WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pinho Dental Pty Ltd as trustee for the Pinho Dental Trust v. Ace Digital Marketing Pty Ltd

Case No. DAU2021-0019

1. The Parties

The Complainant is Pinho Dental Pty Ltd as trustee for the Pinho Dental Trust, Australia, represented by Progressive Legal and Andrew Sykes, Australia.

The Respondent is Ace Digital Marketing Pty Ltd, Australia, internally represented, Australia.

2. The Domain Name and Registrar

The disputed domain name <toothimplantssydney.com.au> is registered with GoDaddy.com, LLC (“the Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2021. On the same day, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On the following day, 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 .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on May 6, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2021. The Respondent filed the Response with the Center on May 26, 2021.

The Center appointed Matthew Kennedy as the sole panelist in this matter on May 28, 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 Panel issued Administrative Panel Order No. 1 on May 31, 2021, in which it ordered the Parties to furnish within four days any evidence available to substantiate the Respondents’ claims regarding the time at which they registered the disputed domain name and at which point the registration of the disputed domain name may have been transferred between the Respondents. In the same Order, the Panel also requested the Registrar to provide, by the same date, any information it had on the creation and acquisition dates of the disputed domain name by the Respondents. On June 1, 2021, the Respondent sent an email communication to the Center in response to the Panel Order. The following day, the Complainant sent an email communication to the Center in response to the Panel Order.

4. Factual Background

The Complainant is Pinho Dental Pty Ltd as trustee for the Pinho Dental Trust. Its sole director is Dr. Paolo Pinho, a dental surgeon who specializes in oral surgery, including wisdom teeth removal and dental implants. The Complainant was registered as a company in February 2008 and provides dental services in Sydney and Melbourne. It operates various domain names and “brands”, including a website associated with the domain name <drpaolopinho.com.au>. In December 2015, the Complainant registered the domain name <toothimplantsydney.com.au> (containing the word “implant” in the singular), which it has used in connection with a website to promote its tooth implant services since at least March 2016. Archived screenshots provided by the Complainant show that, since at least May 2017, this website has displayed a logo containing an image of a tooth with a screw, the stylized words “Tooth Implant Sydney”, and the domain name <toothimplantsydney.com.au> (the “Tooth Implant Sydney logo”).

The Respondent Ace Digital Marketing Pty Ltd was registered as a company in April 2018. In the Response, it claims to be a digital marketing agency focusing on dental and medical digital marketing services. Its only online presence appears to be a Facebook page with little activity. Its website address listed on that page resolves to a parking page that displays Pay-Per-Click links.

A party initially named as co-respondent in the complaint, Digital Dental Surgery Sydney Pty Ltd (“DDSS”) was registered as a company in April 2014 and operates a dental clinic with a special focus on dental implant treatments. It also operates a website associated with the domain name <audentalimplantssydney.com.au>, where it provides information about itself and its services. The Respondent describes DDSS as its client.

The disputed domain name <toothimplantssydney.com.au> (containing the word “implants” in the plural) was registered on June 18, 2018. The disputed domain name registrant is Ace Digital Marketing Pty Ltd. The disputed domain name resolves to a website for DDSS, where DDSS provides information about itself and its services. The homepage displays a “DDSS Digital Dental Surgery Sydney” logo and an image of a tooth with a screw next to the words “Digital Tooth Implants in Sydney, Better, Faster, and Safer” with a button for Internet users to make a booking online.

Dr. Pinho formerly operated a dental practice on the premises of DDSS. From January 2020, officers and employees of DDSS and Ace Digital Marketing Pty Ltd requested ownership of a Google My Business landing page for “Digital Dental Implants Sydney” controlled by Dr. Pinho. By March 2020, DDSS and Dr. Pinho were corresponding via their solicitors regarding domain names and many other matters outside the scope of the auDRP. By letter dated March 19, 2020, DDSS gave Dr. Pinho notice to vacate its premises and alleged that the Complainant’s domain name <toothimplantsydney.com.au> had copied the disputed domain name, which it claimed to have created in January 2019. By letter dated March 31, 2020, Dr. Pinho denied the allegations, pointing out that the disputed domain name was registered later in time, and demanding that DDSS remove and deactivate the disputed domain name. By letter dated April 16, 2020, DDSS acknowledged a mistake regarding the time of registration of the Complainant’s domain name but denied having copied it and agreed to remove and permanently deactivate the disputed domain name. At the time of this Decision, the disputed domain name continues to resolve to a website for DDSS.

