WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rejuvatek Medical, Inc. v. Ben Saunders, Biosoft (Aust) Pty Ltd
Case No. D2016-1331
1. The Parties
The Complainant is Rejuvatek Medical, Inc. of Sandy, Utah, United States of America (“United States”) represented by Chrysiliou IP, Australia.
The Respondent is Ben Saunders, Biosoft (Aust) Pty Ltd) of ,Silverwater, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <tatt2awayaustralia.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2016. On June 30, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2016. A submission named “Response” was filed by Biosoft (Australia) Pty Ltd with the Center on August 1, 2016
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on August 8, 2016. 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 is a corporation with its principal place of business in Sandy, Utah, United States. It is a manufacturer of tattoo removal systems and services. The Complainant is the owner of registered trademarks for the word mark TATT2AWAY including United States Patent and Trademark Office (“USPTO”) registered trademark no. 3923894, registered on February 22, 2011 in international class 44 and Australian registered trademark no. 1488355, filed on May 1, 2012 and registered on January 14, 2013.
On January 20, 2012, the Complainant entered into a distributor agreement with an entity named Equipmed in terms of which the Complainant granted Equipmed the exclusive and non-assignable right to sell the Complainant’s equipment to customers based in Australia and New Zealand for a term of three years. In terms of Article IV, paragraph 1 of the said agreement, the Complainant expressly prohibited Equipmed inter alia from direct or indirect use or other employment of the Complainant’s name or trademarks except as authorized by the agreement or otherwise in writing. The term of the said agreement was not renewed and accordingly it expired on January 20, 2015.
It is not clear what type of entity Equipmed is or was. The distributor agreement was signed on behalf of Equipmed by an individual named […] Marshall. The Complainant has attempted by various means to show potential links between Equipmed and the Respondent though the position does not appear to have been determined conclusively. For example, an entity named Biosoft Pty Ltd (Australian company no. 107 471 689) applied for an Australian trademark for the word mark TATT2AWAY on February 24, 2012. This entity had the same postal address as Equipmed. On April 11, 2012, a representative of the Complainant asked Mr. Marshall of Equipmed by email whether the applicant for such trademark was connected to Equipmed and later informed him that Equipmed was not authorized to make such an application. On April 10, 2012 Mr. Marshall sent an email responding to the Complainant’s representative stating “…that is us, we register all trademarks and registrations in this company”. Correspondence between the Complainant and Equipmed shows that Equipmed used the domain name <equipmed.com>. The registrant for that domain name is, according to WhoIs records, Biosoft (Aust) Pty Ltd with an address at a post office box number in Silverwater, New South Wales, Australia. This is the same entity, address and registrar as is listed on the WhoIs record for the disputed domain name.
The disputed domain name was created on February 23, 2012. As noted above, the registrant organization name given in the WhoIs is Biosoft (Aust) Pty Ltd. The disputed domain name is used for a website promoting TATT2AWAY non-laser tattoo removal. The “Contact Us” entry on such website appears to indicate that it is operated by Equipmed and references the domain name <equipmed.com>.
Multiple entities were provided by the Complainant as possible contacts and responsible persons for the disputed domain name. These were all notified of the Complaint by the Center in accordance with paragraph 4 of the Rules. An entity named Biosoft (Australia) Pty Limited (allegedly distinct from Biosoft (Aust) Pty Ltd.), giving its address as the same address provided by Equipmed for its “Head Office in Australia” on the website associated with the disputed domain name, is the only such party to respond to the Complaint. The essence of the Response is that Biosoft (Australia) Pty Limited does not own the disputed domain name, is not associated with other parties named in the Complaint and is a distinct legal personality. It objects to being named in the Complaint.
