WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chromogenex Technologies Ltd v. Ian Cobley
Case No. D2014-0301
1. The Parties
The Complainant is Chromogenex Technologies Ltd of South Wales, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Kerr, Russell and Weber, PLC, United States of America.
The Respondent is Ian Cobley of Edenbridge, UK, self-represented.
2. The Domain Name and Registrar
The disputed domain name <i-lipo.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2014. On February 27, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2014, 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.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 March 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2014. The Response was filed with the Center on March 24, 2014.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on April 1, 2014. 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.
Shortly after its appointment, it came to the Panel’s attention that the Respondent may not have received the annexes to the Complaint. Accordingly, by way of Procedural Order No. 1 dated April 7, 2014, the Panel ordered the Center to transmit the said annexes to the Respondent and gave the Respondent until April 12, 2014 to make any comments it might wish that were strictly limited to the contents of the said annexes. The Panel also ordered the due date for this Decision to be extended until April 20, 2014. On April 11, 2014, the Respondent forwarded its comments on the said annexes to the Center in accordance with Procedural Order No. 1 and the Panel extended the due date for this Decision to April 22, 2014.
4. Factual Background
The Complainant is a limited company established under the laws of England and Wales, UK. The Complainant develops and manufactures advanced light and laser technologies for use in medical and cosmetic procedures. The Complainant states that it sells products to customers in Europe, North America, Brazil, India, South Africa and the Far East under its “i-Lipo” brand, including the Complainant’s “i-Lipo laser lipolysis system”, which it sells in the UK.
The Complainant claims that it began developing the “i-Lipo” system in 2005 and marketed this as early as 2008, with the product line being launched by July 2008 and marketing and sales efforts under way throughout the UK, through a variety of media including “email blasts”. The Complainant is the registrant of the domain name <ilipo.com>, created on June 15, 2003.
The Complainant is the owner of a variety of registered trademarks in various jurisdictions including the United States of America and the United Kingdom for the mark I LIPO. The earliest such mark is UK registered trademark no. 2506594 for a figurative mark consisting of the letter “i" in a circle followed by the word “lipo”, all in a stylized typeface, filed on January 15, 2009 and registered on May 8, 2009 in classes 9 and 10. The Complainant owns other marks registered at later dates in respect of the standard character mark I LIPO.
The disputed domain name was created on August 9, 2008. The registrant name was initially a proxy or privacy service. Between about February 21, 2014 and February 26, 2014, the privacy service was removed from the WhoIs and replaced with the name of the Respondent. A historic WhoIs record dated August 28, 2000 shows that the disputed domain name had previously been registered to a third party based in Florida, United States of America, and that it was created on July 11, 2000 with an expiry date, at the time of the record, of December 23, 2002. The nameservers then assigned to the disputed domain name show that it was being offered for sale and invited email or fax offers.
The Respondent is a director of Laser Lipo Limited, a limited company established under the laws of England and Wales, UK. Laser Lipo Limited is a competitor of the Complainant and sells rival laser lipolysis products including a directly competing product named the “strawberry” laser. The disputed domain name currently points to Laser Lipo Limited’s website at “www.strawberry-laser.com”, the corresponding domain name for which is also registered to the Respondent.
The Respondent appears to have registered the domain name <ilipo.co.uk> on the same date as the disputed domain name, namely August 9, 2008. The said domain name currently points to Laser Lipo Limited’s website at “www.strawberry-laser.com”.
The Complainant has produced an email between a representative of Nominet, the UK Internet Naming Authority, and a representative of the Complainant dated October 22, 2010. Although the Complainant describes this as an investigation into the possibility of filing an action with Nominet, relative to <ilipo.co.uk>, the said email appears to indicate that the parties were at that date undergoing mediation in terms of Nominet’s Dispute Resolution Service Policy (“DRS”). The said email indicates that the Respondent’s position in mediation was that the registration of <ilipo.co.uk> preceded the launch of the Complainant’s “i-Lipo” branded products and thus that the Respondent did not consider that the said domain name was abusive within the meaning of the DRS. Nominet also reported that the Respondent also stated to Nominet that it would only agree to the transfer of the said domain name “for a considerable settlement fee”. Nominet stated to the Complainant that, unless it was prepared to enter into negotiations with the Respondent, its remaining options were to proceed to obtain an Expert decision under the DRS or to proceed to litigation. Neither the Complainant nor the Respondent state whether the Complainant took up either of these options, in the absence of which information the Panel has assumed that the DRS complaint was withdrawn.