On December 17, 2020, the trustee for Pinho Dental Trust registered the business name “Tooth Implant Sydney” with the Australian Securities & Investments Commission. That business name registration remains in effect.

On January 18, 2021, the Complainant filed Australian trademark application number 2148328 for the Tooth Implant Sydney logo, specifying dental surgery and other services in class 44. At the time of this Decision, that trademark application has been accepted and is awaiting advertisement.

The Panel has no notice of any court proceedings between the Parties.

5. Parties’ Contentions

A. Complainant

The Complainant has common law rights in both the word mark TOOTH IMPLANT SYDNEY and the Tooth Implant Sydney logo mark (described in Section 4 above). The Complainant developed these marks to market its specialist services in providing tooth implants. The Complainant’s logo mark is also the subject of a pending Australian trademark application. The Complainant has been using both the word mark and its logo mark since the inauguration of its website associated with the domain name <toothimplantsydney.com.au> in 2015. The Complainant also registered the business name “Tooth Implant Sydney” in December 2020. The Complainant submits a report showing its revenue generated from the sale of dental services relating to tooth implants from December 2015 to March 2021. Within this period, the Complainant performed over 10,000 tooth implant-related procedures. The Complainant also submits analytics showing the number of visitors to its website associated with the domain name <toothimplantsydney.com.au> in 2018 and 2019, which was ranked on the first page of Google search results for each of the phrases “Tooth Implant Sydney” and “Tooth Implants Sydney” in March 2021. The disputed domain name is confusingly similar to the Complainant’s name and accepted trademark. It differs from TOOTH IMPLANT SYDNEY by the mere addition of one letter “s” in the middle of the name.

The Respondents have no rights or legitimate interests in respect of the disputed domain name. Neither Ace Digital Marketing Pty Ltd’s name, company website or social media page shows that it is known by the disputed domain name. The disputed domain name directs to a webpage promoting the Complainant’s direct competitor, DDSS, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. DDSS does not have a known name, trademark or business name that is the disputed domain name.

The disputed domain name was registered and is being used in bad faith. Ace Digital Marketing Pty Ltd’s conduct in directing the disputed domain name to a webpage promoting the Complainant’s direct competitor, DDSS, is clearly designed to disrupt the Complainant’s business. This applies whether the Ace Digital Marketing Pty Ltd was acting on its own initiative or at the direction of DDSS. Even if Ace Digital Marketing Pty Ltd was acting as a proxy for the wrongdoing and misleading promotion of DDSS’s business, this in itself is bad faith as it is facilitating confusion for commercial gain.

B. Respondent

Ace Digital Marketing Pty Ltd bought the disputed domain name legally, strictly due to the search engine optimization (“SEO”) search volume of the generic target keywords of which it is composed. This is a common SEO strategy adopted by many marketing agencies with the goal of being ranked by generic keywords that consumers look for in Google. The disputed domain name consists of generic words, namely "tooth", "implants", and "Sydney", not any brand name. The Complainant expressed interest in the disputed domain only after it was used by DDSS. The Complainant never asked to buy the disputed domain name from Ace Digital Marketing Pty Ltd; instead, it now demands that the disputed domain name be handed over for free. Ace Digital Marketing Pty Ltd strongly refutes the Complainant's allegation that the disputed domain name in question was either bought or used in bad faith.

6. Discussion and Findings

6.1. Proper Respondent

The Complaint initiated this proceeding against two respondents. The first named respondent is Ace Digital Marketing Pty Ltd, which is identified as the registrant of the disputed domain name in the Registrar’s WhoIs database. The second named respondent is DDSS because the Complainant has grounds to believe that DDSS directed the registration and use of the disputed domain name.