The listed registrant of the disputed domain name, Biosoft (Aust) Pty Ltd, was notified of the Complaint by the Center at the post office box address provided in the corresponding WhoIs record. The courier delivery report shows that the notification papers were duly delivered and were signed for by a recipient on delivery.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to a trademark 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 the disputed domain name wholly contains the Complainant’s TATT2AWAY trademark subject to the addition of the word “Australia” which is merely a geographical indication. The Complainant also notes that the website content associated with the disputed domain name references the Complainant as an associated party.
The Complainant asserts that at no stage did it enter into any form of agreement or provide consent to the Respondent to use its TATT2AWAY mark, nor did it authorize or approve the Respondent to indicate an affiliation or relationship with it.
The Complainant describes the above discussed distribution agreement and states that Equipmed appears to be related to the Respondent and provides various examples of a possible connection. The Complainant acknowledges that the nature of the relationship cannot be confirmed. The Complainant asserts that it did not enter the said agreement with the Respondent. The Complainant points out that in any event Equipmed was not a party to any distribution arrangement after conclusion of the term of the said agreement.
The Complainant notes that it contacted Mr. Marshall of Equipmed on September 18, 2015 and October 28, 2015, noting that Mr. Marshall responded on November 5, 2015 indicating that Equipmed had used the TATT2AWAY mark prior to the Complainant but providing no proof of same. The Complainant adds that it is the owner of and has used the said mark worldwide since as early as August, 2009. The Complainant submits that on September 3, 2014 a person named Mr. Marshall has been disqualified by the Australian Securities and Investment Commission from managing corporations and provides evidence of same. The Complainant submits that this may assist in understanding why the relationship between the Respondent and Equipmed is not clear or obvious.
The Complainant asserts that the Respondent is intentionally attempting to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The Complainant notes that it is referenced in various places on the website associated with the disputed domain name together with claims that the website operator is partnering with the Complainant as the sole Australian distributor of TATT2AWAY. The Complainant notes that this is no longer true for Equipmed and has never been true for the Respondent. The Complainant also notes that the said website references the Complainant’s registered trademark throughout to promote tattoo removal services.
The Complainant describes the application for a registered trademark by “Biosoft Pty Ltd” outlined in the factual background section above and asserts that it was a matter of admission by Mr. Marshall in correspondence that this was filed on his behalf. The Complainant also notes that correspondence between Mr. Marshall and representatives of the Complainant draws a connection between Mr. Marshall and the Respondent.
While Biosoft (Aust) Pty Ltd did not submit a Response, a company named Biosoft (Australia) Pty Ltd made a submission while at the same time claiming to be a different entity than the registrant organization of the disputed domain name. The Panel’s finding regarding the Respondent’s identity is laid out under section 6.1 of this Decision.
Biosoft (Australia) Pty Ltd requests that the remedies sought by the Complainant be denied. It asserts that the address at which it was served is not the address of any other entities named in the Complaint.
It says that it does not own the disputed domain name and is not associated with the other parties named in the Complaint. It adds that it is an independent company and a distinct legal personality and that it objects strongly to being named in the administrative proceeding. It alleges that there has been a failure to notify the correct entity caused by the Complainant’s listing of confusing parties and/or associations with Equipmed or Mr. Marshall. It submits that this results in a clear procedural unfairness and inability of the true entities involved to make appropriate submissions. It notes that Biosoft (Aust) Pty Ltd is stated in the Complaint to be under external administration and asserts that it and its assets are therefore controlled by a third party and that it could not reply to the Complaint without the permission of such third party. It adds that under Australian law a court will have been involved in the appointment of the external administrator and that the Complainant’s assertion that court proceedings are not pending is therefore incorrect.
It concludes that the Panel’s determination would be subject to the approval of the administrators to Biosoft (Aust) Pty Ltd or the courts in Australia and that the matter should therefore be dismissed.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated 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 Matters: Respondent Identity and Pending Legal Proceedings
The Response has been prepared by a corporation, namely Biosoft (Australia) Pty Ltd, while the holder of the disputed domain name is Biosoft (Aust) Pty Ltd, apparently a different corporation. The Response states that Biosoft (Australia) Pty Ltd is not the owner of the disputed domain name and that it objects to being named in these proceedings. Biosoft (Australia) Pty Ltd thus neither states that it is the holder of the disputed domain name nor that it seeks to be substituted therefor as the Respondent.
