WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Black Tie Medical, Inc. dba Tulip Medical Products v. Privacyguardian.org, NAMESILO, LLC / waqas akram, INTERNATIONAL TULIP MEDICAL and DYNADOT, LLC, and Bilal Akram, International Tulip Medical, and Mohsin Mubarak, Itco.Pk, Bilal Akram, Imran Safdar Ali, and Bilal Ahmed, International Tulip Medical

Case No. D2021-0674

1. The Parties

The Complainant is Black Tie Medical, Inc. dba Tulip Medical Products, United States of America (“United States”), represented by Robert W. Hicks & Associates, United States.

The Respondent is Privacyguardian.org, NAMESILO, LLC, United States / waqas akram, INTERNATIONAL TULIP MEDICAL, Thailand, and DYNADOT, LLC, United States, and Bilal Akram, International Tulip Medical, Pakistan, and Mohsin Mubarak, Itco.Pk, Bilal Akram, Imran Safdar Ali, Japan, and Bilal Ahmed, International Tulip Medical, Pakistan.

2. The Domain Names and Registrars

The disputed domain name <tulipmedicalonline.com> is registered with NameSilo, LLC (the “Registrar”). The disputed domain name <tulipmedicals.co> is registered with Dynadot, LLC (the “Registrar”). The disputed domain names <tulipmedical.org>, <tulipmedicals.info>, <tulipmedicals.net>, <tulipmedicalusa.com>, <tulipmedicalus.com>, <tulipmedicalus.info>, <tulipmedicalus.net>, and <tulipsmedical.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2021. On March 5, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On March 5 and 8, 2021, the Registrars transmitted by email to the Center its verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 30, 2021, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Center received an email communication from the Respondent on March 31, 2021. The Complainant filed an amended Complaint on April 9, 2021.

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 the Respondent of the Complaint, and the proceedings commenced on April 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2021. The Center received email communications from the Respondent on April 12 and May 4, 2021.

The Center appointed Adam Taylor as the sole panelist in this matter on May 14, 2021. 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.

The Center received a further email communication from the Respondent on May 15, 2021.

4. Factual Background

The Complainant has traded as “Tulip Medical Products” since 1987. It manufactures and sells a range of surgical instruments primarily, in the field of cosmetic surgery.

The Complainant owns a United States trade mark No. 2499251 for TULIP, registered on October 23, 2001, in class 10.

The Complainant’s main website is located at “www.tulipmedical.com”.

As explained in section 6A below, the Panel has concluded that the various parties listed above as the Respondents are all related. They are collectively referred to below as “the Respondent” unless it is necessary to refer to them separately.

The Respondent registered the disputed domain name <tulipmedicalonline.com> on May 19, 2018.

On August 10, 2020, the panel in a previous UDRP case involving the same parties, found that the Respondent had registered and used the domain name <tulipmedicals.com> in bad faith and ordered its transfer to the Complainant. See Black Tie Medical Inc. v. PrivacyGuardian.org / ITCO.PK, Mohsin Mubarak, WIPO Case No. D2020-1335 (“Case 1”).

On September 3, 2020, the Respondent registered the disputed domain name <tulipmedicals.co>.

On September 5, 2020, the Respondent registered the following disputed domain names: <tulipmedical.org>, <tulipmedicals.info>, <tulipmedicals.net>, <tulipmedicalusa.com>, <tulipmedicalus.com>, <tulipmedicalus.info>, <tulipmedicalus.net>, and <tulipsmedical.com>.

The Respondent has used the disputed domain names <tulipmedicalonline.com> and <tulipmedicals.co> for websites that are branded with the Complainant’s “Tulip Medical” logo, and which substantially copy the look and feel of the Complainant’s site. The websites purport to offer the Complainant’s products for sale, using copies of the Complainant’s product photos and descriptions.

The Respondent has redirected <tulipmedicalus.com> to the website at <tulipmedicals.co> and has redirected <tulipsmedical.com> to <tulipmedicalonline.com>.

The disputed domain names, <tulipmedical.org>, <tulipmedicals.info>, <tulipmedicals.net>, <tulipmedicalusa.com>, <tulipmedicalus.info>, and <tulipmedicalus.net> (“the Parked Domains”), have been used for Registrar parking pages with pay-per-click (“PPC”) links to websites offering medical and dental supplies and related goods and services.

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions.

The disputed domain names are identical or confusingly similar to the Complainant’s trade mark, which the Respondent has infringed.

The Respondent lacks rights or legitimate interests in the disputed domain names, which are variations or misspellings of the Complainant’s name. The disputed domain names were registered in response to the adverse decision in Case 1 so as to enable the Respondent to continue its illegitimate businesses by impersonating the Complainant with a view to tricking the Complainant’s customers into sending money to the Respondent for products that the Respondent does not supply.

The above conduct also constitutes registration and use of the disputed domain names in bad faith.

B. Respondent

The following is a summary of the Respondent’s contentions.

The Respondent includes, or is connected, with two legitimate companies called “International Tulip Medical” and “Tulip Medical Pakistan” that were registered in Pakistan more than four years ago. The companies have always paid their taxes. They are ISO, CE and GMP-certified and their products are registered in Pakistan.

