Treace Medical Concepts, Inc. v. Zhi Chao Yang / Zhichao Yang
Claim Number: FA2203001988388
Complainant is Treace Medical Concepts, Inc. (“Complainant”), represented by Lisa Greenwald-Swire of Fish & Richardson, P.C., Minnesota, USA. Respondent is Zhi Chao Yang / Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lapiplasy.com>, <lapiplsty.com>, <lapiplaty.com>, <lapipasty.com>, <lapiplssty.com>, <lapipllasty.com>, <lapiplatsy.com>, <lapiplasyy.com>, <lapiplasyt.com>, <lapiplassty.com>, <lapiplasry.com>, <lapipladty.com>, <lapiplaaty.com>, <lapiplaasty.com>, <lapipkasty.com>, <lapipiasty.com>, <lapiolasty.com>, <lapilpasty.com>, <lapilasty.com>, <lapuplasty.com>, <lappiplasty.com>, <laplplasty.com>, <lapipplasty.com>, <lapiiplasty.com>, <wwwlapiplasty.com>, <llapiplasty.com>, <lapiplastyy.com>, <lapiplastu.com>, <lapiplastty.com>, <lapiplastt.com>, <comlapiplasty.com>, and <lapiplastys.com> (the “disputed domain names”), registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn), Chengdu West Dimension Digital Technology Co., Ltd., and Cloud Yuqu LLC (the “Registrars”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 15, 2022; the Forum received payment on March 15, 2022.
On March 16, 2022 and March 17, 2022, the Registrars confirmed by e-mail to the Forum that the <lapiplasy.com>, <lapiplsty.com>, <lapiplaty.com>, <lapipasty.com>, <lapiplssty.com>, <lapipllasty.com>, <lapiplatsy.com>, <lapiplasyy.com>, <lapiplasyt.com>, <lapiplassty.com>, <lapiplasry.com>, <lapipladty.com>, <lapiplaaty.com>, <lapiplaasty.com>, <lapipkasty.com>, <lapipiasty.com>, <lapiolasty.com>, <lapilpasty.com>, <lapilasty.com>, <lapuplasty.com>, <lappiplasty.com>, <laplplasty.com>, <lapipplasty.com>, <lapiiplasty.com>, <wwwlapiplasty.com>, <llapiplasty.com>, <lapiplastyy.com>, <lapiplastu.com>, <lapiplastty.com>, <lapiplastt.com>, <comlapiplasty.com>, and <lapiplastys.com> disputed domain names are registered with the Registrars Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn), Chengdu West Dimension Digital Technology Co., Ltd., and Cloud Yuqu LLC, and that Respondent is the current registrant of the disputed domain names. The Registrars have verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn), Chengdu West Dimension Digital Technology Co., Ltd., and Cloud Yuqu LLC; registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 22, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English Language Written Notice of the Complaint, setting a deadline of April 11, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@lapiplasy.com, postmaster@lapiplsty.com, postmaster@lapiplaty.com, postmaster@lapipasty.com, postmaster@lapiplssty.com, postmaster@lapipllasty.com, postmaster@lapiplatsy.com, postmaster@lapiplasyy.com, postmaster@lapiplasyt.com, postmaster@lapiplassty.com, postmaster@lapiplasry.com, postmaster@lapipladty.com, postmaster@lapiplaaty.com, postmaster@lapiplaasty.com, postmaster@lapipkasty.com, postmaster@lapipiasty.com, postmaster@lapiolasty.com, postmaster@lapilpasty.com, postmaster@lapilasty.com, postmaster@lapuplasty.com, postmaster@lappiplasty.com, postmaster@laplplasty.com, postmaster@lapipplasty.com, postmaster@lapiiplasty.com, postmaster@wwwlapiplasty.com, postmaster@llapiplasty.com, postmaster@lapiplastyy.com, postmaster@lapiplastu.com, postmaster@lapiplastty.com, postmaster@lapiplastt.com, postmaster@comlapiplasty.com, postmaster@lapiplastys.com.
Also on March 22, 2022, the Chinese and English language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 18, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the disputed domain names be transferred from Respondent to Complainant.
Preliminary Issue: Language of Proceeding
Paragraph
11(a) of the Rules specifies that “the language of the administrative
proceeding shall be the language of the Registration Agreement, subject to
the authority of the Panel to determine otherwise, having regard to the
circumstances of the administrative proceeding.” The Panel, then, has
discretion to determine the language of the proceedings in light of the
circumstances and facts of the particular proceeding. Specifically, “where the
respondent can apparently understand the language of the complaint (or having
been given a fair chance to object has not done so), and the complainant would
be unfairly disadvantaged by being forced to translate it, the language of the
complaint, even if it is different from the language of the registration
agreement, can be accepted.” See Country Mutual Insurance Company and
Country Life Insurance Company v. Zhichao Yang, FA2112001976492 (Forum Jan. 20, 2022) (allowing the
proceeding in English because the pay-per-click resolving websites connected to
the disputed domain names are in English, which indicates that Respondent is
familiar with English. In addition, “.com” is the largest gTLD and is often
used by international entities for international websites).
