WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Silhouette Lift S.L., Sinclair Pharmaceuticals Ltd and Sinclair Is Pharma PLC v. Falah Hasan Ali, Super Silhouette Soft Ltd / Ali Mahmod, Ali M. Mahmod
Case No. D2015-1027
1. The Parties
The Complainants are Silhouette Lift S.L. of Barcelona, Spain (“First Complainant”), Sinclair Pharmaceuticals Ltd of Chester, United Kingdom of Great Britain and Northern Ireland (“UK”) (“Second Complainant”) and Sinclair IS Pharma PLC of London, UK (“Third Complainant”), represented by Allen & Overy LLP, UK.
The Respondents are Falah Hasan Ali, Super Silhouette Soft Ltd of Hastings, UK / Ali Mahmod, Ali M. Mahmod of Kirkuk, Iraq.
2. The Domain Names and Registrar
The disputed domain names <silhouete-soft.com> and <super-silhouette-soft.com> are registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2015. On June 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 18, 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.
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 June 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2015.
The Center appointed Adam Taylor as the sole panelist in this matter on July 21, 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
For reasons explained in section 6A below, the Complainants and the Respondents respectively are referred to below as “the Complainant” and “the Respondent” and are respectively treated interchangeably unless there is a reason to refer to them separately.
The First Complainant, a Spanish company, has distributed a cosmetic surgery product known as “Silhouette Soft” since 2012. The other two Complainants, incorporated in the UK and part of the same group of companies, have also used that name since the Third Complainant’s acquisition of the First Complainant on May 2, 2014. The “Silhouette Soft” product is now advertised and sold in some 50 countries.
The Complainant owns various registered trade marks for SILHOUETTE SOFT including the French trade mark no. 3901905 filed March 2, 2012, and Swiss trade mark no. 662062 filed February 10, 2014, both in classes 3, 10 and 44.
The Complainant has operated a website at “www.silhouette-soft.com” since February 29, 2012.
The Respondent (Falah Hasan Ali) is recorded as the inventor and proprietor of UK patents GB2492900 (“Modified silhouette facelift surgical suture”) and GB2495653 (“Super silhouette facelift suture”) filed on July 17, 2012, and December 24, 2012 respectively.
By letter dated July 13, 2013, the Respondent, describing himself as a “Cosmetic dermatologist” wrote to Silhouette Lift, Inc (“SLI”) (incorporated in the United States of America (“US”), the previous owner of the First Complainant), enclosing a copy of patent no. GB2492900 and proposing a “deal with a US suture manufacturer to produce and distribute the Modified silhouette suture”, adding “I want to start with you please because you are the most concerned company”.
On December 12, 2013, SLI’s lawyers sent a cease and desist letter to the Respondent.
On December 19, 2013, the Respondent emailed SLI direct, inviting it to buy the Respondent’s patents.
On December 26, 2013, the Respondent applied for a third UK patent, which was later granted under no. GB2506549 (“Reinforcing mean for Silhouette face lift sutures”) and which stated that the invention related to a means of reinforcing the “Silhouette face lift sutures … with the trade mark, Silhouette Lift and Silhouette Soft.”
On February 10, 2014, the Respondent applied for a UK trade mark for SUPER SILHOUETTE SOFT in class 10 (“the Respondent Mark”). This application was granted but the Complainant has now applied to cancel this trade mark on the grounds that it was applied for in bad faith.
On February 21, 2014, the Respondent incorporated a UK company called Super Silhouette Soft Ltd (“the Respondent Company”).
The disputed domain name <super-silhouette-soft.com> was registered on September 18, 2014 in the name “Ali M. Mahmod”.
On December 29, 2014, the Respondent, describing himself as owner of the Respondent Company, emailed another letter to SLI alerting it to grant of the third UK patent mentioned above and referring, amongst other things, to establishment of the Respondent Company. The letter claimed that the Respondent had started production of the “Silhouette Soft” suture according to the third patent and invited the Complainant to visit “my website” at “www.super-silhouette-soft.com” and to view a YouTube video to see more details about the Respondent’s product. The Respondent stated: “The sutures are exactly identical to your Silhouette Soft with the addition of reinforcing segments.”
