Complainant is Zeltiq Aesthetics, Inc. of Pleasanton, California, United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is Patricia Gomez of Box Elder, South Dakota, United States.
The disputed domain name <coolsculptingcards.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2018. On May 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 24, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 19, 2018. On June 21, 2018, the Center sent a further communication to Respondent; however, no reply was received from Respondent. The Center sent a communication to the Parties indicating commencement of the Panel appointment process on June 27, 2018.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on July 9, 2018. 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.
Complainant is a wholly-owned subsidiary of Allergan plc, a leading global pharmaceutical company headquartered in Dublin, Ireland. Complainant, located in California, developed a proprietary controlled-cooling fat reducing treatment known as “CoolSculpting”. The CoolSculpting treatment is a noninvasive body sculpting procedure based on cryolipolysis, a method of controlled cold exposure that causes an inflammatory response in fat cells, resulting in gradual cell death. Complainant received its first clearance from the US Food and Drug Administration in 2010, Complainant holds more than 14 patents related to the CoolSculpting process and device in the United States and abroad and currently has the largest market share for non-invasive fat reduction procedures. The CoolSculpting procedure is available in more than 60 countries worldwide.
Complainant is also the owner of trademark registrations for the COOLSCULPTING mark in various jurisdictions including in the United States, some relevant registrations of which are shown in the table below:
TRADEMARK | JURISDICTION/ TM OFFICE | REGISTRATION NUMBER | REGISTRATION DATE | IC |
|
COOLSCULPTING |
US |
3921045 |
February 15, 2011 |
44 |
|
COOLSCULPTING |
US |
3957850 |
May 10, 2011 |
10 |
|
COOLSCULPTING |
CA |
TMA818714 |
February 29, 2012 |
10, 44 |
|
COOLSCULPTING |
EU |
009485707 |
June 22, 2011 |
10, 44 |
Complainant and its CoolSculpting brand have an established presence on the Internet. According to
“www.similarweb.com”, Complainant’s website at its primary domain name, <coolsculpting.com>, had more than 375,000 total visits in March 2018 and ranks 27th in the weight loss category. Complainant’s <coolsculpting.com> domain name was registered on March 13, 2008. Further, “www.alexa.com” ranks Complainant’s primary website at 33,746 in the United States, with a global rank of 144,695. The CoolSculpting brand has a large social media presence with over 170,000 likes on Facebook, more than 18,000 followers on Instagram, and 13,000 Twitter followers.
The Domain Name was registered by Respondent on November 22, 2017. Currently the disputed domain name resolves to a website that appears to offer goods and services related to Complainant.
(i) Identical or confusingly similar.
Complainant states that as the owner of trademark registrations across various jurisdictions including in the United States, this demonstrates that it has spent considerable time and money protecting its intellectual property rights. By virtue of its trademark registrations, Complainant is the owner of the
COOLSCULPTING trademarks.
Complainant asserts that when comparing the Domain Name to Complainant’s COOLSCULPTING mark, the relevant comparison to be made is between only the second-level portion of the Domain Name and Complainant’s mark. In creating the Domain Name, Respondent has added the generic, descriptive term “cards” to Complainant’s COOLSCULPTING trademark, thereby making the Domain Name confusingly similar to Complainant’s mark. Complainant contends that it is well established that the addition of other terms to a recognizable trademark is insufficient to overcome a finding of confusing similarity pursuant to Policy, paragraph 4(a)(i).
Complainant further contends that Respondent’s use of the Domain Name also contributes to the confusion. Respondent is using the Domain Name to host a website selling custom wiring and software kits, which allows users of Complainant’s services to “trick” Complainant’s CoolSculpting machines into providing free treatments. This suggests that Respondent intended the Domain Name to be confusingly similar to Complainant’s trademark as a means of furthering consumer confusion and profiting from the Domain Name. Complainant urges that although the content on a website linked to a disputed domain name is usually disregarded under the first element of the Policy, UDRP panels have taken note of website content to confirm confusing similarity where it appears prima facie that the respondent seeks to target a trademark through the disputed domain name. Accordingly, Respondent’s use of the Domain Name to resolve to a website selling custom wiring and software kits that allow Complainant’s customers to use expired treatment cards is further evidence that the Domain Name is confusingly similar to Complainant’s COOLSCULPTING trademark.
