WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sentient Lasers, LLC v. Kamal Alhallak
Case No. D2020-2423
1. The Parties
The Complainant is Sentient Lasers, LLC, United States of America (“United States”), represented by Panitch Schwarze Belisario & Nadel, LLP, United States.
The Respondent is Kamal Alhallak, Canada.
2. The Domain Name and Registrar
The disputed domain name <lasersentient.com> is registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2020. On September 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 2020, 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.
On September 22, 2020, 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 September 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2020.
The Center appointed Assen Alexiev as the sole panelist in this matter on October 19, 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 was founded in 2009. It buys, sells, leases, and services cosmetic lasers to customers such as medical spas, aestheticians, dermatologists, and other doctors and medical professionals. The Complainant submits that it has used the brand SENTIENT LASERS since January 2016 in the United States and Canada in connection with retail store and online retail store services related to refurbished aesthetic, cosmetic, and medical lasers.
On October 21, 2019, the Complainant filed a United States trademark application for SENTIENT LASERS for services in International Classes 35, 36, and 37. According to publicly available information, the trademark was registered on September 22, 2020, with registration No. 6156787 with an indication of first use in commerce on January 1, 2016 (the “SENTIENT LASERS trademark”).
The Complainant maintains its official website at the domain name <sentientlasers.com>, registered on October 12, 2009.
The disputed domain name was registered on February 19, 2020. At the time of filing the Complaint, it resolved to a website criticizing the Complainant’s services and advertising the Respondent’s business.
5. Parties’ Contentions
The Complainant submits that it has enjoyed significant financial and reputational success with its business and the SENTIENT LASERS trademark has become a distinctive identifier that customers associate with the Complainant’s services. The Complainant states that in 2019 it sold a pre-owned aesthetic laser to the Respondent. After the expiration of the warranty period, the Respondent complained about the condition of certain parts of the delivered product, and the matter remained unresolved although the Complainant made efforts to satisfy the complaints of the Respondent. The Respondent then began to criticize the Complainant in his personal blog and then on the website at the disputed domain name.
The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s SENTIENT LASERS trademark, as it contains in transposed order the words “laser” and “sentient”, which appear in the Complainant’s trademark.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name, as the Respondent has not been authorized to use the SENTIENT LASERS trademark and is not known by the disputed domain name. According to the Complainant, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but uses it to tarnish the Complainant’s reputation and disrupt the Complainant’s business. The Complainant submits that the website at the disputed domain name contains misrepresentations and biased and unfounded negative information about the Complainant while advertising and promoting the Respondent’s own business.
The Complainant contends that the disputed domain name was registered and is being used in bad faith, as it was registered primarily to cause customer confusion and disrupt and tarnish the Complainant’s business and goodwill, while also promoting the Respondent’s own business and attracting customers to the Respondent’s own website. The Complainant claims to have sustained commercial injuries and lost customers as a direct result from the Respondent’s activities.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(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.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”.
The Respondent has however not submitted a Response and has thus not disputed the Complainant’s statements and evidence in this proceeding.
A. Identical or Confusingly Similar
At the time of filing of the Complaint, the Complainant’s trademark application for SENTIENT LASERS was only published for opposition and had not been granted. This is admitted in the Complaint. As discussed in Mark C. Spicher v. Frogi Design, s.r.o. / The Artwork Factory, s.r.o., WIPO Case No. D2015-0606, the preponderant view of panels under the Policy is that until a trademark application proceeds to grant, it does not constitute a trademark in which a complainant has rights for the purposes of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.4. Had this situation remained unchanged at the time of issuance of the present decision, it would have led to a finding that the Complainant has not established that it has standing for the purposes of the Policy (noting also that the Complainant has neither pleaded nor submitted evidence of the existence of unregistered trademark rights in the sign SENTIENT LASERS). As discussed in section 4.8 of the WIPO Overview 3.0, in view of the general powers of a panel under paragraphs 10 and 12 of the Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision, which may include accessing trademark registration databases. The Panel therefore accessed the Trademark Electronic Search System of the United States Patent and Trademark Office, and verified that the Complainant’s SENTIENT LASERS trademark was registered on September 22, 2020, which coincided with the day on which the present proceeding formally commenced. Taking this additional information into account, the Panel reached the conclusion that the Complainant has trademark rights in the SENTIENT LASERS trademark for the purposes of the Policy and has standing to file the Complaint.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD of the disputed domain name.