In the present case, although the Registrars’ Registration Agreements are in Chinese, Complainant asserts that Respondent is capable of understanding English because Respondent’s disputed domain names’ resolving websites use English words, Respondent has previously conducted business and participated in previous proceedings in English, and Respondent would have an unfair advantage if the dispute proceeded in Chinese, since Complainant would be forced to incur additional costs and expenses in seeking local assistance in China for handling this dispute.
In sum, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest that the Respondent is conversant and proficient in the English language. After considering the circumstances of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
Complainant is a leader in the surgical treatment of bunions, and consistently works to advance the standard of care for the surgical management of bunion deformities and related midfoot correction. Complainant is the creator and owner of the patented LAPIPLASTY system, a combination of instruments, implants, and surgical methods designed to correct all three planes of the bunion deformity, which is the top bunion product in the United States.
Complainant contends that since at least as early as October 2015, Complainant has used the LAPIPLASTY trademark in connection with its medical and surgical devices and procedures. Complainant owns multiple trademark registrations for the LAPIPLASTY trademark worldwide, including in the United States and China (where Respondent purportedly resides). For example, Complainant owns the following trademarks, among others: LAPIPLASTY, through its registration with the United States Patent and Trademark Office (“USPTO”), United States Trademark Registration No. 5,115,724, registered on January 3, 2017, in international class 10; and LAPIPLASTY, through its registration with China’s State Administration for Industry and Commerce (“SAIC”), China Trademark Registration No. 1552761, registered on January 10, 2020, in international class 10. The foregoing trademarks will hereinafter collectively be referred to as the “LAPIPLASTY Mark”.
In addition, Complainant owns the <lapiplasty.com> domain name, which resolves to Complainant’s official website at “www.lapiplasty.com”.
Complainant further contends that registration of a trademark with multiple trademark offices worldwide is sufficient to establish rights in a mark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). The Panel therefore finds that Respondent has rights in the LAPIPLASTY Mark under Policy ¶ 4(a)(i).
Since Complainant provides evidence of registration of the LAPIPLASTY Mark with the USPTO and SAIC, the Panel concludes that Complainant has rights in the LAPIPLASTY Mark under Policy ¶ 4(a)(i). Complainant also claims to have common law rights in the LAPIPLASTY Mark.
Moreover, Complainant claims that the disputed domain name is confusingly similar to Complainant’s LAPIPLASTY Mark as the disputed domain names incorporate misspellings of the trademark, followed by the “.com” generic Top-Level Domain (“gTLD”). Complainant further contends that Respondent lacks rights or legitimate interests in the disputed domain names, and that Respondent registered and is using the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has rights in the LAPIPLASTY Mark based on its trademark registrations with the USPTO and SAIC. Registration with the USPTO and SAIC is sufficient to establish rights in a mark pursuant to Policy ¶4(a)(i). In addition, the Panel finds that the disputed domain names are confusingly similar to Complainant’s LAPIPLASTY Mark, that Respondent lacks rights or legitimate interests in the disputed domain names, and that Respondent registered and is using the disputed domain names in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a disputed domain name should be cancelled or transferred:
(1) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that the disputed domain names are confusingly similar to the LAPISPLASTY Mark as set forth below.
The Panel agrees with Complainant that it has rights in the LAPIPLASTY Mark through its registration with the USPTO and SAIC (USPTO Reg. No. 5,115,724, registered on Jan. 3, 2017; SAIC Reg. No. 5,115,724, registered on Jan. 10, 2020). Registration with the USPTO and SAIC is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Kohler Co. v. xi long chen, FA 1737910 (Forum Aug. 4, 2017) (determining that “Complainant has rights in the KOHLER mark through registration with USPTO and SAIC.”).
Here, the disputed domain names consist of misspellings[i] of the LAPIPLASTY Mark, adding different letters in each, and then followed by the gTLD “.com“. Registration of domain names that add various letters to a trademark does not distinguish the disputed domain names from the trademark per Policy ¶ 4(a)(i).
