WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Referral Experts LLC v. Adaptive Marketing
Case No. D2007-0436
1. The Parties
The Complainant is Referral Experts, LLC of Pleasant Grove, Utah, United States of America, represented by Abbott Walker PC, United States of America.
The Respondent is Adaptive Marketing of Omaha, Nebraska, United States of America, represented by Greenberg Traurig, LLP, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <lookmybest.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2007. On March 22, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 30, 2007, 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 for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform 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 proceedings commenced on April 5, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 25, 2007. The Response was filed with the Center on April 25, 2007.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 8, 2007. 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.
The Complainant filed a “Supplemental Complaint” with the Center dated May 7, 2007, citing a recent decision involving the Complainant and a different respondent using a similar domain name, <lookbest.com>. On May 15, 2007, the Respondent submitted a “Supplemental Response.”
4. Factual Background
The Complainant is a Utah limited liability company engaged in the business of referring individuals interested in plastic surgery to qualified surgeons located in many cities in the United States of America and Canada. The Complainant offers “an online resource for plastic surgery” on a website associated with the domain name <lookingyourbest.com>, which the Complainant registered on May 10, 2002. The Complainant also sells Internet marketing, website design, and website and email hosting services to plastic surgeons.
The Complainant obtained United States Trademark Registration No. 2964902 on July 5, 2005 for the service mark LOOKINGYOURBEST.COM, showing first use in commerce in November 2002.
According to its website at “www.adaptivemarketing.com,” the Respondent is a limited liability company with offices in Connecticut, Nebraska, Texas, and Montreal. The Response further identifies the Respondent as a subsidiary of Vertrue Incorporated, a marketing services company listed on the NASDAQ stock exchange. The Respondent operates marketing websites in several “verticals,” one of which is plastic surgery. In addition to the Domain Name, the Respondent uses numerous descriptive domain names to point to plastic surgery websites that it operates, including <breastimplants4you.com>, <liposuction4you.com>, <breastlift4you.com>, <breastsurgerynetwork.com>, <facialplasticsurgery.net> and <newimage.com>.
Another Vertrue Incorporated subsidiary is My Choice Medical, Inc., a medical practice management and marketing company focused on elective treatments such as practice surgery. My Choice Medical, Inc. operates websites related to plastic surgery, including the one associated with the domain name <looksforless.com>, registered in August 2001.
The Respondent registered the Domain Name on June 21, 2006. The Domain Name currently resolves to the Respondent’s website at “www.newimage.com,” which provides referrals for plastic surgeons, advertising for related products, and general information about plastic surgery.
Counsel for the Complainant sent the Respondent a cease-and-desist letter on November 8, 2006, demanding transfer of the Domain Name. The Respondent replied on December 7, 2006, asking for evidence of actual confusion between the Domain Name and the Complainant’s mark. This proceeding followed.
5. Parties’ Contentions
The Complainant argues that the Domain Name is confusingly similar to its LOOKINGYOURBEST.COM mark and cites a customer email indicating such confusion. The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant asserts that the Respondent registered and used the Domain Name in a bad faith attempt to divert consumers for commercial gain.
The Supplemental Complaint dated May 7, 2007 largely repeats the text of the Complaint, with the addition of citations to a recently decided UDRP proceeding brought by the same Complainant, Referral Experts LLC v. Integrated Medical Solutions Corporation, WIPO Case No. D2007-0231. That proceeding, involving a different respondent, resulted in a finding that the domain name <lookbest.com> was confusingly similar to the Complainant’s mark LOOKINGYOURBEST.COM and was registered and used in bad faith.
The Respondent argues that the Domain Name is descriptive and is not confusingly similar to the Complainant’s mark. The Response emphasizes that the Respondent or its affiliates operate many websites relating to plastic surgery and were doing so before the dispute arose. The Respondent states that it has acquired descriptive domain names such as the Domain Name as “an extension of its ongoing marketing and consulting business” relating to plastic surgery, not to engender confusion with the Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Supplemental Filings
The Panel accepts both the Supplemental Complaint and Supplemental Response for the limited purpose of considering the relevance of the recent UDRP decision in Referral Experts LLC v. Integrated Medical Solutions Corporation, WIPO Case No. D2007-0231, a proceeding involving the same Complainant and a similar domain name. A subsequent email to the Center indicates that someone apparently related with the respondent in that proceeding may have attempted, at some point after the decision was notified, to submit responsive arguments. But these arguments were not before the panel and are therefore not discussed in the decision in Referral Experts LLC v. Integrated Medical Solutions Corporation, WIPO Case No. D2007-0231.