The Respondent states that it sold both the disputed domain name and <ilipo.co.uk> to Mr. Hojun Moon of Kangwon City, Republic of Korea for GBP 1 in respect of each domain name. The WhoIs record for <ilipo.co.uk> produced by the Complainant dated February 24, 2014 shows that the registrant is “Hojun,Moon”. The corresponding WhoIs record in respect of the disputed domain name shows that it is registered to the Respondent. However, a historic WhoIs record for the disputed domain name dated January 29, 2012 shows the registrant at that time as “Hojun Moon”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to trademarks in which the Complainant owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant states that this is a classic case of cybersquatting in which the Respondent, being the Complainant’s commercial competitor, has registered a domain name that is virtually identical to the Complainant’s existing trademark and domain name for the purpose of unlawful monetary gain.
The Complainant submits upon information and belief that the Respondent, acting as agent of Laser Lipo Limited, learned of the Complainant’s intention to market its laser lipolysis product under the I LIPO and I-LIPO marks in late July or early August 2008 and that the Respondent then engaged in a premeditated plan of cybersquatting, the purpose of which was to block the Complainant from registering the disputed domain name or to divert Internet traffic to the Respondent’s own website. The Complainant states that this was part of a larger plan which also included the <ilipo.co.uk> domain name, into which the Complainant says it had conducted investigations with Nominet. The Complainant notes that it refused to pay the “considerable settlement fee” for that domain name which was demanded by the Respondent.
The Complainant submits that in the latter part of 2010, the Respondent began a calculated process to frustrate the Complainant’s ability to obtain both the disputed domain name and <ilipo.co.uk>. The Complainant notes that the disputed domain name was transferred to “Hojun Moon” before being hidden behind a privacy service, while <ilipo.co.uk> was transferred to and remains under the name of “Hojun Moon”.
The Complainant relies upon its registered trademarks and also claims common law trademark rights in the terms “i lipo” and “i-lipo” which it states precede any use by the Respondent. The Complainant submits that it has used the term “i-lipo” in commerce since July 2008 and has continued to market products under both of the said common law marks. The Complainant asserts that the only difference between its registered mark and the disputed domain name is the addition of the hyphen in the latter which does not change the pronunciation, aural interpretation or meaning thereof.
The Complainant contends that the Respondent cannot avail itself of any of the paragraphs under the Policy under which it might have demonstrated rights or legitimate interests. The Complainant notes that on the contrary the Respondent is using the disputed domain name for commercial gain while misleadingly diverting Internet users from the disputed domain name domain name incorporating the Complainant's mark to a domain name and web page associated with the Respondent's competing goods and services.
The Complainant states that it has never licensed the right to use any of its marks to the Respondent and that the Respondent has never done business under the name “i-lipo” and owns no corresponding registered or common law marks. The Complainant submits that upon information and belief that the disputed domain name has either lacked content or has simply resolved to the Respondent’s competing website. The Complainant states that this is the definition of cybersquatting.
The Complainant contends that the registration and use of a domain name which a party knows may potentially infringe another's rights, and yet such party registers and uses the domain name in order to profit from the other's enterprise is clear grounds to support a finding of bad faith. The Complainant adds that constructive notice of existing rights can also be sufficient to support such a finding. The Complainant states that it is impossible to believe that the Respondent was unaware of the Complainant’s use of the “i lipo” and “i-lipo” marks given that the Respondent operated the same type of business and that the Complainant had only weeks prior engaged in a continuing advertisement campaign using those marks.
The Complainant asserts that the fact that the Respondent has never marketed or sold goods under the “i lipo” or “i-lipo” marks is evidence of registration and use in bad faith. The Complainant points out that the Respondent continues to market its competing products and services under the “strawberry” mark. The Complainant concludes that there is no conceivable reason, other than to cybersquat, for the Respondent to have registered a domain name associated with the Complainant’s mark.
The Complainant submits that the disputed domain name was registered for the purpose of creating consumer confusion and that the disputed domain name confuses consumers into believing that the Complainant is the source or sponsor of the Respondent’s goods or services when there is no such connection. The Complainant also submits that the Respondent has included meta data tags for the terms “i lipo” and “i-lipo” such that it may be able to attract Internet users to the disputed domain name via search engines.