The UDRP Rules define the respondent as the holder of a domain name registration against which a complaint is initiated, namely, in the present case, Biosoft (Aust) Pty Ltd and Ben Saunders. The UDRP Rules also give the Panel power to conduct proceedings in such manner as it considers appropriate, in accordance with the Rules and the Policy, and in the Panel’s opinion, this power is capable of extending to the making of a determination as to the correct respondent in the proceedings.
In the present case, the Panel is in the unusual position where a Response has been filed by an entity which effectively argues that it is not and should not be a party to these proceedings because it is not the holder of the disputed domain name and is a separate legal person. Such entity neither seeks to be treated as the Respondent nor wishes to make representations on the Respondent’s behalf. In these circumstances, there seems no reason for the Panel to treat Biosoft (Australia) Pty Ltd as the Respondent. While that entity’s contentions in the Response are set out above for completeness and discussed in this section, the Panel will proceed on the basis that the correct Respondent is the entity listed in the WhoIs for the disputed domain name, namely the registrant organization named Biosoft (Aust) Pty Ltd and Ben Saunders. That entity will be hereinafter described as “the Respondent”. The Panel does not know whether Biosoft (Aust) Pty Ltd is one and the same as the company bearing this name on the Australian Companies Register, company number 107 471 689, the status of which was reported on June 29, 2016 as “External Administration”.
The Panel notes that the jurisdictional basis for the present administrative proceeding derives from the fact that the registration agreement, pursuant to which the disputed domain name that is the subject of this Complaint is registered, incorporates the Policy. In the Panel’s opinion, such jurisdiction is extra-judicial in nature and is unaffected by the entering into administration of one of the Parties, or any other change of legal status on the part of a registrant (see for example the discussion on the question of a party in liquidation under English law in Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038). As noted above, and in any event, it has not been established with sufficient certainty that the registrant is one and the same as the company which is in external administration.
Turning to the question of pending legal proceedings, on one view the Panel need not address itself to this issue since it has been raised by a party which indicates that it is not the holder of the disputed domain name and arguably therefore should not be a party to this administrative proceeding. However, given that this issue appears to be the only substantive matter disclosed in the Response, the Panel will deal with the point for completeness. Paragraph 18(a) of the Rules confers discretion upon the Panel to decide whether to suspend or terminate the administrative proceeding, or proceed to a decision, in the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute that is the subject of the complaint. The Panel emphasizes that in order to engage this paragraph of the Rules, the legal proceedings concerned require to be “in respect of a domain name dispute that is the subject of the complaint”.
The court process for appointment of an administrator, or for an administrator to seek the permission of the court to respond to an administrative proceeding, if such is required under the law of the place where the administration has been ordered, are not legal proceedings “in respect of a domain name dispute” (see the discussion on this topic in Hesco Bastion Limited v. The Trading Force Limited, supra). The Panel therefore does not consider that this issue has any bearing on the present matter. In any event, this Panel is of the view that the Policy generally obliges a panel to make a decision on a complaint even where there are legal proceedings which would come within the ambit of paragraph 18(a) of the Rules. Accordingly, the Panel will proceed to a decision. The Panel need not concern itself with what may be done with the decision after the Panel is functus officio and notes that it does not address its decision to the attention of any other forum.
