WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PEMF Supply, LLC v. Domain Administrator, See PrivacyGuardian.org / Gregory Lewis, American Healthcare Foundation
Case No. D2019-0235
1. The Parties
Complainant is PEMF Supply, LLC of Millerstown, Pennsylvania, United States of America (“United States”), represented by Tucker Arensberg, P.C., United States.
Respondent is Domain Administrator, See PrivacyGuardian.org, of Phoenix, Arizona, United States / Gregory Lewis, American Healthcare Foundation, of Hallandale, Florida, United States.
2. The Domain Name and Registrar
The disputed domain name <omipemfsupply.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2019. On January 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 31, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 1, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 1, 2019.
The Center verified that the Complaint, together with the amended 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 Respondent of the Complaint, and the proceedings commenced on February 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 24, 2019. The Center received an email communication from Respondent on February 15, 2019. The Center provided a copy of this email communication to Complainant on February 18, 2019. No follow up communication or supplemental filing was made by Complainant. Pursuant to paragraph 6 of the Rules, the Center notified the Parties of the commencement of the panel appointment process on February 25, 2019.
The Center appointed John C McElwaine as the sole panelist in this matter on March 4, 2019. 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
Complainant, a limited liability company formed pursuant to the laws of the Commonwealth of Pennsylvania, is a seller of pulsed electromagnetic field therapy products, and offers those products throughout North America from its website located at “www.pemfsupply.com”.
On September 10, 2018, Respondent registered the Domain Name with the Registrar. Until notified of this proceeding, the Domain Name resolved to a website that purported to market and sell pulsed electromagnetic field products.
5. Parties’ Contentions
Complainant is a seller of pulsed electromagnetic field (PEMF) products and the registrant of the domain <pemfsupply.com>, marketed using the PEMF SUPPLY word mark and the following design mark:
Complainant claims to have used this mark and domain name since August 2016. Since this time, Complainant avers that it offers, markets, sells, and ships PEMF therapy products in the United States, Canada, and Mexico, via its website located at “www.pemfsupply.com”, which is available to Internet users throughout the world.
Complainant further alleges that Respondent is using the Domain Name to display a substantially identical reproduction of Complainant’s website. Complainant has not provided authorization for the creation of this fake webpage.
With respect to the first element of the Policy, Complainant contends that it owns common law trademark rights in PEMF SUPPLY by virtue of more than two years of use of this mark and substantial investment in advertising and marketing of PEMF SUPPLY. Complainant contends that the Domain Name incorporates Complainant’s PEMF SUPPLY mark identically and in its entirety, and therefore, asserts that the Domain Name infringes upon Complainant’s trademark rights.
With respect to the second element of the Policy, Complainant asserts that Respondent has no right or legitimate interest in the Domain Name because the Domain Name infringes upon Complainant’s PEMF SUPPLY trademark. Complainant points out that, since the Domain Name resolves to a website that is an unauthorized copy of Complainant’s genuine website, there is no bona fide offering of goods or services nor a legitimate noncommercial or fair use within the meaning of the Policy.
Similarly, with respect to the third element of the Policy, Complainant asserts that registration and use of the Domain Name was in bad faith, because Respondent’s intent was to confuse or deceive visitors the Domain Name by causing visitors to believe that the website located at the Domain Name is owned, operated or affiliated with Complainant and/or that the products offered and sold at the domain are Complainant’s products.
Respondent did not submit a formal response to the Complaint, but did provide an email to the Center prior to the response due date, which the Panel will consider as a response.
In particular, on February 15, 2019, in response to being provided a service copy of the Complaint in this matter, Respondent sent a reply email to the Center stating:
“As Case Manager for the OMIPEMFSUPPLY.com complaint, i wish to notify you, that i was not using the site. A programmer had put it up as a ‘test’ site. it was not functional by any means. It was never used, or promoted as a site.