The Complainant submits that the disputed domain name was also registered by the Respondent in order to sell or transfer the disputed domain name to the Complainant for monetary gain in excess of the Respondent’s out of pocket costs related to the disputed domain name. The Complainant relies upon the fact that the Respondent told Nominet that the Respondent was seeking “a considerable settlement fee” from the Complainant in respect of <ilipo.co.uk>. The Complainant contends that, given the common ownership and control of this and the disputed domain name, there is every reason to believe that the Respondent registered the disputed domain name for the same purpose.
The Complainant asserts that the disputed domain name was also registered for the purpose of preventing the Complainant from reflecting its mark in a corresponding domain name. The Complainant argues that the registration of <ilipo.co.uk> and the disputed domain name demonstrate a clear pattern of behavior whereby the Respondent has engaged in the practice of cybersquatting to hinder the Complainant’s online presence. The Complainant submits that it has also shown that the Respondent registered the disputed domain name for the purpose of disrupting the Complainant’s business operations.
The Respondent states that the Complainant has become a competitor to the Respondent’s company following the Complainant allegedly reverse engineering a product named “Lapex BCS” which was manufactured by a company named Meridian Co. The Respondent states that the said product was sold, marketed and promoted by the Respondent from 2007 in the UK, France and the Middle East before the Complainant produced a corresponding device.
The Respondent contends that the development of its “Strawberry” laser machine is of no consequence to the debate surrounding the disputed domain name. The Respondent states that a proficient management team would have secured the relevant domain name prior to branding a product and that if the Complainant had secured the name, obtained the corresponding trademark and launched their product to market, the present issue would not exist.
The Respondent denies that it cybersquatted on the Complainant’s product name, which it argues was not a well-known company or brand name. The Respondent states that the Complainant has completed fewer clinic installations than the Respondent, such that the Respondent would not benefit from adopting the Complainant’s product name or brand. The Respondent asserts that as both its products and those of the Complainant are regarded as an alternative to liposuction, “it is hardly rocket science to secure the brand i-lipo(suction) and all of its derivatives”. The Respondent states that many companies adopted this concept, following the APPLE I-POD or I-TOUCH products. The Respondent emphasizes that while the Complainant claims to have made sales prior to August 2008 it was unable in the previous dispute between the Parties to provide any evidence to support this. The Respondent states that such claim is untrue and that the Complainant cannot show any successful sales until October 2008. The Respondent calls upon the Complainant to produce evidence of sales with bank statements to support such claims.
The Respondent asserts that its company owns the trade names “Laser Lipo” and “Strawberry Laser” along with some 300 domain names “to protect its investment in research and development” and that its brand is now in over 27 countries. The Respondent notes that it deliberately selected a privacy service for the disputed domain name and submits that this is a normal option which was offered free of charge at the time of registration. The Respondent acknowledges that the disputed domain name was pointed to its website at “www.strawberry-laser.com” and adds that it was originally pointed to “www.laserlipo-bcs.com”. The Respondent states that after the launch of “Strawberry Laser” all of its business traffic was directed to its new domain name as it was building its brand.
The Respondent states that it sold both the disputed domain name and <ilipo.co.uk> to a member of the original Meridian company in the Republic of Korea for GBP 1 per domain after a direct approach from Mr. Moon, one of Meridian’s staff. The Respondent notes that the sale is listed in the company sales ledger. The Respondent notes that Meridian was upset due to its device allegedly having been copied by the Complainant. The Respondent explains that Mr. Moon intended to change the registrant name and the redirection on both domain names but does not know why this has not happened. The Respondent states that it has no ownership to contest and no longer has dealings with or contact details for Mr. Moon.
In response to the Procedural Order, the Respondent noted that it did not consider that there was any new evidence in the Complainant’s Annexes and reiterated its view that it was no longer the owner of the disputed domain name but that the Complainant had no claim to it unless the Complainant could provide evidence of product sales prior to 2008. The Respondent also queried the relevance of the Complainant producing the WhoIs record for the Complainant’s domain name <ilipo.com>.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Preliminary Issue: Respondent Identity
The Panel notes that the Complainant’s position is that the Respondent is the correct party to be named as respondent in this case. The Complaint is clear that the Complainant views the Respondent as such, and considers that the Respondent’s alleged transfer to a third party was merely an attempt to frustrate the Complainant’s efforts to call the Respondent to account in the present proceeding.