B. Identical or Confusingly Similar
The disputed domain name is alphanumerically identical to the Complainant’s mark with the addition of the word “Australia” and the generic Top-Level Domain (“gTLD”) “.com”. The gTLD is commonly disregarded for the purposes of comparison in cases under the Policy on the grounds that it is required for technical reasons only. It is well recognized by UDRP panels that where a distinctive trademark is wholly incorporated in a domain name, a geographic term typically will not serve to distinguish the domain name from the trademark (see, for example, the discussion Koninklijke Philips Electronics NV v. Gopan P.K., WIPO Case No. D2001-0171 involving the domain name <philipsindia.net>). In the present case, the Complainant’s mark appears to the Panel as the first and most significant element with the additional word “Australia” qualifying such trademark only to the extent that it is suggestive of a country in which consumers may seek the Complainant’s goods or services.
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case not rebutted by the respondent that the respondent has no rights or legitimate interests in the disputed domain name. In the present matter, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that it has never entered into any agreement or provided consent to the Respondent to use its TATT2AWAY mark and that it has not authorized the Respondent to indicate any affiliation or relationship with it. The Complainant adds that while the Respondent may be associated with Equipmed this cannot be established conclusively and that, even if it were so associated, Equipmed itself had no authorization or entitlement to register or use the disputed domain name whether arising out of the distribution agreement or otherwise.
In these circumstances, the Panel turns to the Response to determine whether the said prima facie case may be rebutted. The nature of the Response as described above means that it necessarily contains no such rebuttal as it bears to be from an unrelated party. There is a suggestion in the correspondence between the Complainant and Equipmed that the latter entity might seek to claim some prior use of the term TATT2AWAY. While such a suggestion might have been expanded upon to provide a case in terms of paragraph 4(c)(i) or 4(c)(ii) of the Policy, no party has come forward to do this and there is no evidence whatsoever before the Panel which might support such claim.
This leaves the issue of potential authorized or unauthorized distribution of the Complainant’s products as a possibility which might confer rights or legitimate interests upon the Respondent. It does appear to the Panel that whether or not there is a relationship between the Respondent and Equipmed, the Complainant’s former authorized distributor, the website appears to be that of a distributor of the Complainant’s tattoo removal products and services. For example, reference is made throughout the website to the Complainant and, according to the Complainant, there is an express mention of a “partnership” between the website operator and the Complainant.
The Panel therefore refers to paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) which deals with the question of whether a reseller/distributor of trademarked goods or services might have rights or legitimate interests in a domain name which contains such trademark. The paragraph describes a consensus view which has emerged among UDRP panelists, namely that a reseller/distributor can be making a bona fide offering of goods and services and thus may have a legitimate interest if its use meets certain requirements, normally including the actual offering of the goods and services at issue, the use of the site to sell only the trademarked goods, the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder and the registrant not trying to “corner the market” in domain names reflecting the trademark. There are two additional qualifications to the consensus view, the first of which is not relevant here as it requires the domain name concerned to be identical to the complainant’s trademark. The other qualification is that a small number of panels consider that, without express authority of the relevant trademark holder, a right to resell or distribute a trademark holder’s products does not create a right to use a domain name which wholly incorporates the relevant trademark.
In the present case, two factors arising from the general consensus view are in particular of significance for the Panel. The first is that there is no evidence before the Panel that the website associated with the disputed domain name is only selling the trademarked goods or services. The second, and more important factor, is that there is no evidence that the site accurately discloses the registrant’s relationship with the trademark holder. This is hardly surprising given the uncertainty of the registrant’s identity and the extent to which the Complainant has required to speculate as to possible connections between the Respondent and the Complainant’s former distributor. The Complainant asserts that there is no partnership between it and the site operator as described on the website. The Response does not engage with the issue. In these circumstances, the Panel considers that it has not been demonstrated that the Respondent has rights or legitimate interests in the disputed domain name arising from any status which the Respondent might have claimed as authorized or unauthorized distributor of the Complainant’s products or services.