The relevant element of the disputed domain name is therefore the sequence “lasersentient”, which incorporates the elements of the SENTIENT LASERS trademark in reverse order, the only differences being the omission of the plural “s” from the “lasers” element of the trademark and the lack of an interval between the two words in the disputed domain name. These differences between the disputed domain name and the SENTIENT LASERS trademark have limited effect and the latter remains easily recognizable in the disputed domain name.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the SENTIENT LASERS trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Complainant has not authorized the Respondent to use the SENTIENT LASERS trademark and that the disputed domain name does not reflect the Respondent’s name. The Complainant points out that the Parties have had prior dealings, which resulted in a yet-unsettled dispute between them, and that the Respondent uses the disputed domain name for a website that criticizes the Complainant and advertises the services of the Respondent. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not disputed the above statements of the Complainant. It has not alleged that it has rights or legitimate interests in the disputed domain name and has not provided any legitimate reason for the choice of the disputed domain name which does not resemble the Respondent’s name but is confusingly similar to the Complainant’s SENTIENT LASERS trademark, and for the use of the disputed domain name in connection with a website that criticizes the Complainant but also advertises the services of the Respondent. The Respondent may or may not have reasons to complain about the Complainant and its services on the Internet (this is beyond the limited scope of the present decision), but the right of free speech does not extend to the registration of domain names confusingly similar to trademarks of others and their commercial use for the advertising of the registrant’s own business. See section 2.6 of the WIPO Overview 3.0. The Respondent’s conduct therefore does not appear as a legitimate activity that may give rise to rights or legitimate interests of the Respondent in the disputed domain name.
In view of the above, and in the absence of any denial by the Respondent or evidence to the contrary, the Panel finds that the Respondent has failed to rebut the prima facie case made by the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(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 website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel notes that the SENTIENT LASERS trademark was registered on September 22, 2020, while the disputed domain name was registered earlier - on February 19, 2020. As discussed in section 3.8 of the WIPO Overview 3.0, where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent. However, as an exception to this general proposition, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.
The SENTIENT LASERS trademark was filed on October 21, 2019, and indicates that its first use in commerce was on January 1, 2016. The Complainant submits that it has consistently used the designation SENTIENT LASERS since 2016. This information has not been denied by the Respondent and the case file does not contain any conflicting evidence, so it can be accepted that the Complainant has started using the SENTIENT LASERS three years before the registration of the disputed domain name.
The disputed domain name is confusingly similar to the SENTIENT LASERS trademark and has been used for a website criticizing the Complainant and containing citations from email correspondence between the Parties, alongside advertisements of the Respondent’s services. This is sufficient for the Panel to accept that the Respondent was well aware of the Complainant and has registered the disputed domain name with the Complainant and its SENTIENT LASERS brand in mind. The confusing similarity between the SENTIENT LASERS and the disputed domain name may lead to a situation where Internet visitors are attracted to the disputed domain name and are then be exposed to content criticizing the Complainant and advertising of the Respondent’s services. The Respondent has not provided any explanation as to why it has chosen and registered such a specific domain name that does not appear to refer to anything but the Complainant’s trademark, and why its use of the disputed domain name should be regarded as legitimate.
In view of this and in the lack of any evidence to the contrary, the Panel finds that the circumstances of this case indicate that it is more likely than not that the Respondent has registered the disputed domain name in an attempt to unfairly capitalize on the Complainant’s filed but yet unregistered SENTIENT LASERS trademark by attracting for commercial gain Internet users to the website at the disputed domain name and to the services offered by the Respondent.
Therefore, the Panel finds that the disputed domain name was registered and has been 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 <lasersentient.com> be transferred to the Complainant.
Date: October 29, 2020