The letter went on to state:
“[t]he best way is to buy my patents; price is negotiable.
If we can reach a deal, I will cancel my web site and remove my videos and I close my company immediately.
But if we cannot reach a deal, I will start contacting Silhouette Soft and Silhouette Lift users, customers, clinics and hospitals…
Unfortunately, once I start these mentioned activities, there will be no more chance to have any deal with you in future.
If you try to reduce your prices, I will reduce my prices too. My prices will always be half your prices.”
On January 7, 2015, the Respondent emailed SLI again to propose a final price of USD 6 million for the patents. SLI informed the Respondent that the First Complainant had been sold, whereupon the Respondent forwarded his previous correspondence to the general counsel of the Complainant.
There then followed extensive correspondence between the parties in the course of which the Respondent: threatened to stop the Complainant describing its Silhouette Soft product as patented or trademarked; threatened to “re-activate” his “project” as of May 1, 2015; threatened to contact the Complainant’s shareholders warning them that the Complainant’s reputation would be damaged if there was no deal to acquire the patents (such a letter was in fact sent); threatened to promote his product and to contact the Complainant’s customers worldwide offering free samples and half-price deals; threatened to contact the media and to start patent infringement and other proceedings against the Complainant; and offered, amongst other things, to sell the patents to the Complainant and to close the Respondent Company and the Respondent Website in return for payment of USD 117 million.
The disputed domain name <silhouete-soft.com> was registered on May 5, 2015, again in the name “Ali M. Mahmod”.
At an unspecified date, there was a website at “www.super-silhouette-soft.com” (“the Respondent Website”) referring to both disputed domain names. The site was branded “Silhouettesoft® UK” and it purported to offer for sale a cosmetic surgery product called “Silhouette Soft” with packaging bearing a logo similar to the Complainant’s logo. Amongst other things, the site reproduced a certificate of incorporation of the Respondent Company.
As of June 8, 2015, the Respondent Company had filed no accounts and there was a pending proposal to strike it off the UK Companies Register.
5. Parties’ Contentions
The Complainant has invested substantial time and money in developing and promoting its highly innovative “Silhouette Soft” products. The Complainant consequently has accrued a significant amount of goodwill
in the marks and associated passing off rights in the UK.
The disputed domain names are confusingly similar to the Complainant’s trade marks. The only differences are the omission of “t” and the addition of the word “super”, which is merely a descriptive term.
The Respondent has not used the disputed domain names for a bona fide offering. They are part of a scheme to blackmail the Complainant.
The Complainant has been unable to make an order via the Respondent’s website, which purports to offer for sale an improved version of the Complainant’s product. The product shown in a photograph on the Respondent’s site is identical to the Complainant’s product and it is most likely a photograph of the Complainant’s product.
A purported sample of the Respondent’s product, which was sent by the Respondent to the Complainant, was a poor home-made imitation which would not work and could not be sold. Offering the product for sale is unlawful as it has not been authorised by the relevant authorities and the Complainant has made a complaint to the UK Medicines and Healthcare Products Regulatory Agency.
The Respondent is not commonly known by the disputed domain names. The Respondent’s trade mark was applied for in bad faith.
The Respondent is using the disputed domain names to misleadingly divert consumers and/or tarnish the Complainant’s marks. The Respondent’s aim is to gain leverage to force the Complainant to buy his patents.
The Respondent registered the disputed domain names in bad faith in accordance with paragraphs
4(b)(i) - (iv) of the Policy.
Since July 2013 the Respondent has conducted a long and harassing campaign of correspondence against the Complainant. Because the Complainant was not willing to pay the sums of up to USD 117 million demanded by the Respondent for the patents, the Respondent has implemented a scheme to damage the Complainant by registering the disputed domain names, the Respondent Mark and the Respondent Company.
It can be inferred from the facts of the case that the Respondent was fully aware of the Complainant’s rights and goodwill in the marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The principles governing the question of whether a complaint may be brought by multiple complainants or against multiple respondents are set out in paragraph 4.16 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Panel is satisfied that the Complainants, which are part of the same group of companies, have a common grievance against the Respondents in that they have a common legal interest in relevant rights that are allegedly affected by the Respondents’ conduct and that it would be equitable and procedurally efficient to permit the proceedings to continue in the name of the multiple Complainants specified.