The Panel recalls that, under paragraph 1 of the auDRP Rules, the “Respondent means the holder of a domain name registration against which a complaint is initiated”. In the present case, the “holder” of the disputed domain name is Ace Digital Marketing Pty Ltd and the Complaint has been initiated against that company. Therefore, Ace Digital Marketing Pty Ltd is a proper respondent in this proceeding. See Clark Equipment Company v. AllJap Machinery Pty Ltd, WIPO Case No. DAU2011-0042.

On the other hand, DDSS is not the registrant of the disputed domain name; in fact, there is no evidence that it has ever been the registrant of the disputed domain name. The disputed domain name resolves to a website for DDSS and evidence of that use may be taken into account according to its relevance to the issues in dispute. However, DDSS is not a proper respondent in this proceeding.

Accordingly, Ace Digital Marketing Pty Ltd is referred to as the “Respondent”. DDSS is referred to by its initials.

6.2. Substantive Issues

Paragraph 4(a) of the auDRP provides that a complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights; and

(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 or subsequently used in bad faith.

The burden of proof of each element is borne by the Complainant.

A. Identical or Confusingly Similar

The Complaint is based on (i) an Australian trademark application; (ii) alleged unregistered or common law trademarks; and (iii) a business name registration. The Panel will consider each of these bases in turn.

First, the Complainant has filed an application for an Australian registered trademark with respect to the Tooth Implant Sydney logo but that application has not proceeded to grant. While the application has been accepted, the opposition period has not yet begun. It is not appropriate for the Panel to speculate on whether that application will ever lead to trademark rights. It is sufficient for the purposes of the first element in paragraph 4(a) of the auDRP to observe that the trademark application does not by itself confer rights on the Complainant now.

Second, the Complainant asserts unregistered or common law trademark rights in the words “Tooth Implant Sydney” and in the Tooth Implant Sydney logo mark with respect to the Complainant’s specialist services in providing tooth implants. The Panel considers that a claim based on unregistered trademarks requires the Complainant to produce evidence that, prior to the filing of the Complaint, it has provided goods or services under those marks and had thereby acquired a reputation such that members of the public would associate those goods or services with the Complainant and not with others not authorized by the Complainant to use the marks. See Avid Life Media, Inc. v. Melody Carstairs, WIPO Case No. DAU2011-0001.

The Complainant has provided evidence of its use of the words “Tooth Implant Sydney” and the Tooth Implant Sydney logo mark on the website associated with the domain name <toothimplantsydney.com.au>, which has been active since at least March 2016. Archived screenshots provided by the Complainant show that the Tooth Implant Sydney logo mark has been displayed on that website once, in the upper left-hand corner of the homepage, since at least May 2017. The words “Tooth Implant Sydney”, in particular “Sydney”, are the dominant non-figurative elements of the logo. An archived screenshot from April 2018 shows that the text at that time referred to the operator of the website variously as “Dental Implants Sydney”, “Tooth Implants Sydney”, “Tooth Implant Sydney”, and “Dental Implant Sydney”. The text also referred to products as “Our dental implant in Sydney” and “Our teeth implants in Sydney”. A screenshot of the current homepage does not include the words “Tooth Implant Sydney”, except in the logo. A printout of Google search results from March 2021 indicates that the words “Dental Implants Sydney Digital”, “Dental Implants Cost Sydney”, and “Tooth Implant Sydney” are all currently used on the website.

The Complainant provides evidence of its aggregate income from the provision of various dentistry services in connection with different so-called “brands”. The evidence does not demonstrate that the Complainant makes any sales specifically associated with the marketing of the words “Tooth Implant Sydney” as a brand nor with the Tooth Implant Sydney logo mark.