For its part, the Respondent argues that it has no interest in these proceedings on the basis that it is no longer the owner of the disputed domain name. This may appear at first sight to be a somewhat curious approach for a respondent which has filed a fulsome response to take, however the Panel notes that the Complaint directly accuses the Respondent of cybersquatting and the Panel accepts the logic of the Respondent’s position in seeking to counter such allegations even if it believes that it has no further interest in the disputed domain name itself.
In light of the Respondent’s contention concerning its transfer of the disputed domain name, the Panel must consider whether the Respondent is the appropriate respondent in this case. The Panel has discretion to determine this question on the basis that the Rules give the Panel power to conduct proceedings in such manner as it considers appropriate in accordance with such Rules and the Policy (Rules, paragraph 10(a)). The Panel notes that paragraph 4.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that the Rules define the respondent as the holder of a domain name registration against which a complaint is initiated. According to the applicable WhoIs record, the Respondent is the holder of the disputed domain name. In the Panel’s mind, it matters not that the Respondent claims to have sold the disputed domain name to a third party provided that the Respondent’s name remains on the WhoIs. The Respondent is therefore the de facto holder and must be treated as such. If this were not done, a respondent might be able to defeat the ends of the Policy simply by claiming that it had sold the domain name concerned.
In any event, even if the Panel were to accept that there was some type of beneficial or underlying ownership of the disputed domain name in effect here, as a consequence of the alleged transfer to Mr. Moon, the Respondent has provided no evidence of such transfer, merely an assertion that it occurred. For example, no correspondence between the Respondent and Mr. Moon regarding the disputed domain name has been produced, nor, for that matter, any evidence showing or tending to show that Mr. Moon exists at all. The evidence does disclose a change to the WhoIs record which reflected a Mr. Moon as the holder of the disputed domain name on January 29, 2012, however such change was temporary. Besides the WhoIs records, there is no other evidence before the Panel that Mr. Moon is the underlying registrant, such as, for example, a statement from Mr. Moon himself.
In all of these circumstances, the Panel finds that the Respondent is the proper respondent in this proceeding, notwithstanding its alleged transfer of the disputed domain name to a third party.
B. Identical or Confusingly Similar
The Complainant is the owner of the registered trademark for the mark I LIPO described in the factual background section above. The Complainant’s ownership is not contested by the Respondent. It may be noted that the disputed domain name predates all of the Complainant’s registered trademarks however this does not in itself prevent a finding of identity or confusing similarity under the Policy (see paragraph 1.4 of the WIPO Overview 2.0). It may however be relevant to the assessment of registration and use in bad faith under paragraph 4(a)(iii) of the Policy.
The only difference between the Complainant’s trademark and the disputed domain name is the addition of the hyphen in the disputed domain name, disregarding the generic Top-Level Domain (gTLD) “.com” as is customary in cases under the Policy. The Panel finds that the hyphen is insufficient to dispel the confusion between the disputed domain name and the Complainant’s trademark.
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
C. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding under the following head, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
The Complainant must prove both that the disputed domain name was registered and is being used in bad faith. A significant issue for the Complainant’s case on registration in bad faith is that its registered trademarks all post-date the creation date of the disputed domain name. Furthermore, while the Complainant states that it had acquired rights in relevant unregistered marks by the said creation date, there is no evidence on the present record which would satisfy the Panel as to the date on which such rights were acquired. In particular, the Complainant has produced no dated material showing that it had established “I Lipo” or “I-Lipo” as a distinctive identifier associated with the Complainant or its goods or services prior to the creation date of the disputed domain name.
“Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [...], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right. [...]
However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant's enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant's likely rights in that mark. (In all such cases, in order to have a chance to succeed in any filed UDRP complaint, the complainant must actually demonstrate relevant trademark rights, as these are a precondition for satisfying the standing requirement under the first element of the UDRP for rights in a mark.)”
