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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LPG Systems SA v. Fiona Selby, Fees Neuropathy Treatments

Case No. D2021-1665

1. The Parties

The Complainant is LPG Systems SA, France, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Fiona Selby, Fees Neuropathy Treatments, Australia.

2. The Domain Name and Registrar

The disputed domain name <endermologieaussie.com> (the “Disputed Domain Name”) is registered with Wix.com Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2021. On May 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 31, 2021, 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 June 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2021.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on August 6, 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 an unsolicited email from the Respondent on August 7, 2021 claiming that the Respondent has reported the Center to the “Australian online fraud investigators”.

4. Factual Background

The Complainant is a privately held company with more than 30 years of experience in the health, beauty and wellness industries. Founded in 1986, the Complainant specialises in designing and producing professional machines for cellular stimulation and connective tissue treatment purposes using patented technology. The Complainant has built an international presence for its business, and has been selling its products in Australia through local distributors since 1998. The Complainant maintains a strong Internet presence through its website at “www.endermologie.com”.

The Complainant is the owner of numerous trade mark registrations for the ENDERMOLOGIE mark in various jurisdictions, including, inter alia, the ENDERMOLOGIE trade mark (Reg. No. 746806) registered in Australia on October 21, 1997 and the ENDERMOLOGIE trade mark (Reg. No. 95576733) registered in France on June 15, 1995.

The Disputed Domain Name was registered by the Respondent on November 4, 2020. The Disputed Domain Name resolves to an active webpage, on which the Respondent offers to provide various beauty services using the Complainant’s products.

5. Parties’ Contentions

A. Complainant

The Complainant’s primary contentions can be summarised as follows:

(a) The Disputed Domain Name incorporates the Complainant’s ENDERMOLOGIE trade mark in its entirety with the addition of the generic term “aussie”. The mere addition of this generic term does not negate the confusing similarity between the Disputed Domain Name and the Complainant’s trade mark, and therefore the Disputed Domain Name is confusingly similar to the Complainant’s trade mark.

(b) The Respondent is not sponsored by or affiliated with the Complainant in any way and the Complainant has not given permission to the Respondent to use the ENDERMOLOGIE trade mark. The Respondent is not commonly known by the Disputed Domain Name. The Respondent is not making a bona fide offering of goods or services, or making a legitimate, noncommercial fair use of the Disputed Domain Name. The Disputed Domain Name was registered in 2020, long after the Complainant had acquired its registered rights in the ENDERMOLOGIE trade mark and the domain name <endermologie.com>.

(c) The Respondent must have been aware of the Complainant’s rights in the ENDERMOLOGIE trade mark when registering the Disputed Domain Name. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s ENDERMOLOGIE trade mark as to the source, sponsorship, affiliation, or endorsement of the products and services offered on the website to which the Disputed Domain Name resolves. The Respondent’s use of the Disputed Domain Name causes a disruption to the Complainant’s business and the Respondent failed to respond to the Complainant’s cease-and-desist letters.

B. Respondent

The Respondent did not submit a formal Response to the Complainant’s contentions before the due date. On August 7, 2021, the Respondent sent a reply to the Center claiming that the Respondent has reported the Center to the “Australian online fraud investigators”.

The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith.

6.1. Supplemental Filing

On August 7, 2020, the Respondent sent an unsolicited submission to the Center, alleging that she had filed a report against the Center with the “Australian online fraud investigators”. Unsolicited supplemental filings by the parties are generally not allowed unless there are some exceptional circumstances or the panel is of the view that the filing contains materials crucial to the case and such information could not have possibly been included in the original complaint (see e.g. Fashion Design Council of India v. Ashish Pawaskar, Internet Wizards, WIPO Case No. D2015-2296).

It is clear that the Respondent’s unsolicited submission, which consists of a single phrase, contains no such crucial information or pertinent facts. Accordingly, the Panel sees no reason to take into consideration the Respondent’s unsolicited submission.

6.2. Substantive Issues

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the ENDERMOLOGIE trade mark, based on its various trade mark registrations such as the ENDERMOLOGIE trade mark (Reg. No. 746806) registered in Australia on October 21, 1997 and the ENDERMOLOGIE trade mark (Reg. No. 95576733) registered in France on June 15, 1995.

It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain extension (“.com” in this case) may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Disputed Domain Name incorporates the Complainant’s ENDERMOLOGIE trade mark in its entirety with the addition of the term “aussie”. UDRP panels have consistently found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. See section 1.8 of the WIPO Overview 3.0.

The mere addition of the suffix “aussie” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s ENDERMOLOGIE trade mark. The nature of such additional term may however bear on assessment of the second and third elements. See section 1.8 of the WIPO Overview 3.0.

As such, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s ENDERMOLOGIE trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.

The Panel finds that the Complainant has not authorised the Respondent to use the ENDERMOLOGIE trade mark, and there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the ENDERMOLOGIE trade mark. Accordingly, the Panel is of the view that a prima facie case has been established by the Complainant and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services;

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Disputed Domain Name resolves to a website offering beauty services and health and wellness programs which appear to be in direct competition with the Complainant’s business. The website to which the Disputed Domain Name resolves also displays the Complainant’s ENDERMOLOGIE trade mark and images of the Complainant’s products without the Complainant’s authorisation. Therefore, the Panel finds that the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name is not in connection with any bona fide offering of goods or services and cannot be regarded as legitimate noncommercial or fair use. Such use of the Disputed Domain Name also gives a false impression that the Disputed Domain Name is associated with and/or endorsed by the Complainant (and the Complainant’s commercial activities located in Australia) and is capable of misleading and diverting visitors, and tarnishing the Complainant’s ENDERMOLOGIE trade mark. See also section 2.8 of the WIPO Overview 3.0, and the decisions cited therein.

In addition, the Respondent has not provided any evidence to prove that she has any trade mark rights corresponding to the Disputed Domain Name, or that she and/or her business has become commonly known by the Disputed Domain Name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.

The Complainant’s ENDERMOLOGIE trade mark appears to be fairly well-known. A quick Internet search shows that the top search results returned for “ENDERMOLOGIE” are the Complainant’s official website and several third party websites making references to the Complainant’s products and services. Given that the Disputed Domain Name was registered by the Respondent long after the Complainant had registered its ENDERMOLOGIE trade mark and domain name <endermologie.com>, the Respondent must have been aware of the Complainant and its rights in the ENDERMOLOGIE trade mark when registering the Disputed Domain Name. The fact that the Disputed Domain Name incorporates the Complainant’s ENDERMOLOGIE trade mark in its entirety also creates a presumption of bad faith.

In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name was registered and is being used by the Respondent in bad faith:

(i) The Respondent failed to respond to the Complainant’s cease-and-desist letters and did not submit a response to the Complainant’s contentions, except for the above described email to the Center;
(ii) The Respondent has provided no evidence of any actual or contemplated good faith use by her of the Disputed Domain Name; and
(iii) It is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, as the Disputed Domain Name is almost identical to the Complainant’s ENDERMOLOGIE trade mark. The Respondent’s use of the Disputed Domain Name would likely mislead Internet users into believing the Disputed Domain Name is associated with and/or endorsed by the Complainant, thereby causing harm to the Complainant’s legitimate rights.

In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.

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 Name <endermologieaussie.com> be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Date: August 20, 2021

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