WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Liposonix, Inc. v. Robert Fam, Cosmedix Pty Ltd.

Case No. DAU2015-0019

1. The Parties

The Complainant is Liposonix, Inc. of Hayward, California, United States of America (“United States” or “US”), represented by Wood, Herron & Evans, LLP, United States.

The Respondent is Robert Fam, Cosmedix Pty Ltd. of Erskine Park, New South Wales, Australia.

2. The Domain Name and Registrar

The disputed domain name <liposonix.com.au> is registered with Web Address Registration Pty Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2015. On May 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 25, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on June 1, 2015.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 proceeding commenced on June 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2015.

The Center appointed Nicholas Weston as the sole panelist in this matter on July 1, 2015. 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 Background

The Complainant operates a business offering non-invasive treatments for excess fat deposits in numerous countries. The Complainant holds registrations for the trademark LIPOSONIX in a number of countries including the US and Australia, which it uses to designate medical devices used for that purpose. In summary, the Complainant’s earliest US trademark covers medical devices, namely medical instruments designed for the non-invasive removal of human body fat utilizing an external energy source, in International Class 10, with a date of first use in commerce of July 10, 2003.

The Complainant is also the owner of, inter alia, the domain name <liposonix.com>, registered also as a trademark in 2012, which resolves to a website detailing the LIPOSONIX fat treatment offerings.

The disputed domain name <liposonix.com.au> was registered on October 31, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant cites its trademark registrations of the trademark LIPOSONIX in various countries as prima facie evidence of ownership.

The Complainant submits that the mark LIPOSONIX is distinctive and that its rights in that mark predate the registration of the disputed domain name <liposonix.com.au>. It submits that the disputed domain name is confusingly similar to its trademark, because the disputed domain name incorporates in its entirety the LIPOSONIX and LIPOSONIX.COM trademarks and that the marks have been widely promoted in the international media.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent has no trademark rights in, or license to use, the LIPOSONIX mark.

Finally, the Complainant alleges that the registration and use of the disputed domain name was, and currently is, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix). On the issue of registration, the Complainant contends that the Respondent could not have registered the disputed domain name without having the LIPOSONIX trademark in mind given that the LIPOSONIX trademark was registered in Australia in January 2005.

On the issue of use, the Complainant claims that the Respondent merely operates a generic advertising website for the Registrar. The Complainant also alleges that the Respondent tried to sell the disputed domain name for AUD 10,000.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i) that the disputed domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and

(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 subsequently used in bad faith.

Given the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), the Panel finds that cases decided under the UDRP as well as the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) can be of assistance in applying the Policy to this case.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the LIPOSONIX trademark acquired through use and registration which predate the date of registration of the disputed domain name by eight years.

The Panel finds that the disputed domain name, which contains the LIPOSONIX and LIPOSONIX.COM trademarks in their entirety, is confusingly similar to the LIPOSONIX trademark.

In considering the elements of paragraph 4(a)(i) of the Policy, the contents of a website are not relevant. In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the panel held that “The use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. Further, in The Crown in Right of the State of Tasmania trading as “Tourism Tasmania” v. Gordon James Craven, WIPO Case No. DAU2003-0001, the panel held that: “the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the name or trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases.”

Further, unlike the UDRP, the Policy extends protection expressly to “names” as well as trademark rights. For the purposes of the Policy, a “name” is defined by note 2 as referring to:

(a) the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority; or

(b) the complainant’s personal name.

The Complainant is a body corporate not registered in Australia so these do not apply. Even so, the Panel finds that on a side by side comparison, or relying on imperfect recollection, a person seeing the disputed domain name would be caused to wonder if there was an association with the Complainant’s trademark rights. The disputed domain name <liposonix.com.au> is therefore confusingly similar to the LIPOSONIX trademark.

Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organisation) has been commonly known by the disputed domain name even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the LIPOSONIX trademark. The Complainant has prior rights in the LIPOSONIX trademark which precede the Respondent’s registration of the disputed domain name by eight years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption, see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; and WIPO Overview 2.0, paragraph 2.1.

The Respondent has failed to submit a Response and so has not shown that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name resolves to a parking page provided by the Registrar. In all the circumstances of this case, such use does not amount to a bona fide offering of goods or services under the Policy.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name, nor does any of the evidence demonstrate that the Respondent is making legitimate noncommercial or fair use of the disputed domain name.

The Panel therefore finds that the Complaint fulfils the second condition in paragraph 4(a)(ii) of the Policy.

C. Registered or Subsequently Used in Bad Faith

The third element of the Policy that the Complainant must also demonstrate is that the disputed domain name has been registered or subsequently used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.

“b. Evidence of Registration or Use in Bad Faith.

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.

(ii) you have registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of another person; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.”

The evidence that the Respondent registered and has used the disputed domain name in bad faith is overwhelming. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The name registered by the Respondent, the unlikelihood that registering a domain name containing the Complainant’s invented word trademark is attributable to pure coincidence and the apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith, see L’Oréal v. Domain Park Limited, WIPO Case No. D2008-0072; Bouygues v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, Webreg, WIPO Case No. D2006-0964; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448; mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.

The Panel notes that the disputed domain name resolves to a registrar parking page, and has considered whether the relatively passive use of the disputed domain name can absolve the Respondent from a finding of bad faith. Having regard to cases such as Recordati S.P.A. v. Domain Name Clearing Company, WIPO Case No. D2000-0194 and Comerica Inc. v. Horoshiy, Inc.,WIPO Case No. D2004-0615, amongst others, this Panel finds, in the circumstances of this case, it does not. As Recordati S.P.A. v. Domain Name Clearing Company, supra acknowledges, “passive holding of the domain name, without use in commerce, may support a holding of use in bad faith” (citing Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Panel also notes that the Complaint is in part founded on an allegation that the Respondent has offered for sale the disputed domain name to the Complainant for AUD 10,000. Before the Complaint was filed, representatives of the Complainant contacted the Respondent to request that the disputed domain name be transferred to it. The Respondent refused but stated in writing he would do so in return for a payment of AUD 10,000.

Where the holder of the domain name had rights or legitimate interests in the domain name under the Policy, an offer to transfer it in return for payment greater, even much greater, than the out-of-pocket expenses in registering would not usually lead to a finding of bad faith under the Policy. However, in this case, the Panel has found that the Respondent does not have a right or legitimate interest in the disputed domain name. The offer for sale for a sum far in excess of the costs of registering the disputed domain name also warrants a finding by the Panel of bad faith under the Policy (see AW Faber-Castell (Aust) Pty Ltd. v. Pen City Pty Ltd. / Atf Diblasi Jones Unit Trust, WIPO Case No. DAU2013-0018).

The Panel finds that the Respondent must have been aware of the relevant trademark. The Panel finds that the Respondent has taken the Complainant’s trademark and incorporated it into the disputed domain name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademarks by diverting Internet users. The Panel also finds that the circumstances indicate the Respondent has registered the disputed domain name primarily for the purpose of selling it for valuable consideration in excess of his documented out-of-pocket costs directly related to the disputed domain name contrary to paragraph 4(b)(i) of the Policy.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all 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 <liposonix.com.au> be transferred to the Complainant.

Nicholas Weston
Sole Panelist
Date: July 15, 2015