I asked the programmer in Bangladesh to take it down, which he has. Also, i have no problems deleting the domain name. however, due to this complaint - i cannot delete it. See correspondence to and from the Domain registrar:
The following domain(s) cannot be deactivated as they are prevented from being updated/deactivated […]:
(11:02:11 AM) NameSilo Admin: Yes, so it appears that your domain is engaged in a UDRP case so it cannot be deleted at this time. As per ICANN policy, we must cooperate and follow the process as required on UDRP cases. WIPO would have sent you an email with the details of this case.
please advise, next steps to conclude this complaint,
The Center provided a copy of this email communication to Complainant on February 18, 2019.
6. Discussion and Findings
Paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Having considered the Complaint, Respondent’s brief email response, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. In this matter, Complainant alleges to have unregistered or common law rights in PEMF SUPPLY. With respect to common law trademark rights, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3 states that “to establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services”.
It is well accepted that the first element of the Policy functions primarily as a standing requirement. The threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. Panel assessment of identity or confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark. To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element.
Here, Complainant uses the PEMF SUPPLY word mark and the following design mark:
Regarding the alleged PEMF SUPPLY word mark, the terms “PEMF supply” arguably are not inherently distinctive because the term “PEMF” is an acronym that evidence contained in Complainant’s Annexes demonstrates means “Pulsed Electromagnetic Field.” E.g., Annex 3, Instagram Page at p.1 and Annex 4 at p. 3. Likewise, the term “supply” means “to provide something necessary or desired to; furnish or equip”. See “www.ahdictionary.com/word/search.html?q=supplies”. In the context of Complainant’s online retail store services, PEMF SUPPLY indicates that Complainant provides, distributes or makes available PEMF therapy products. Complainant’s Annexes 3 and 4 show that Complainant offers such PEMF therapy products for sale. Therefore, “PEMF supply” is a construction of terms, which describes Complainant’s services and the PEMF products it distributes.
Although the Panel finds that the PEMF SUPPLY word mark is arguably descriptive, Complainant may still have limited unregistered trademark rights if acquired distinctiveness of the alleged mark can be proven for the purposes of the Policy. As stated in the WIPO Overview 3.0, section 1.3, “relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys”.
Complainant asserted that it began use of the mark PEMF SUPPLY in August 2016, which is two years and one month earlier than the registration by Respondent of the Domain Name on September 10, 2018, and two years and six months from the filing of this proceeding. Evidence submitted relating to the extent of use of this mark was printouts of Complainant’s website and portions of its Twitter account (476 followers), Facebook page and Instagram (1,048 followers) account. Complainant’s Complaint, regarding PEMF SUPPLY is not without evidence relevant to a determination of acquired distinctiveness.
Importantly, Complainant asserts in its Complaint that the copying of its website was an effort to intentionally target and trade off the goodwill of Complainant’s alleged PEMF SUPPLY mark. The fact that Complainant’s website was intentionally copied provides evidence that the PEMF SUPPLY mark must have secondary meaning for purposes of the Policy. See WIPO Overview 3.0, Section 1.3 (“The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier”). Panels have held that a deliberate intent to trade on another’s mark may be considered evidence of secondary meaning Fort Lee Chamber of Commerce v. Carmine A. DeMarco, WIPO Case No. D2002-0291 (citing cases). Here, Respondent’s targeting of Complainant’s mark went so far as copying Complainant’s design verbatim twice in the website at the Domain Name. The website is an undeniable reproduction differing only with respect to language used to describe products. Lastly, Respondent’s only response concerning the copied website was that it had instructed its programmer to take the website down, thereby demonstrating control over the infringing content and the website. Therefore, in light of the use of the PEMF SUPPLY mark that was submitted in this proceeding, the targeting of Complainant by Respondent is sufficient to establish Complainant has limited unregistered trademark rights in the PEMF SUPPLY mark for the purposes of the Policy. Greenspring Associates, Inc. v. Lisa Knowles, Victoria capital pty, WIPO Case No. D2019-0265.
