WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SmileDirectClub, LLC v. Your Smile Direct Limited and Smidir Holdings Ltd

Case No. DIE2019-0007

1. The Parties

The Complainant is SmileDirectClub, LLC, United States of America (“United States”), represented by FRKelly, Ireland.

The Registrants are Your Smile Direct Limited, Ireland, and Smidir Holdings Ltd, Ireland.

2. The Domain Name and Registrar

The disputed domain name <smiledirectclub.ie> is registered with IE Domain Registry Limited (“IEDR”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2019, via email. On October 7, 2019, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On October 7, 2019, IEDR transmitted by email to the Center its verification response confirming that the Registrant is listed as the registrant and providing the contact details.

The Center verified that the Complaint and the amendment to the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceeding commenced on October 11, 2019. In accordance with the Rules, paragraph 5.1, the due date for the Response was November 8, 2019. The Registrant did not submit any Response. Accordingly, the Center notified the Registrant’s default on November 11, 2019.

The Center appointed Adam Taylor as the sole panelist in this matter on November 18, 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.

On November 18, 2019, the Registrant emailed the Center asking it to “forward the materials”. The Registrant stated that “that we were informed no action was to be taken yet on ou[r] side and so did not submit to defend at this point”. The Registrant added that “your follow communications between bodies has conflicted interactions to using terms of defence. The Smile Direct Club trademark as you are aware is being objected to as Your Smile Direct i[s] registered in Europe and pre-dates Smile Direct Clubs original US registration.”

The Center responded the same day setting out the steps which had been taken to notify the Registrant about the various stages of the proceeding. As a courtesy, the Center also resent the Notification of Complaint and Commencement of Administrative Proceeding communications, and attachments, via a second email for the Registrant’s consideration.

4. Factual Background

The Complainant started trading in the United States in 2014 or 2015. It supplies orthodontic teeth‑straightening products direct to patients under prescription. The purpose is to avoid patients having to make multiple surgery visits to dentist or orthodontists. Patients are given access to the Complainant’s “teledentistry platform”.

The Complainant originally traded under the name “SmileCareClub”. On March 29, 2016, it switched to the name “SmileDirectClub”.

The Complainant has supplied its products to over 750,000 people and has spent some USD 400 million on sales and marketing since 2016.

The Complainant operates websites at <smiledirectclub.com> and <smiledirectclub.co.uk>.

The Complainant also has a physical retail presence at over 300 locations in the United States and at 17 in the United Kingdom.

The Complainant owns a number of registered trade marks for SMILE DIRECT CLUB including:

- United States trademark no. 5848277, filed May 4, 2018, registered September 3, 2019, in class 5; and

- United Kingdom trade mark no. 3350426, filed November 2, 2018, registered February 8, 2019, in classes 5, 9, and 44.

The First Registrant was incorporated as Smidir Holdings Limited on November 12, 2014, and the Second Registrant as Your Smile Direct Limited on September 30, 2016. On or about February 27, 2018, each Registrant changed its name to that of the other, i.e., effectively swapping names. The Registrants are plainly connected and they are collectively referred to below as “the Registrant” unless it is necessary to refer to them separately.

The Registrant owns European Union trade mark no. 017603713 for the stylized words YOUR SMILE DIRECT, filed December 15, 2017, registered May 15, 2018, in classes 3 and 44.

The disputed domain name was registered on December 11, 2018.

The Registrant used the disputed domain name to redirect to a website at “www.yoursmiledirect.com”, which offers home teeth straightening products and services under the name “Your Smile Direct”.

5. Parties’ Contentions

A. Complainant

A summary of the Complainant’s contentions is as follows:

The Complainant has enjoyed rapid growth since its founding and is a leader in its sector. The Complainant spends a significant amount of time, money, and effort to advertise and promote its trade marks, which are famous amongst consumers in the United States, the United Kingdom and around the world. The Complainant has acquired unregistered trade mark rights in the term “Smile Direct Club”.

The disputed domain name is identical or misleadingly similar to the Complainant’s protected identifier.

