeits thereof, amounts to nothing that resembles a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <memyelosinternational.com> domain name.
Respondent registered the disputed domain name <memyelosinternational.com> on March 31, 2012, two years after Complainant launched its domain name <memyelos.com> and one and a half years after Complainant filed for trademark protection of its trademark ME MY ELOS, in OHIM on October 25, 2010.
Complainant contends that Respondent is promoting the <memyelosinternational.net> domain name as being for sale to the general public. The Panel’s view of Complainant’s supporting Annex 10 indicates that the <memyelosinternational.net> domain name resolves to a website that contains several stock photos, along with a message informing Internet users that the domain name may be available for sale. Respondent claimed in its Response that it registered the <memyelosinternational.net> domain name and held it as inactive to block others from possessing the domain name, as Respondent wanted to keep the name for itself.
Respondent’s response is not credible, but rather is a classic recitation of the definition of cybersquatting, and thus Respondent is not entitled to the positing of either a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, to establish its rights to the disputed domains. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
As Respondent has not been licensed nor authorized to use Complainant’s domain name; has not been commonly known by the disputed domain name; and has not proved a bona fide offering of goods or services, Complainant has proved a prima facie case and Respondent has not consequently shouldered its burden to prove that it does have rights and legitimate interests under Policy ¶4(a)(ii). Therefore, this Panel rules that Respondent lacks rights and legitimate interests in the disputed domain names <memyelosinternational.com> and <memyelosinternational.net> under Policy ¶4(a)(ii).
Complainant has offered credible evidence that Respondent has engaged in bad faith registration of domain names by registering the domain name <memyelosinternational.com> for the purpose of disrupting the business of a competitor
and by registering the domain name of <memyelosinternational.net> for the purpose of cybersquatting.
Respondent was put on both actual, as well as constructive, notice of Complainant’s rights in the ME MY ELOS and ELOS Marks through Complainant’s extensive use of the marks (See Complainant’s Additional Submission Annex 4 “Global Footprint and Distribution”) and by its trademark registrations (See Complainant’s Annex 5) all of which long predate the creation date of the disputed domains.
Respondent registered the disputed domain name <memyelosinternational.com> on March 31, 2012, two years after Complainant launched its domain <memyelos.com> and one and a half years after Complainant filed for trademark protection of its trademark ME MY ELOS, in OHIM on October 25, 2010. Respondent registered <memyelosinternational.net> on March 2, 2013.
The international fame of a trademark, has been held to be singularly sufficient as to constitute bad faith registration. In DHL Operations BEVY and DHL International GmbH v. Eric White, WIPO Case No. D2010-0016, the Panel found that “it has been established in certain circumstances that when a domain name incorporates a famous mark comprised of a coined or fanciful term, no other action, aside from registering the domain name, is required for demonstrating bad faith.” See also, Alberto-Culver International, Inc. v. Goodsteed Limited/Domains by Proxy, Inc., WIPO Case No. D2009-1643 (Panel agreed with Complainant’s position that “when a trademark is famous, there is a prima facie inference of bad faith”), citing, Microsoft Corporation v. Charlie Brown, WIPO Case No. D2001-0362.
The Panel notes, after an inspection of Complainant’s Annex 11, that Respondent’s <memyelosinternational.net> domain name is being offered for sale, and shows no
other active use, other than to host stock images, and to include a banner stating that the domain name is for sale. The Panel concludes that Respondent demonstrates bad faith in regards to registering and using the <memyelosinternational.net> domain name based upon Policy ¶ 4(b)(i), as its registration and use of the domain name is for no purpose other than to promote the fact that Internet users can buy the domain name for themselves. See CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”).
Policy ¶4(b)(iv)explicitly states that bad faith can be found where a Respondent through its use of a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website by creating a likelihood of confusion with the Complainant’s mark, as to source, sponsorship, affiliation or endorsement of the website or of a product or service on the website.
Panel opines, after viewing Respondent’s website (<memyelosinternational.com>)
(from Complainant’s Exhibit 9) that Respondent’s offering of goods, identical to those offered by the Complainant, with identical brand names, through the portal of a confusingly similar domain name, would confuse Internet users into believing that Complainant sponsors or endorses Respondent’s business venture.
Respondent’s website makes use of the ME MY ELOS mark in promoting what appear
to be either grey market goods or counterfeits, thus creating the mistaken impression amongst Internet users that the content and goods promoted on the resolving website are affiliated with the Complainant and its ME MY ELOS mark. Such conduct of Respondent constitutes bad faith registration and use, under Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products); Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products).
Panel is further persuaded of Respondent’s bad faith use of the domain names <memyelosinternational.com> and of <memyelosinternational.net> in that Respondent failed to respond to Complainant’s letter of May 24, 2013 (Complainant’s Annex 11) asserting its rights in the disputed domains of <memyelosinternational.com> and <memyelosinternational.net> and requesting removal and disabling of same by May 30, 2013.
Based upon due consideration of the evidence, Panel concludes that Respondent both registered and used the domain names <memyelosinternational.com> and <memyelosinternational.net> in bad faith, under Policy ¶4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <memyelosinternational.com> and <memyelosinternational.net> domain names be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Esq., Panelist
Dated: July 30, 2013
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