The Panel respectfully adopts the consensus view. The consensus indicates that, subject to certain exceptions, a finding of registration in bad faith will typically not be made if the creation of the disputed domain name predates the registration of the complainant’s mark. The exceptions cover situations where the domain name was registered with intent to target and take unfair advantage of rights ultimately vesting in the complainant, which the respondent knew were likely to arise at a later date. One such example is where an informed source seeks to take advantage of rights that may arise from the complainant’s enterprises.
In the present matter, the Complainant’s case relies upon this exception. The Complainant states that the Respondent is a competitor of the Complainant and learned of the Complainant’s intention to market its product under the I LIPO and I-LIPO marks in late July or early August 2008. The problem for the Complainant is that these very specific allegations are denied by the Respondent. Both in the present case and in the DRS proceedings relative to <ilipo.co.uk> in 2010, the Respondent requested that the Complainant should produce evidence of the extent of its activities prior to the creation of the disputed domain name, in connection with the I LIPO or I-LIPO marks. In other words, while the Respondent could in theory be an “informed source” as described by the exception, by virtue of being a competitor, the Respondent’s position is that the Complainant must prove that the Respondent could have known of the Complainant’s plans and has failed to do so.
Bearing in mind therefore the considerable notice that the Complainant has received regarding the Respondent’s position on this topic, what evidence has it produced from which it would be reasonable for the Panel to infer that the Respondent had knowledge of the Complainant’s intentions? The Complainant has placed no evidence of any substance before the Panel bearing upon this matter. Instead, it has chosen to rely on nothing more than a history of its activities taken from its own website, a magazine article dated September 2012 and an undated article, coupled with bare assertions relating to the alleged development of its system in 2005 and commencement of its marketing and sales in July 2008.
The Panel accepts that the Complainant has produced evidence that it was the owner of the <ilipo.com> domain name from 2003 onwards but in the Panel’s view that is not enough to fix the Respondent with knowledge of the Complainant and/or its intentions regarding the “I Lipo” or “I-Lipo” brands. The Complainant could have produced a whole variety of items which might have satisfied the Panel on this point, from dated marketing materials, to evidence of sales particulars or installations, to dated examples of the “email blasts” said to have been issued. In the absence of such materials, the Panel is entitled to make the reasonable inference that the Complainant has nothing suitable to produce, especially given the Respondent’s separate calls for evidence some three and a half years apart.
That is not the end of the matter, however, as the Panel must also scrutinize the Respondent’s submissions in order to assess the credibility of the Respondent’s denial of knowledge, particularly as the Respondent is admittedly a competitor of the Complainant. The Panel finds that the Respondent’s case that it had selected a name that was “not rocket science” based upon coupling the “i" prefix made popular by successful and unrelated third party products to “lipo(suction)” is reasonably credible. Furthermore, the Panel also notes from the evidence that a third party conceived and registered the same domain name entirely independently of both of the Parties to this proceeding in 2000, based upon the evidence in the “DomainTools” report produced by the Complainant. In the Panel’s view this tends to corroborate the Respondent’s position that it was possible to come up with such a name without having special knowledge of the Complainant or its “I Lipo” or “I-Lipo” brands, given that the previous registrant’s activities pre-date the introduction of the Complainant’s brands.
Faced with a plausible denial of knowledge from the Respondent, it is all the more important for the Complainant to bring forward evidence from which it may reasonably be inferred that the Respondent was aware of the Complainant and thus that this is more probably the reason for the Respondent’s creation of the disputed domain name. The Complainant has not provided this. It is for the Complainant to prove its case on registration in bad faith in terms of its Complaint under the Policy.
In all of these circumstances, the Panel finds that the Complainant has failed to prove that the Respondent registered the disputed domain name in bad faith. As this element is conjunctive with the requirement to prove use in bad faith, it is not necessary for the Panel to consider the latter. Accordingly, the Panel finds that the Complainant has failed to establish the third element under the Policy.
This finding should not be taken as condoning the Respondent’s alleged or admitted recent activities regarding the disputed domain name and in particular the suggestion that it may have transferred the disputed domain name to a party who would have had full-knowledge of the Complainant’s rights and indeed may have planned to acquire the disputed domain name with intent to target these. While the Complainant is not entitled to the remedy which it seeks under the Policy on the record before the Panel, it remains free to seek remedies in other fora and the present finding, being confined to the Policy, does not seek to influence any such subsequent proceedings.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: April 22, 2014