The disputed domain names incorporate misspelled versions of the LAPIPLASTY Mark that are very close to the LAPIPLASTY trademark and all followed by the “.com” gTLD, while one domain name also adds the term “com” to the front of the mark and another, the letters “www”. See Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015). In addition, adding a gTLD to a complainant’s mark does not prevent a finding of confusing similarity under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the addition of a gTLD to a disputed domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). There is no doubt that Respondent chose the disputed domain names precisely because they are easily confused with Complainant’s LAPIPLASTY Mark. Therefore, the Panel concludes that the disputed domain names are confusingly similar to the LAPIPLASTY Mark.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain names as Respondent did not submit a response to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard pressed to furnish availing arguments had it chosen to respond.
In support, the Panel finds that Respondent is not commonly known by the disputed domain names or any name similar to them, nor has Complainant authorized or licensed Respondent to use misspellings of Complainant’s LAPISPLASTY Mark in the disputed domain names. In addition, Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use.
The Panel also concludes that Respondent does not use the disputed domain names for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving websites display pay-per-click links featuring a series of advertising links for third party bunion services, many of which offer products and services in direct competition with those offered by Complainant’s LAPISPLASTY Mark. Using disputed domain names to resolve to pages with pay-per-click competing links does not constitute a bona fide offering of goods and services or legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using a domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy as described below.
First, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, Respondent registered and is using the disputed domain names in bad faith as Respondent engaged in typosquatting. See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Here, Respondent engaged in typosquatting by adding various letters to each disputed domain name to create domain names that are easily confused with Complainant’s LAPIPLASTY Mark. Therefore, the Panel finds that Respondent registered and is using the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Third, the Panel concludes that Respondent has established a pattern of bad faith registration of third-party domain names and has been involved in numerous UDRP proceedings. Specifically, Complainant asserts that Respondent has engaged in an egregious pattern of bad faith registrations as illustrated by the 191 Forum decisions listed in Annex 9 of the Complaint, where the panels in those proceedings ordered the transfer of the domain names in all but three proceedings (the 3 based on procedural issues). A pattern of bad faith may be established when evidence is provided that a respondent has been a party to prior UDRP cases that resulted in the transfer of the domain name under Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondent’s previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”).
Under Policy ¶ 4(b)(ii), registration and use of multiple domain names, along with a history of adverse UDRP proceedings against a respondent is generally considered evidence of a pattern of bad faith registration and use. See Twentieth Century Fox Film Corporation v. oranges arecool XD / orangesarecool.com, FA1405001558045 (Forum July 10, 2014) (finding that the respondent’s registration of multiple domain names in the instant proceeding and prior adverse UDRP history was evidence of bad faith registration and use of the domain names under Policy ¶ 4(b)(ii)). Since the Panel finds that Respondent was a party to almost 200 domain name proceedings, the Panel concludes that Respondent has exhibited a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
Fourth, the fame of the LAPISPLASTY Mark, which was used and registered by Complainant in advance of Respondent’s registration of the disputed domain names, renders it wholly implausible that Respondent created the disputed domain names independently. Moreover, where a disputed domain name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the LAPISPLASTY Mark, and this constitutes bad faith under Policy ¶ 4(a)(iii). It therefore strains credulity to believe that Respondent had not known of the Complainant or its LAPISPLASTY Mark when registering the disputed domain names, especially since the misspelled disputed domain names are so closely related to the Complainant’s LAPISPLASTY Mark. Thus, as here, prior knowledge of a complainant’s trademarks when registering a domain name is sufficient to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Finally, the Panel concludes that Respondent registered and is using the disputed domain names for bad faith disruption of the Complainant’s business for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), using disputed domain names to host parked, pay-per-click competing links is generally considered evidence of bad faith disruption for commercial gain. See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lapiplasy.com>, <lapiplsty.com>, <lapiplaty.com>, <lapipasty.com>, <lapiplssty.com>, <lapipllasty.com>, <lapiplatsy.com>, <lapiplasyy.com>, <lapiplasyt.com>, <lapiplassty.com>, <lapiplasry.com>, <lapipladty.com>, <lapiplaaty.com>, <lapiplaasty.com>, <lapipkasty.com>, <lapipiasty.com>, <lapiolasty.com>, <lapilpasty.com>, <lapilasty.com>, <lapuplasty.com>, <lappiplasty.com>, <laplplasty.com>, <lapipplasty.com>, <lapiiplasty.com>, <wwwlapiplasty.com>, <llapiplasty.com>, <lapiplastyy.com>, <lapiplastu.com>, <lapiplastty.com>, <lapiplastt.com>, <comlapiplasty.com>, and <lapiplastys.com> disputed domain names be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: May 2, 2022
[i] This misspelling is an example of typosquatting, a situation in which a disputed domain name includes a misspelled term.
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