It follows from the above discussion that the Complainant’s prima facie case outlined above has not been rebutted and accordingly the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has established the second element under the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name 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 the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
The Panel accepts that there is a possibility that the registration and use of the disputed domain name results from the Complainant and Equipmed’s former commercial relationship. There are several elements within the evidence which may point in that direction. First, there is the proximity in time between the creation date of the disputed domain name and the conclusion of the distribution agreement between the Complainant and Equipmed. Secondly, various links have been outlined by the Complainant, namely common addresses and similar names across a web of companies and trading names, albeit that the Response shows that at least one of the named entities claims to have no connection to the others. Thirdly, there is the fact that Equipmed’s own domain name is held in an almost identical manner to the disputed domain name. Fourthly, there is a specific mention of Equipmed on the website associated with the disputed domain name. All of this noted, the evidence before the Panel is still not conclusive that the disputed domain name results from the now expired distribution agreement and the Response adds nothing to this question.
If it were possible to establish on the balance of probabilities that the disputed domain name had been registered by or on behalf of Equipmed, following upon conclusion of the distribution agreement, and assuming that there was no further comment or explanation from the Respondent, this would in the Panel’s opinion have led directly to a finding of registration and use in bad faith. The distribution agreement makes it abundantly clear that Equipmed was not to adopt or use the Complainant’s TATT2AWAY trademark in any manner whatsoever without prior consent. There is no evidence that any such consent was sought or obtained and the Complainant denies that it ever authorized the registration of the disputed domain name by any party. In these circumstances, the registration and use of the disputed domain name would have been made knowingly in violation of an express prohibition by the Complainant. Although this is not provided for in any of the non-exhaustive bad faith grounds under paragraph 4(b) of the Policy, the Panel has discretion to find additional grounds in respect of bad faith registration and use and considers that the conduct of the Respondent and Equipmed would warrant a bad faith finding. It should be noted that the Complainant’s position on such prohibition has been consistent and is exemplified in the swift response by the Complainant to the application by Biosoft Pty Ltd for an Australian trademark in respect of the word mark TATT2AWAY. Having alerted Equipmed and learned that this action was being taken on Equipmed’s behalf, the Complainant took immediate steps to procure the withdrawal of the application under reference to the relevant prohibitions in the distribution agreement.
As noted above, however, no substantive link has been established between the Respondent and Equipmed in the evidence before the Panel despite the Complainant’s extensive researches and the fact that the potentially connected parties and entities which might have addressed this question have received notification of the Complaint. In the Panel’s view, the absence of such a link fortifies the Complainant’s case on registration and use in bad faith. As a minimum, the evidence supports a reasonable inference that the Respondent created the disputed domain name to take advantage of the Complainant’s goodwill embodied in its distinctive TATT2AWAY mark with a view to confusing Internet users that the products and services advertised on the website associated with the disputed domain name had some connection, affiliation with or endorsement by the Complainant. In particular, the Respondent’s use of the term “Head Office in Australia” on the contact details is likely to suggest to Internet users that the Respondent’s website is operated by an official Australian office of the Complainant when it is not.
Nothing of assistance can be derived from the Response on the subject of good or bad faith regarding the Respondent’s registration or use of the disputed domain name. This is unsurprising since it bears to come from an uninvolved and separate legal personality which claims no involvement in the matter under dispute. What is more, the Panel cannot give any credence to the assertion made on behalf of an entity named Equipmed International Pty Ltd in correspondence with the Complainant’s representatives that it was using a mark equivalent to the Complainant’s mark prior to entering into the distribution agreement. There is no evidence to that effect before the Panel.
It is clear to the Panel that there are a number of persons, whether connected to Equipmed or otherwise, who might have provided some elucidation regarding the background to registration and use of the disputed domain name. The Panel is satisfied that all such persons have received suitable notification of the Complaint and yet have chosen not to participate in this administrative proceeding, leading the Panel to make the reasonable inference that they have nothing to add and are unable to contradict the Complainant’s submissions and the relative evidence which it has produced.
In all of the above circumstances, the Panel finds that the disputed domain name was registered and is being used in bad faith and accordingly that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 name <tatt2awayaustralia.com> be transferred to the Complainant.
Andrew D. S. Lothian
Date: August 22, 2016