The Registrant has no rights in law or legitimate interests in the disputed domain name.

The Registrant cannot demonstrate that it has made demonstrable preparations to use the disputed domain name for a good faith offering. The Registrant is not connected with the Complainant.

The disputed domain name does not correspond to the Registrant’s personal name or pseudonym.

The disputed domain name was registered or is being used in bad faith.

The Registrant registered the disputed domain name because it knew that that disputed domain name was confusingly similar to the Complainant’s mark.

It is inconceivable that the Registrant was unaware of the Complainant’s business under the name “Smile Direct Club” when registering the disputed domain name given that the Complainant pioneered the direct-to-consumer market for such services as well as in light of the Complainant’s fame in the United States, United Kingdom, and around the world.

The disputed domain name was registered for the purpose of sale to the Complainant. This is evidenced by the fact that the Registrant is not using the disputed domain name for a website but is redirecting it to a different website.

The disputed domain name constitutes a passive holding in bad faith.

The Registrant registered and is using the disputed domain name primarily to disrupt the Complainant’s business by redirecting it to a directly competing website. The Registrant has further set out to attract Internet users by creating a likelihood of confusion with the Complainant’s trade marks.

The disputed domain name has been used in a way which is likely to dilute the reputation of the Complainant’s trade mark.

The Registrant intentionally provided misleading or false information when applying to register the disputed domain name.

B. Registrant

The Registrant did not file a Response. It did, however, send an email to the Center after the Response due date, the contents of which are summarised in section 3 above.

6. Discussion and Findings

Under paragraph 1.1 of the IEDR Policy, the Complainant is required to prove that:

- the disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights;

- the Registrant has no rights in law or legitimate interests in respect of the disputed domain name; and

- the disputed domain name has been registered or is being used in bad faith.

A. Lack of Response

As mentioned in section 3 above, the Registrant has failed to file a Response. Instead, it emailed the Center on November 18, 2019, after the Response due date. While the contents of the email are not entirely clear, the Registrant appeared to claim that it had been told that no action needed to be taken and that therefore it did not intend to defend the case at that point. The Registrant also referred to the fact that it was opposing certain “Smile Direct Club” trade mark applications by the Complainant on the basis of the Registrant’s earlier European trade mark for “Your Smile Direct”.

The Center responded on November 18, 2019, reiterating the steps that had been taken to notify the Registrant about the various stages of the proceeding including the Response due date. The Center also re-sent the Notification of Complaint to the Registrant as it had requested. The Registrant has not replied to these communications.

Whether or not the Registrant initially confused this case with separate trade mark opposition proceedings, the Panel is satisfied that the option to file a Response was clearly conveyed to the Registrant, which not only failed to file a Response by the due date but also made no attempt to file a late Response following the Center’s clarificatory email mentioned above. The Panel will therefore proceed to a decision in the absence of a Response from the Registrant and will draw appropriate inferences accordingly.

B. Identical or Misleadingly Similar

Under paragraph 1.3.1 of the IEDR Policy, “protected identifiers” include “trade and service marks protected in the island of Ireland”.

The Complainant owns a United Kingdom registered trade mark for the words “SMILE DIRECT CLUB”. This trade mark has effect within Northern Ireland, which is part of “the island of Ireland”, and it therefore constitutes a protected identifier. It is irrelevant if there are other trade mark applications by the Complainant which are under opposition by the Registrant.

The disputed domain name is identical to this protected identifier disregarding the country code Top-Level Domain “.ie”, which is disregarded for the purpose of this comparison.

The Panel therefore finds that the Complainant has established the first element of paragraph 1.1 of the IEDR Policy.

C. Rights in Law or Legitimate Interests

At this point it is relevant to refer to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Although WIPO Overview 3.0 is directed to the Uniform Domain Name Dispute Resolution Policy (“UDRP”), panels in IEDR Policy cases have previously considered it appropriate to have regard to these principles except to the extent that the IEDR Policy diverges from the UDRP. See, e.g., MAPFRE Assistance Agency Ireland v. Jason Evans, Car Protect Warranties, Ltd., WIPO Case No. DIE2018-0002, and Mr. Rooter LLC v. David Doherty and Unbeatable Drain Cleaning Limited, WIPO Case No. DIE2018-0006.