(ii) Rights or legitimate interests.
Complainant states that its registrations for the COOLSCULPTING trademark are prima facie evidence of the validity of the term COOLSCULPTING as a trademark, of Complainant’s ownership of this mark, and of Complainant’s exclusive right to use the mark in commerce on or in connection with the goods or services specified in the trademark registration certificates.
Complainant contends that Respondent is not commonly known by the Domain Name, which shows a lack of rights or legitimate interests under the Policy. The pertinent WhoIs information identifies the registrant of the Domain Name as “Patricia Gomez”, a name that does not resemble the Domain Name in any manner – thus, where no evidence, including the WhoIs record for the Domain Name, suggests that Respondent is commonly known by the Domain Name, then Respondent cannot be regarded as having acquired rights to or legitimate interests in the Domain Name within the meaning of paragraph 4(c)(ii). Furthermore, Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s COOLSCULPTING mark. Respondent is not an authorized dealer of Complainant’s products and has never had a business relationship with Complainant. In the absence of any license or permission from Complainant, no actual or contemplated bona fide or legitimate use of the Domain Name can reasonably be claimed.
Complainant also states that Respondent is making neither a bona fide offering of goods or services nor a legitimate, noncommercial fair use of the Domain Name. On the website available at the Domain Name,
Respondent offers and attempts to sell products that both compete with, and take unfair advantage of,
Complainant’s own products and services. Past UDRP panels have consistently held that selling competing goods, coupled with the unauthorized use of a complainant’s trademark in a confusingly similar domain name, does not qualify as a bona fide offering of goods or services under Policy, paragraph 4(c)(iii). As such, Respondent should be held to possess no legitimate rights or interests in the Domain Name.
(iii) Registered and used in bad faith.
Complainant states that it and its COOLSCULPTING trademarks are known internationally, with trademark registrations in numerous countries including the United States. Complainant has marketed and sold its goods and services using the COOLSCULPTING mark since 2010, seven years prior to Respondent’s registration of the Domain Name on November 22, 2017. Complainant highlights that Respondent’s registration of the Domain Name in November 2017 was also significantly after Complainant’s registration of its <coolsculpting.com> domain name on March 13, 2008. Complainant contends that by registering the Domain Name, which incorporates Complainant’s famous COOLSCULPTING trademark in its entirety and simply adds the generic, descriptive term “cards” to the end of the mark, Respondent created a domain name that is confusingly similar to Complainant’s trademark, as well as to its <coolsculpting.com> domain name. As such, Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. Complainant asserts that in light of the facts set forth in this Complaint, it is not possible to conceive of a plausible situation in which Respondent would have been unaware of Complainant’s brands at the time the Domain Name was registered. Stated differently, the COOLSCULPTING mark is so closely linked and associated with Complainant that Respondent’s use of this mark, or any minor variation, strongly implies bad faith. This view is reinforced because the Domain Name is being used to host a commercial website selling custom wiring and software kits that allows users of Complainant’s services to trick Complainant’s CoolSculpting machines into providing free treatments. It thus defies common sense to believe that Respondent coincidentally selected the Domain Name without any knowledge of Complainant and its COOLSCULPTING marks.
Further, by using the Domain Name in connection with a commercial website selling custom wiring and software kits that allow users of Complainant’s services to trick Complainant’s CoolSculpting machines into providing free treatments, Respondent is taking advantage of the fame and goodwill Complainant has developed in the COOLSCULPTING mark and brand to promote and sell products that not only compete with Complainant’s own offerings, but also undercut Complainant’s ability to profit from its intellectual property.
