EBS Enterprises LLC v. Ade Aji / Wired Elite Inc
Claim Number: FA2211002021799
Complainant is EBS Enterprises LLC (“Complainant”), represented by Sarah E Bro of McDermott Will & Emery LLP, United States of America. Respondent is Ade Aji / Wired Elite Inc (“Respondent”), represented by Howard M. Neu of Law Office of Howard M. Neu, P.A., United States of America.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <airsculpting.com>, registered with GoDaddy Online Services Cayman Islands Ltd.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Professor John V. Swinson, Professor David E. Sorkin and Alan L. Limbury (Chair) as Panelists.
Complainant submitted a Complaint to Forum electronically on November 28, 2022. Forum received payment on November 28, 2022.
On November 29, 2022, GoDaddy Online Services Cayman Islands Ltd. confirmed by e-mail to Forum that the <airsculpting.com> domain name is registered with GoDaddy Online Services Cayman Islands Ltd. and that Respondent is the current registrant of the name. GoDaddy Online Services Cayman Islands Ltd. has verified that Respondent is bound by the GoDaddy Online Services Cayman Islands Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 30, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 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@airsculpting.com. Also on November 30, 2022, the 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.
A timely Response was received and determined to be complete on December 19, 2022.
A timely Additional Submission was received from Complainant on December 23, 2022. A timely Additional Submission in reply was received from Respondent on December 27, 2022. Both Additional Submissions complied with Forum’s Supplemental Rule 7.
On January 5, 2023, pursuant to Complainant's request to have the dispute decided by a three-member Panel, Forum appointed Professor John V. Swinson, Professor David E. Sorkin and Alan L. Limbury as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, EBS Enterprises LLC, provides cosmetic and plastic surgery procedures. Complainant has rights in the AIRSCULPT mark based upon registration in 2015 with the United States Patent and Trademark Office (“USPTO”). Respondent’s <airsculpting.com> domain name is confusingly similar to Complainant’s AIRSCULPT mark.
On June 10, 2022, Complainant applied to the USPTO to register the mark AIRSCULPTING for cosmetic and plastic surgery; surgical body contouring; surgical body shaping; liposuction; medical and surgical consultation. That application remains pending.
Respondent does not have rights or legitimate interests in the <airsculpting.com> domain name. Respondent is not licensed or authorized to use Complainant’s AIRSCULPT mark and is not commonly known by the domain name. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to offer click-through links to third-party sites unrelated to Complainant’s business.
Respondent registered and uses the <airsculpting.com> domain name in bad faith. Respondent registered the domain name with the purpose of selling it to Complainant or a competitor of Complainant for an excessive price. Additionally, Respondent attempts to attract Internet users to its website by creating a likelihood of confusion with Complainant’s mark, using the site to host third-party links for commercial gain. Finally, Respondent fails to make active use of the domain name.
B. Respondent
Respondent, Ade Aji / Wired Elite Inc, has been purchasing domain names for several years and has a relatively small portfolio of about 100 domain names.
When he registered the <airsculpting.com> domain name on April 29, 2021, Respondent searched the USPTO and found the trademarks for AIRSCULPT for cosmetic and plastic surgery. A Google search for Air Sculpt showed a number of web sites using AIRSCULPT for cosmetic and plastic surgery. However, Respondent also saw that there were a great many web sites for air dried ceramic/clay sculpturing and felt that Airsculpting.com would be a perfect fit for that type of business. Since it is a separate industry and both words are generic terms, Respondent did not believe that he was cybersquatting Complainant's trademark. His intent has always been to develop a ceramic/clay sculpturing business, but in the meantime, it is "parked" at a professional monetizer so that he can get an understanding of the relevant traffic to the domain name.
Respondent has never approached Complainant to try to sell the domain name to Complainant, nor has Respondent ever targeted Complainant or its business while the domain name has been continuously "parked" with Uniregistry, which puts links up to related referenced sites that do not include cosmetic surgery and body sculpting. A review of the site reflects no mention or reference to Complainant's business and therefore cannot cause any confusion with Complainant's business. It is a parked page with links, as on all parked pages, to various other web sites.
AIRSCULPT is a trademarked noun for cosmetic surgery, while "airsculpting" is a verb designating creating sculptures with air, such as clay and ceramic sculptures and figurines. Therefore, Complainant is unable to prove that the <airsculpting.com> domain name is identical or confusingly similar to Complainant's trademark.