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 name. If not, the complainant is deemed to have satisfied the second element.

Here, the Complainant has not licensed or otherwise authorised the Registrant to use its trade mark.

Paragraph 3.1 of the IEDR Policy gives examples of circumstances which, if proved, suffice to demonstrate that a registrant possesses rights or legitimate interests in the disputed domain name. Only paragraph 3.1.1 is relevant here, namely that “before being put on notice of the Complainant’s interests in the domain, it had made demonstrable good faith preparations to use the domain name in connection with a good faith offering of goods or services, or operation of a business”.

However, the Panel has concluded in section 6D below that the Respondent has used the disputed domain name to intentionally create confusion with the Complainant’s protected identifier. Such use of the disputed domain name could not be said to be bona fide.

The fact that the Registrant trades under, and possesses a registered trade mark for, the term “YourSmileDirect” does not constitute rights in law or legitimate interests in the disputed domain name for the purposes of the IEDR Policy because this term is materially different from the disputed domain name in the context of this case for the reasons explained in section 6D.

Furthermore, the Registrant has not appeared in this proceeding to rebut the Complainant’s assertions as to its lack of rights in law or legitimate interests.

The Panel therefore finds that the Complainant has established the second element of paragraph 1.1 of the IEDR Policy.

D. Registered or Used in Bad Faith

The Complainant acknowledges that the Registrant trades under the name “Your Smile Direct” and indeed the Complainant draws attention to the Registrant’s registered trade mark for this term, the legitimacy of which the Complainant does not question. The Panel therefore infers that the Complainant does not dispute in this proceeding the Registrant’s entitlement to use the term “Smile Direct” as part of the phrase “Your Smile Direct” and that the Complainant’s objection is instead directed to the variation of the name reflected in the disputed domain name which omits the word “Your” and adds “Club” – thereby corresponding exactly to the Complainant’s trade mark.

For the following reasons, based on the evidence before it, the Panel considers that on balance the Registrant selected the disputed domain name to illicitly target the Complainant’s trade mark rather than as a legitimate extension of the Registrant’s existing name “Your Smile Direct”.

While the Panel has not been told whether the apparent trade mark dispute between the parties started before the Registrant registered the disputed domain name in December 2018, it nonetheless seems inconceivable that the Registrant was unaware of the Complainant at that time. The Complainant is a major player in the same industry as the Registrant. Amongst other things, the Complainant operates some 17 physical outlets in the United Kingdom.

Furthermore, the Complainant has always used the word “Club” as part of its trading name, originally as “SmileCareClub” and, since March 2016, as “SmileDirectClub”. The term “Club” does not seem to be an obvious word to use in the context and so it is unlikely that the Registrant incorporated it into the disputed domain name other than in reference to the Complainant.

The Panel also notes that the Registrant has not filed a Response in this proceeding to deny knowledge of the Complainant at the relevant time or to explain the reason for its selection of the disputed domain name, in particular its use of the word “Club”.

In the Panel’s view, paragraph 2.1.4 of the IEDR Policy applies. By using the disputed domain name to redirect traffic to its website, the Registrant has intentionally attempted to attract Internet users to its website by creating confusion with the Complainant’s trade mark.

The Panel would add that the apparent opposition by the Registrant to certain trade mark applications by the Complainant for “Smile Direct Club” does not of itself assist the Registrant here. Those are separate proceedings of which the Panel has no knowledge. If any issues arose in those cases that either party considered relevant here, then it ought to have raised them in a pleading in this case.

For the above reasons, the Panel finds that the Complainant has established the third element of paragraph 1.1 of the IEDR Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, the Panel orders that the disputed domain name <smiledirectclub.ie> be transferred to the Complainant, subject to fulfilling the eligibility requirements specified by the IEDR in the corresponding registration policy (in accordance with paragraph 6.1 of the IEDR Policy).

Adam Taylor
Sole Panelist
Dated: December 6, 2019