The Complainant provides evidence of the volume of traffic to its website associated with the domain name <toothimplantsydney.com.au>. However, the Panel notes that the words “Tooth Implant Sydney” are descriptive of the services that the Complainant provides and the place where it provides them, i.e., tooth implants in Sydney. Evidence of visits to the Complainant’s website does not make those words distinctive. See TrueLocal Inc., Geosign Technologies Inc. and True Local Limited v. News Interactive Pty Limited, WIPO Case No. DAU2006-0003.

The evidence shows that an Internet search for “tooth implant sydney” leads to multiple dentists and periodontists in and around the Sydney CBD. The Complainant’s listings appear on the first page of results, but whereas Dr. Pinho’s website associated with his domain name <drpaulopinho.com.au> is high in the list of results, the Complainant’s website associated with the domain name <toothimplantsydney.com.au> (where the alleged unregistered marks appear) places only eighth and ninth behind other service providers, many of whom include the words “dental implants” on their respective websites.

The record of this proceeding discloses no evidence of use of the alleged unregistered marks offline nor at any online location besides one of the Complainant’s own websites. There is no evidence of use of the alleged unregistered marks by the Complainant on a booking confirmation, an invoice, an email, or an advertisement. There is no evidence of use of the alleged unregistered marks by any other party to refer to the Complainant or its services. There is no evidence of any actual public or industry recognition of the Complainant’s alleged unregistered marks.

The Panel considers the evidence on record to be consistent with the view that “Tooth Implant Sydney” is one set of keywords among several others that the Complainant uses to generate traffic to its different websites, after which it may provide services without any reference to the words “Tooth Implant Sydney” as a brand or to the Tooth Implant Sydney logo.

Based on the evidence presented, the Panel finds that the Complainant has failed to show that the alleged unregistered marks have acquired secondary meaning and distinctiveness that the public would associate with the Complainant’s goods or services and not with competitors or others not authorized by the Complainant to use them.

Third, the Complainant asserts rights in “Tooth Implant Sydney” as a name. The Panel recalls that Note 1 to the auDRP provides that, for the purposes of that policy, auDA has determined that a "name … in which the complainant has rights" refers to, inter alia, the complainant's company, business or other legal or trading name, as registered with the relevant Australian government authority.

In the present case, the Complainant registered the business name “Tooth Implant Sydney” with the Australian Securities & Investments Commission in December 2020, six months before it filed the Complaint. Accordingly, the Panel finds that the Complainant has rights in the name “Tooth Implant Sydney”.

The disputed domain name wholly incorporates the words in the Complainant’s “Tooth Implant Sydney” name, with a plural “s” inserted after “implant”, as well as the Second-Level Domain (“2LD”) suffix “.com.au”. The addition of a plural “s” is a common typing mistake, particularly in the present case where the following letter in the business name is also an “s”. Therefore, this difference between the disputed domain name and the Complainant’s business name does not prevent a finding of confusing similarity for the purposes of the auDRP. See Cox Automotive Australia Pty Ltd. v. Auto Dealers Brisbane Pty Ltd, WIPO Case No. DAU2017-0032. As for the 2LD suffix, that element is generally disregarded in an assessment of identity or confusing similarity for the purposes of the auDRP. See BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a name in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the auDRP.

B. Rights or Legitimate Interests

Paragraph 4(c) of the auDRP sets out circumstances which, without limitation, if found by the Panel to be proven based on its evaluation of all evidence presented, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the auDRP:

(i) before any notice to [the respondent] of the subject matter of the dispute, [the respondent’s] bona fide use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with an offering of goods or services (not being the offering of domain names that [the respondent has] acquired for the purpose of selling, renting or otherwise transferring); or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark 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 trademark or service mark at issue.

The disputed domain name resolves to a website for the Respondent’s client, DDSS, who is a direct competitor of the Complainant. The operative part of the disputed domain name is almost identical to the Complainant’s business name. It is clear from the Complaint that the Complainant has not authorized either the Respondent or DDSS to use its business name in the disputed domain name or otherwise. There is no evidence that the Respondent has been commonly known by the disputed domain name. The Respondent is not making a noncommercial use of the disputed domain name.