Additionally, the Domain Name is virtually identical to the word mark PEMF SUPPLY, but for the addition of the letters “omi”. The addition of the letters “omi” does not prevent a finding of confusing similarity between the Domain Name and the PEMF SUPPLY mark, which is wholly encompassed in the Domain Name. Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s PEMF SUPPLY mark in which Complainant has valid unregistered trademark rights for purposes of the Policy. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy
B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant asserts that Respondent is not a licensee or affiliate of Complainant and Respondent is not authorized to use the PEMF SUPPLY mark. Although properly notified by the Center, Respondent failed to submit any substantive response justifying its use of the Domain Name and the copying of Complainant’s website. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of a domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Complainant has made a prima facie showing on this element, at which point the burden shifts to Respondent to present evidence that it has some rights or legitimate interests in the Domain Name. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
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.”
With respect to Complainant’s contention that Respondent is not commonly known by the Domain Name, the Panel notes that the WhoIs information lists Respondent as Gregory Lewis, American Healthcare Foundation. See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049 (“the Panel notes that the Respondent’s name is ‘Bestinfo’ and that it can therefore not be ‘commonly known by the Domain Name”).
Complainant asserts that the Domain Name resolves to a website that is a virtual identical copy of Complainant’s website and that this website is either being operated as a counterfeit online service or is being used to unlawfully collect information from unwitting consumers. Respondent has not submitted any response to rebut these allegations other than agreeing to take its website down and stating that it registered the Domain Name for a “test” site. The Panel finds that the use of the Domain Name to divert Internet traffic to an infringing webpage is not a bona fide offering of goods or services. Respondent does not explain what Respondent was trying to test, nor why did Respondent include Complainant’s PEMF SUPPLY mark twice. See Chicago Mercantile Exchange Inc., CME Group Inc. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Nikolay Korobeynikov, WIPO Case No. D2016-0654 (finding no legitimate interest in a website resolving from the disputed domain name, which mirrored, and purported to be, the website of “CME Group” and which provided information relating to the trading of futures and options).
Lastly, Respondent’s use of the Domain Name is not noncommercial or fair use under paragraph 4(c)(iii) of the Policy, given that Respondent is a competing health care business and had merely set up a mirrored website. Such activity does not amount to a fan site, criticism, or other activity that may be considered noncommercial or fair. See, e.g., Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.
Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. For all these reasons, the Panel finds that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Here, Respondent registered the Domain Name that is confusingly similar to Complainant’s mark to divert Internet traffic to a website that is either infringing or perpetrating a scam. Complainant’s PEMF SUPPLY mark was intentionally chosen when the Domain Name was registered to pray on the public seeking to find Complainant. In light of the copied content, there could be no other legitimate explanation except that Respondent intentionally registered the Domain Name with the Complainant in mind and for the aforementioned purpose. Such activity constitutes a disruption of Complainant’s business and also establishes bad faith registration and use pursuant to paragraph 4(b)(iii) of the Policy.
In addition, paragraph 4(b)(iv) of the Policy specifies that bad faith exists where a respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. Respondent’s use of the Domain Name, the identical content and Complainant’s PEMF SUPPLY mark and logo is likely to cause consumer confusion. Therefore, bad faith use of the Domain Name has been established. See Dylos Corporation v. Yang, WIPO Case No. D2015-1959 (finding bad faith registration and use where the website the disputed domain name resolved to mirrored the complainant’s website suggesting a desire to make commercial gain from the use of the disputed domain name and/or to defraud consumers by obtaining their credit card information); Vivid Seats Limited v. Domain Administrator, Domains by Proxy, LLC / Peter Smith, WIPO Case No. D2016-1125.
For this reason, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <omipemfsupply.com> be transferred to Complainant.
John C. McElwaine
Date: April 1, 2019