The Respondent has produced the following documents:

- a “Taxpayer Registration Certificate” for Bilal Akram, with International Tulip Medical given as a “Business Name” dated January 9, 2015;
- a Shalkot Chamber of Commerce “Membership Certificate” for International Tulip Medical, as well as a membership card for Bilal Akram of International Tulip Medical, both dated March 31, 2018;
- an ISO 9001:2015 certificate for International Tulip Medical in connection with the manufacture of surgical and dental instruments dated September 18, 2018; and
- an ISO 13485:2016 certificate for International Tulip Medical in connection with the manufacture of non-active surgical and dental instruments also dated September 18, 2018.

The Respondent wants to know which domain name it is legitimate for the Respondent to use.

The Respondent does not understand why the Complainant has a problem with the Respondent or its products.

6. Discussion and Findings

Under the Policy, the Complainant is required to prove on the balance of probabilities that:

- the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
- the disputed domain names have been registered and are being used in bad faith.

A. Consolidation

The principles governing the question of whether a complaint may be brought against multiple respondents are set out in section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel is satisfied that the disputed domain names are subject to common control, given the overlap of contact details and registration dates and the lack of any denial by the Respondent, and that, in the circumstances of this case, consolidation is fair and equitable to all parties, and also procedurally efficient.

B. Informal Response

The Response is in the form of two emails to the Center, which do not comply with the formal requirements set out in paragraph 5 of the Rules. For example, there is no statement of truth. The Panel has nonetheless decided to admit the Response in accordance with its powers under paragraph 10(d) of the Rules but to bear in mind the Response’s non-compliance with the Rules, including in particular the absence of a statement of truth, when weighing up the Respondent’s assertions in this case.

C. Identical or Confusingly Similar

The Complainant has established rights in the mark TULIP by virtue of its registered trade mark .

Section 1.8 of WIPO Overview 3.0 makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive, geographical, meaningless, or otherwise, would not prevent a finding of confusing similarity under the first element.

Here, the Complainant’s distinctive trade mark is readily recognisable within each of the disputed domain names and, accordingly, the addition of the terms “online”, “medical”, “medicals”, “US” and/or “USA” is insufficient to avert a finding of confusing similarity. So is addition of the letter “s” to convert “tulip” into the plural.

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.

D. Rights or Legitimate Interests

As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain names. If not, the complainant is deemed to have satisfied the second element.

Here, the Complainant has not licensed or otherwise authorised the Respondent to use Complainant’s trade mark.

Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.

As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used all of the disputed domain names to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide.

Furthermore, the use of the Parked Domains for parking pages with links to goods or services that compete with, or are at least related to, those supplied by the Complainant, could not of itself confer rights or legitimate interests. See section 2.9 of WIPO Overview 3.0, which states that use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalise on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.

As to paragraph 4(c)(ii) of the Policy, the Respondent has produced a number of documents relating to “International Tulip Medical” (see section 5B above), which is apparently a trading name rather than a separate corporate entity. The earliest such document is dated 2015.

The Panel does not know whether these documents are authentic. However, even if so, in the Panel’s view they are not sufficient to establish legitimate interests on the part of the Respondent because the circumstances explained in section 6E below indicate that the name “International Tulip Medical” was adopted illegitimately for the purpose of carrying out a campaign of impersonation against the Complainant, which has been trading under its highly distinctive name since well before 2015.

Nor is there any evidence that paragraph 4(c)(iii) of the Policy applies in the circumstances of this case.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.

E. Registered and Used in Bad Faith

The Panel has little difficulty in concluding that the disputed domain names were registered and are being used in bad faith.

Nine of the ten disputed domain names were registered in the immediate aftermath of Case 1, where the Respondent was found to have registered and used a similar domain name in bad faith.

All of the disputed domain names were used either for websites which set out to impersonate the Complainant, including by use of the Complainant’s logo and the design and content of the Complainant’s own websites, or for parking pages with PPC links relating to goods and services similar to those of the Complainant.

Despite its email communications, the Respondent has not sought to explain its conduct.

In the Panel’s view, the foregoing constitutes registration and use in bad faith, irrespective of whether the purpose of the Respondent’s impersonation was to resell the Complainant’s products, or to sell counterfeit versions, or to take payment from customers but not send any products (as the Complainant asserts), or otherwise.

As regards the Parked Domains, the Panel would add that section 3.5 of WIPO Overview 3.0 makes clear that respondents cannot disclaim responsibility for “automatically” generated pay-per-click links on their websites and that neither the fact that such links are generated by a third party such as a registrar, nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.

The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain names in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.

7. Decision

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, <tulipmedicalonline.com>, <tulipmedical.org>, <tulipmedicals.co>, <tulipmedicals.info>, <tulipmedicals.net>, <tulipmedicalusa.com>, <tulipmedicalus.com>, <tulipmedicalus.info>, <tulipmedicalus.net>, and <tulipsmedical.com> be transferred to the Complainant.

Adam Taylor
Sole Panelist
Date: May 28, 2021