However, it is apparent that the disputed domain name is composed of descriptive and geographical terms, i.e., the dictionary words “tooth” and “implants” (in the plural) and the place name “Sydney”. Although the nature of these terms as dictionary words and a place name does not automatically confer rights or legitimate interests for the purposes of the second element of the auDRP, the Panel notes that the disputed domain name is genuinely used in connection with the meaning of those terms. Specifically, the Respondent uses the disputed domain name to resolve to a website that offers digital tooth implant services in Sydney.

The Panel does not believe that the near-identity between the disputed domain name and the Complainant’s domain name <toothimplantsydney.com.au> is a coincidence. The Respondent claims to operate a digital marketing agency in Sydney “focusing on dental and medical digital marketing services” while the Complainant has used its domain name in connection with a website for dental digital marketing services in Sydney since at least March 2016, two years before the registration of the disputed domain name. The disputed domain name only ever appears to have been used in connection with a website for a company that formerly shared premises with the Complainant. Alex Ip, who submitted the Response on behalf of the Respondent, was one of the people who claimed ownership of the Complainant’s Google My Business landing page. There can be little doubt that the Respondent has been aware of the Complainant and its domain name all along. Nevertheless, although the auDRP provides a cause of action based on rights in a “name”, such as a company, business, legal or trading name, it does not provide a cause of action based merely on a domain name.

The Complainant only registered the business name “Tooth Implant Sydney” in December 2020, two years after the registration of the disputed domain name. Even though the Respondent presumably copied the idea to incorporate these particular descriptive and geographical terms in a domain name to market certain dental services in the city of Sydney, in principle it had a legitimate interest in using those terms according to their meanings as dictionary words and a place name. Therefore, in order to succeed, the Complainant needs to show that the Respondent did not continue to have a legitimate interest in using the disputed domain name in that way after the Complainant registered its business name.

The Complainant’s business name is also composed of descriptive and geographical terms. The business name was only registered six months ago and the Complainant provides very little evidence of its use since that time. While the Complainant has used the words “Tooth Implant Sydney” for more than six months, the evidence reviewed in Section 6.2.A. above shows that the distinctiveness and reputation of that name are low. The evidence is consistent with the view that the Complainant has been using that name as keywords to generate traffic to its website. Despite the conceptual similarity between the images of a tooth with a screw and the Complainant’s logo mark on the relevant websites, nothing on the website to which the disputed domain name resolves appears to be misleading. The evidence does not show that this website appears among the top search results for “tooth”, “implant” or “implants”, and “Sydney”. There is no evidence of actual customer confusion and the likelihood of such confusion appears low. Accordingly, the Complainant has not shown that the Respondent now lacks rights or legitimate interests in using the disputed domain name in accordance with the meanings of the dictionary words and place name of which it is composed.

The Complainant also argues that the Respondent is acting as a proxy for DDSS in bad faith. The Panel takes note that, while the Respondent claims to be a digital marketing agency, it has virtually no online presence and its alleged website address is merely a parked domain. In pre-Complaint correspondence, DDSS claimed to have created the disputed domain name. While these circumstances suggest a lack of transparency regarding the respective roles of the Respondent and DDSS, the Panel does not consider that they support a finding that the Respondent lacks rights or legitimate interests in the disputed domain name, due to the composition of the disputed domain name and the use to which it is being put.

For the above reasons, the Panel considers that the Complainant has failed to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has failed to satisfy the second element in paragraph 4(a) of the auDRP.

C. Registered or Subsequently Used in Bad Faith

Given the Panel’s findings on the second element in Section 6.2.B. above, it is unnecessary to consider the third element in paragraph 4(a) of the auDRP.

However, the Panel is mindful of the possibility that the disputed domain name may yet be put to an infringing or bad faith use, which may also depend on the status of the Complainant’s trademark. If changed circumstances (whether in the content of the website to which the disputed domain name resolves, or otherwise) unambiguously pointed to an intention to capitalize on the Complainant’s rights, that may support grounds for a refiling.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Matthew Kennedy
Sole Panelist
Date: June 9, 2021