Complainant argues that the presence of a disclaimer on the Domain Name’s website makes it abundantly clear that Respondent knew of Complainant when registering and using the Domain Name, and that Respondent selected the Domain Name to intentionally confuse unsuspecting Internet users into visiting its website – in other words, Respondent acknowledges the likelihood of confusion with Complainant by voluntarily placing a disclaimer on the site. Complainant contends that Respondent has intentionally misappropriated Complainant’s trademark as a way of redirecting Internet users searching for Complainant to the Domain Name’s website, only to then offer a disclaimer and content unrelated to, and not approved by, Complainant. Complainant asserts that this sort of tactic – labeled “bait-and-switch” for its propensity to confuse Internet users into believing that they are visiting a complainant’s site only to discover that the domain name is completely unconnected to that complainant – has been held to be evidence of bad faith registration and use by previous UDRP panels.
Complainant also states that Respondent’s use of the Domain Name constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under Policy, paragraph 4(b)(iii), because Respondent’s Domain Name is confusingly similar to Complainant’s trademarks, and the website at the Domain Name is being used to host a commercial website selling custom wiring and software kits that allows users of Complainant’s services to trick Complainant’s CoolSculpting machines into providing free treatments. Such products are in direct competition with Complainant’s own offerings.
Complainant states that Respondent has refused to comply with Complainant’s attempts to resolve this dispute outside of this administrative proceeding, and asserts that past UDRP panels have held that failure to respond to a cease-and-desist letter may be considered a factor in finding bad faith registration and use of a domain name.
Respondent did not reply to Complainant’s contentions.
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
The Panel finds that Complainant has established rights in its COOLSCULPTING trademark, based on its trademark registrations and use of the mark in the United States and elsewhere.
Further, the Panel determines that the Domain Name is confusingly similar to the COOLSCULPTING mark, as Domain Name incorporates the mark in its entirety. Moreover, the addition of the term “cards” does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “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.”
Here, the Panel finds that Complainant has made out a prima facie case, while Respondent has failed to respond to the Complaint. The Panel finds that Complainant has not authorized Respondent to use its COOLSCULPTING trademark; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services – instead, the Domain Name is linked to a website that purports to sell custom wiring and software kits that bypass security controls on Complainant’s CoolSculpting machines, allowing Complainant’s customers to use expired treatment cards. In its cease-and-desist letter to Respondent (sent prior to the commencement of this case), Complainant through its counsel indicated that the bait-and-switch tactics used by Respondent raise potential health and safety issues, as they enable Respondent to sell products “that do not afford the same safety and quality control mechanisms that are present in authentic ZELTIQ CoolSculpting products”. Respondent’s use of the Domain Name in this manner does not give rise to any right or legitimate interest in the Domain Name.
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel determines that the Domain Name was registered and is being used in bad faith. First, based on the evidence, there is no doubt that Respondent was aware of Complainant and its COOLSCULPTING mark, and targeted that mark, when it registered the Domain Name. The Panel observes that Respondent registered the Domain Name, which incorporates Complainant’s COOLSCULPTING trademark in its entirety along with the word “cards”, and linked it to a website that purports to sell specialized kits to be used in conjunction with Complainant’s CoolSculpting machines, bypassing controls on those machines and thereby raising potential safety and quality control risks, while also undercutting Complainant’s business and profits. Given the fame of the COOLSCULPTING trademark and the fact that the Domain Name is so obviously connected with Complainant’s mark, the Panel finds the only logical conclusion is that Respondent targeted Complainant and its COOLSCULPTING mark when registering the Domain Name, and is using it with the intent to trade on the reputation of Complainant’s brand to attract Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s brand, for commercial gain. This demonstrates registration and use in bad faith. See e.g., Worldpay Limited v Surojit Manna, Worldpay, WIPO Case No. D2017-0160.
WIPO Overview 3.0, section 3.1.4, states that “[p]anels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use.” The Panel finds, based on the evidence presented, that all these criteria appear to have been satisfied in this case.
Finally, in this case where Respondent failed to submit a response, the Panel observes that Respondent also failed to respond to the cease and desist letter sent by Complainant’s attorney prior to the case, which had requested the voluntary transfer of the Domain Name. These circumstances, when considered in context with all of the other circumstances of this particular case, support the Panel’s finding of bad faith registration and use.
In conclusion, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <coolsculptingcards.com> be transferred to Complainant.
Christopher S. Gibson
Sole Panelist
Date: August 1, 2018