WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dexpo Intelectual Properties Services Ltd. v. 1&1 Internet Limited / Aysun Okudan
Case No. D2020-0438
1. The Parties
The Complainant is Dexpo Intelectual Properties Services Ltd., Cyprus, represented by Amouyal Tax & Law, France.
The Respondent is 1&1 Internet Limited, United Kingdom / Aysun Okudan, France.
2. The Domain Name and Registrar
The disputed domain name <cliniquedhi.com> is registered with 1&1 Internet SE (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2020. On February 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 27, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 28, 2020.
The Center verified that the Complaint, together with the amendment to 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 March 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2020. The Center received an email communication in French from the Respondent on March 4, 2020, in which he requested a French translation of the whole file. On March 5, 2020, the Center replied that the proceedings will be conducted in English, subject to the authority of the Panel, as the Registration Agreement was provided in English. It reminded Respondent that the due date for the submission of the Response was March 23, 2020. As the Center had not received a Response by March 23, 2020, and pursuant to paragraph 6 of the Rules, the Center notified the Parties on March 24, 2020, that it would proceed with panel appointment.
The Center appointed Thomas Legler as the sole panelist in this matter on March 30, 2020. 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 worldwide operator in the area of hair transplantation with franchisees in various countries.
It is the holder of the European Union figurative marks DHI DIRECT HAIR IMPLANTATION and DHI DIRECT HAIR RESTORATION, filed on August 8, 2011, in the classes 10, 16, 35, and 44 (Registration Nos. 010183788 and 010183796, respectively). In addition, it is the holder of the international figurative mark DHI INTERNATIONAL MEDICAL GROUP, filed on July 31, 2007, in the classes 10 and 44 (Registration No. 981333).
The Respondent runs a hair transplantation clinic in Istanbul (Turkey) and is the holder of the disputed domain name <cliniquedhi.com> registered on February 24, 2018.
5. Parties’ Contentions
According to the Complainant, the confusion created by the disputed domain name <cliniquedhi.com> consists of combining the generic term “clinical” with that of the “DHI” brand. The distinctive part of the disputed domain name is therefore identical to the trademark filed by the Complainant. Previous UDRP panels have not hesitated to transfer domain names when the mark is a predominant element or dominant of the domain names. The combination of the generic term “clinical” with that of the “DHI” brand makes consumers believe that they are being directed on a website of a clinic belonging to the group of franchisees. A previous UDRP panel found that the addition of a generic term to that of a trademark has no impact on imitation. The Complainant’s trademarks relate to medical products and services, the addition of the generic term “clinical” tends to increase the risk of confusion and increase similarity, as a previous UDRP panel was able to identify in a similar case. As an illustration of the reality of this argument, on December 23, 2019, a client of the Clinique DHI France Lutetia, a franchise clinic of the “DHI GLOBAL” group, contacted them for information based on the information collected on the website “www.cliniquedhi.com”, thinking that the clinic was affiliated with the group (Annex 8). Consequently, it is reasonable to assume that the public, by reading or hearing the disputed domain name <cliniquedhi.com>, is led to believe that the disputed domain name is owned or authorized by the Complainant. The Respondent violated paragraph 4(a)(i) of the Policy.
With regard to the second criteria, the Complainant sets out that it consented to the use of the trademark for domain names to several of its franchisees, for example, <dhi-france.fr>, <dhi-bruxelles.be>, <dhi.pt>, or <dhiegypt.com>. The Complainant and the Respondent are unrelated, and the Complainant has neither licensed nor otherwise consented to the Respondent’s use of the trademark. The Respondent uses the disputed domain name to offer competing products and services in a clinic in Istanbul, identical and/or similar to those protected by the brands, mainly hair transplants using the “DHI” method. This clinic offers prices ranging from EUR 2,150 to EUR 3,950, which is far below the prices between EUR 2,900 and EUR 11,900 practiced in the DHI clinics in London, Athens, Dubai, or Paris. Consequently, it would be difficult to believe that the Complainant authorized this competitor to use and register the domain name, which is confusing with the Complainant’s registered trademarks and franchise clinics. The Respondent cannot therefore reasonably claim to have rights to the trademarks, or a legitimate interest attached to them. As a result, the Respondent violated paragraph 4(a)(ii) of the Policy.
In relation to the third criteria, the Complainant indicates that the trademarks filed by the Complainant are pre-existing in relation to the disputed domain name. The Respondent cannot deny that he was aware of the marks since the website only offers hair transplants using the “DHI method”, a registered trademark and patented technology. Because of the reputation of the trademarks and their exploitation by the global network of franchises, the Respondent necessarily had in mind the latter when he registered the disputed domain name, with the aim of making an undue profit or reputation attached to the marks. A previous UDRP panel found that the Complainant’s trademark awareness creates a presumption of bad faith (prima facie), thus the burden of proof shall be to the Respondent. As a result, the Respondent violated paragraphs 4(iii) and 4(b) of the Policy.