In any event, the current proceeding turns on the allegation of bad faith on the part of a different respondent, whose reasons for selecting the Domain Name at issue must be judged on their own merits.
B. Identical or Confusingly Similar
The Complainant indisputably holds the registered trademark LOOKINGYOURBEST.COM, consisting of an English phrase and the “.com” suffix. The Domain Name <lookmybest.com> is similar but includes a different possessive pronoun (“my” rather than “your”) and lacks the gerund “ing” suffix of the verb “look.”
Since the words comprising both the Domain Name and the Complainant’s mark form common English phrases that appropriately describe or suggest an aim of plastic surgery, the Respondent argues that the Domain Name is not in fact confusingly similar to the Complainant’s mark. The Complainant has supplied an email indicating that at least one consumer was confused as to the source of the Respondent’s website; the Respondent questions whether this is sufficient evidence of a likelihood of confusion.
The first element of the UDRP, however, does not require an evidentiary assessment of the likelihood of confusion among customers, even though that may be relevant for the third UDRP element (or in a trademark infringement action). The test for confusing similarity under the first UDRP element is simply an objective test, a comparison between the Domain Name and the Complainant’s trademark. Here, as in Referral Experts LLC v. Integrated Medical Solutions Corporation, WIPO Case No. D2007-0231, the textual differences between the Domain Name and the Complainant’s mark are slight, and the meaning is similar.
The Panel finds, therefore, that the Complainant has established the first element of the Policy.
C. Rights or Legitimate Interests
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent contends that employing a relevant descriptive phrase for a website advertising the services of plastic surgeons and related products is a legitimate commercial use, implicitly invoking paragraph 4(c)(i) of the Policy. The Respondent unquestionably used the Domain Name in connection with the offering of goods and services before notice of the dispute.
The Complainant argues, however, that the Respondent’s use of the Domain Name should not be considered part of a bona fide offering of goods and services, because the Respondent’s intent was to engender confusion with the Complainant’s mark. This argument is better addressed below, in connection with the third UDRP element.
D. Registered and Used in Bad Faith
The Complaint must establish that “the Domain Name has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). The Complainant relies on paragraph 4(b)(iv) of the Policy, which describes one example of bad-faith registration and use:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complainant notes that the Respondent registered the Domain Name several years after the Complainant began using its mark online. The Complainant infers, without any direct evidence, that the Respondent both registered and used the Domain Name to create a likelihood of confusion among Internet users familiar with the Complainant’s mark and thereby divert them to the Respondent’s plastic surgery website for commercial gain.
The Respondent denies such an intent and points out that it has long operated websites related to plastic surgery, with a variety of relevant descriptive or suggestive domain names. As the Respondent observes, there are several other United States trademarks and domain names incorporating the words “look” and “best” in connection with cosmetic medical procedures, including “Look Your Best . . . Morning, Noon And Night” (a mark associated with cosmetic laser treatments) and <lookthebest.com> (used for a website advertising a Philadelphia plastic surgeon). “Looking one’s best” is not an unusual way to describe the objective of plastic surgery and related goods and services. Thus, it is not implausible that the Respondent chose a variation of this phrase for the same reasons the Complainant did, as descriptive or suggestive of the benefits of plastic surgery.
The argument for bad faith, on the other hand, is weak and inferential. The Respondent is a direct competitor of the Complainant in offering referrals to plastic surgeons, in at least some geographic markets and in certain cosmetic surgery specialties. Thus, there is conceivably an incentive to mislead potential plastic surgery patients as to the source of the Respondent’s referral website. The Complainant’s mark is not highly distinctive, however, as it is comprised of common English words that are descriptive or suggestive in the context of plastic surgery. Moreover, the Complainant does not offer evidence that its mark is famous. Thus, there is not a strong case on this record for concluding that a competitor would find the mark a compelling target for imitation.
Another UDRP panel, in Referral Experts LLC v. Integrated Medical Solutions Corporation, WIPO Case No. D2007-0231, concluded that a similar domain name, <lookbest.com>, reflected bad-faith registration and use by a different respondent. There, however, the panel had no response rebutting the inference of an intent to divert consumers for commercial gain.
Here, the Respondent has come forward with plausible reasons for using common, appropriate English words in the Domain Name. Since the burden of persuasion rests on the Complainant, the Panel finds that the Complaint does not establish the third UDRP element of bad faith.
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Date: May 22, 2007