As to the Respondents, the Complainant has included “Falah Hasan Ali, Super Silhouette Soft Ltd” as a Respondent in addition to “Ali Mahmood”, the holder of the disputed domain names. The Complainant says it strongly suspects that “Falah Hasan Ali” and “Ali Mahmood” are the same person. In any case, it is clear from the correspondence summarised in section 4 above that Falah Hasan Ali is the controller of both disputed domain names, at one point referring to the Respondent Website as “my website” and offering to close the website if his demands were met and that he also controls the Respondent Company (which he refers to as “my company”). The Panel considers that, in all the circumstances, all of the named Respondents are properly included.
B. Identical or Confusingly Similar
The Complainant has rights in the name “Silhouette Soft” by virtue of its registered trade marks as well as unregistered trade mark rights deriving from extensive and worldwide use of that name.
Paragraph 1.2 of the WIPO Overview 2.0 makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and a disputed domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Paragraph 1.9 of the WIPO Overview 2.0 adds that, in itself, the addition of merely generic, descriptive, or geographical wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name.
Disregarding the domain name suffix, and the hyphen, the disputed domain name <silhouete-soft.com> differs from the Complainant’s mark only by omission of the letter “t” and is thus a misspelling of the Complainant’s trade mark. The disputed domain name <super-silhouette-soft.com> differs only by the addition of the descriptive word “super”.
For the above reasons, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
The Respondent Trade Mark does not assist the Respondent. As explained in paragraph 2.7 of the WIPO Overview 2.0, a respondent’s registration of a trade mark corresponding to a disputed domain name will not necessarily suffice to establish rights or legitimate interests. In the Panel’s view, that is the case here given that the circumstances outlined in section 4 above indicate that the trade mark was likely to have been applied for in bad faith and there is no rebuttal from the Respondent.
As to paragraph 4(c)(i) of the Policy, the Complainant asserts that the Respondent’s Website is a sham, designed to support the Respondent’s attempt to blackmail the Complainant. The Complainant says it has attempted, but been unable, to order any products via that website. The burden of production has therefore shifted to the Respondent, which has failed to come forward to with allegations or evidence demonstrating that the website constitutes a bona fide offering of goods or services.
As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has ever been commonly known by the disputed domain names. Insofar as the Respondent Company is relevant in this context, the Complainant asserts that it has never actually traded and, again, the Respondent has not appeared in the proceeding to contest this.
Nor is there any evidence that paragraph 4(c)(iii) of the Policy applies in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and that there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
In the Panel’s view, the chronology of events outlined in section 4 strongly indicates the disputed domain names have been registered and used in bad faith.
In particular, before registering the disputed domain names, the Respondent:
1. had approached the former owner of the First Complainant proposing a deal relating to the Respondent’s patents, which the Respondent later offered to sell to; and
2. had filed for a further patent referring to the Silhouette Soft trade mark.
The Respondent was therefore well aware of the Complainant’s trade marks from the outset.
Thereafter, in February 2014, the Respondent applied for the Respondent Trade Mark and incorporated the Respondent Company and in September 2014 the Respondent registered the disputed domain name <super-silhouette-soft.com>. Within three months, in December 2014, the Respondent followed up with a further letter to the former owner of the First Complainant pressing it to buy the Respondent’s patents and offering, amongst other things, to close the Respondent Company and the Respondent Website if a deal was done as well as threatening to contact the Complainant’s customers if no agreement was reached. Over the next five months or so, the Respondent’s threats to the Complainant escalated, following which the Respondent registered the second disputed domain name <silhouete-soft.com> (explicable only as a deliberate misspelling of the Complainant’s mark and domain name) on May 5, 2015.
The Panel is therefore driven to conclude that the disputed domain names were not registered or used for any genuine purpose but, instead, formed part of a scheme designed to pressure the Complainant to buy the Respondent’s patents for a very substantial sum.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <silhouete-soft.com> and <super-silhouette-soft.com> be transferred to the Second Complainant.
Date: August 4, 2015