In view of all these facts and arguments, the Complainant requests that the disputed domain name be cancelled.
The Respondent did not submit a Response.
6. Discussion and Findings
As regards the language of the proceedings, the Panel sees no reason to deviate from the rule provided in paragraph 11 of the Rules, according to which the language of the administrative proceeding shall be the language of the Registration Agreement. The Respondent, who requested on March 4, 2020, a French translation of the whole file, was informed accordingly on March 5, 2020. Subsequently, the Respondent did not react further and omitted to submit its Response by March 23, 2020, although he would have had sufficient time to seek assistance from a translation service.
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii) the disputed domain name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs the Panel to decide a complaint“on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
These elements are discussed in turn below.
A. Identical or Confusingly Similar
The Complainant is the holder of the figurative marks DHI DIRECT HAIR IMPLANTATION, DHI DIRECT HAIR RESTORATION, and DHI INTERNATIONAL MEDICAL GROUP. In all these figurative trademarks (logos), the element DHI is clearly and prominently identifiable. In addition, the Complainant holds since December 17, 2002, the domain name <dhiglobal.com>.
The disputed domain name consists of combining the dictionary term “clinique” (French term for “clinic”) with DHI, which identifies the Complainant’ marks, domain name, and its products.
The distinctive part in the disputed domain name <clinique-dhi.com> is “dhi”, which is identical to the DHI element in the trademarks filed by the Complainant, albeit in lower case letters. The addition of the dictionary term “clinique” does not change this overall impression. Furthermore and in accordance with an established practice, the addition of the generic Top-Level Domain (“gTLD”) “.com” in the disputed domain name does not prevent a confusing similarity with the Complainant’s trademarks.
Therefore, the disputed domain name registered by the Respondent has to be considered as confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate Interests
In order to assess rights or legitimate interests in a domain name, the panel must look for the following elements; (i) that the respondent uses or plans to use the domain name in connection with a bona fide offering of goods or services; (ii) the respondent has been commonly known by the domain name; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name.
The Complainant must establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of proof to the Respondent to come forward with evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel first notes that the Respondent has not filed a Response and did not take the opportunity to explain its approach and to argue for the possible legitimacy of its website.
With regard to the second element of the Policy, the Complainant indicates that the parties are unrelated to each other, and that the Complainant has neither licensed nor otherwise consented to the Respondent’s use of the trademark. The Complainant states that the Respondent is not one of its 75 franchised clinics performing hair transplants using the “DHI method”. Its franchisees use the trademark of the Complainant with the latter’s express consent, like <dhi-france.fr>, <dhi-bruxelles.be<, <dhi.pt>, etc. Consequently, the Complainant has not authorized the Respondent to use the disputed domain name.
In addition, there is no evidence in the file (like an excerpt from the Turkish trade register) showing that the Respondent is commonly known by that name. Quite to the contrary, the WhoIs information shows that the Respondent’s name is Aysun Okudan (domiciled in France).
Furthermore, there is no indication let alone an allegation of the Respondent that it is making a legitimate noncommercial or fair use of the disputed domain name.
Finally, the Panel wishes to examine whether the Respondent’s use of the disputed domain name can be considered as a bona fide offering. The Complainant’s argument that the Respondent is a competitor and offers prices ranging from EUR 2,150 to EUR 3,950, which would be far below the prices practiced in the DHI clinics in London, Athens, Dubai, and Paris, are in themselves not evidence of a bad faith offer. However, the Respondent’s website shows that it is openly referring to the “technique DHI” and the DHI trademark, obviously without authorization from the Complainant.
The same result is achieved when applying the “Oki Data test”, where panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or provide services related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Indeed, the following requirements under the “Oki Data test” are lacking:
(i) the respondent must actually be offering the goods or services at issue; in the present case, there is no evidence that the Respondent Aysun Okudan (domiciled in France) is offering the Complainant’s services of the hair transplant clinic in Turkey; and
(ii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; this is obviously not the case as there is no link between the parties, let alone an authorization from the Complainant to the Respondent to use the disputed domain name or the Complainant’s trademarks.
Accordingly, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
One of these circumstances is that the respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy).
Again, the Respondent did not submit any response to explain to the Panel his view regarding the third element of the Policy.
In addition, the Panel finds that by registering the disputed domain name incorporating the Complainant’s trademark and by running the underlying website for services identical to those offered by the Complainant and under express reference to the latter’s trademark (but without authorization), the Respondent has demonstrated his attempt to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website and of a product/service on his website (paragraph 4(b)(iv) of the Policy).
Consequently, the Panel is of the opinion that the disputed domain name has been registered and is being used 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 disputed domain name <cliniquedhi.com> be cancelled.
Date: April 2, 2020