Respondent has rights or legitimate interests in the <airsculpting.com> domain name. Respondent is using the domain name for a legitimate purpose as Respondent is in the business of purchasing generic term domain names for resale and in the meantime is using the domain name to resolve to a parking website with links unrelated to Complainant’s business.
Respondent did not register and is not using the <airsculpting.com> domain name in bad faith. Respondent did not specifically target Complainant. Further, the domain name comprises common words and descriptive terms, which are legitimately subject to registration as domain names on a 'first-come, first-served' basis.
On October 19, 2022, through a third-party intermediary to Uniregistry (GoDaddy), Complainant made an offer to buy the domain name. Respondent did not know who was making the offer, so the price quoted could not have been "primarily for the purpose of selling the domain name to the Complainant". This Complaint is therefore a “Plan B” attempt to obtain the domain name through the UDRP.
C. Additional Submissions
Complainant
As to the first element, Respondent’s argument that “air” and “sculpt” are generic terms when considered separately fails because the AIRSCULPT marks cannot be broken down into individual words for the purpose of determining distinctiveness. Moreover, the AIRSCULPT marks are not, as Respondent alleges, generic or descriptive terms. A domain name consisting of an entire trademark with the common suffix “ing” is enough to find confusing similarity between the domain name and the trademark at issue.
Respondent incorrectly alleges that <airsculpting.com> is not confusingly similar to Complainant’s marks because Respondent’s purported “ceramic/clay sculpturing business” is a separate industry from cosmetic and plastic surgery. To support this assertion, Respondent states that a Google search for airsculpt
“showed a number of web sites using AIRSCULPT for cosmetic and plastic surgery. However…there were a great many web sites for air dried ceramic/clay sculpturing.”
Respondent’s supporting exhibit, however, shows Google results for “air dried sculptures,” not “airsculpt.” In a compilation of Google results for “airsculpting” and “airsculpt,” Complainant’s business is repeatedly shown in the results and there is no mention of “air dried ceramic/clay sculpturing.” Internet users are likely to be confused by the similarities between Complainant’s registered and well-known AIRSCULPT marks and the <airsculpting.com> domain name and are likely to believe that the domain name is affiliated with the Complainant.
As to the second element, Respondent does not deny that he is not commonly known by the domain name or by Complainant’s registered trademark. Respondent has not made any demonstrable preparation to use the domain name to “develop a ceramic/clay sculpturing business”. Inactive holding of a domain name without any sign of preparation for use generally does not qualify as a bona fide offering or goods or services. The domain name continues to resolve to a page designed to monetize the domain name through click-through fees associated with hyperlinks.
Even if Respondent did properly demonstrate its alleged plans for the domain name, such use of the domain name in connection with content related to cosmetic and plastic surgery, surgical body contouring, surgical body shaping and liposuction, will no doubt cause confusion amongst consumers who locate Respondent’s website when searching for information regarding Complainant and its cosmetic and plastic surgery services.
As to the third element, it is well settled that Respondent’s claim that Uniregistry (GoDaddy) is responsible for placing the sponsored click-through links at the website to which the domain name resolves is irrelevant, as Respondent is responsible for the content of the resolving website. Using Complainant’s AIRSCULPT trademark (and adding a common suffix, such as “ing”), in a domain name that resolves to a web page displaying third-party commercial links is recognized under the Policy as evidence of bad faith registration and use.
Respondent’s mere knowledge, by its own admission, of Complainant’s marks when the domain name was registered demonstrated Respondent’s bad faith registration.
Respondent defends the use of the domain name for profit by claiming that it has invested in a domain name comprising generic terms, citing cases where “the registration of a generic or common term as a domain name does not, by itself, give rise to an implication of bad faith.” However, the AIRSCULPT marks (registered and pending) are not generic or descriptive terms. Thus, given the well-known status of Complainant’s marks, there is no reason for Respondent to have registered the domain name other than to trade off the reputation and goodwill of Complainant’s mark, and/or to attempt to associate itself with Complainant.
Respondent
Complainant’s assertion that there is no difference between its trademarked AIRSCULPT and Respondent’s <airsculpting.com> belies the fact that more than one year after Respondent registered <airsculpting.com>, Complainant is seeking to trademark AIRSCULPTING. This is a tacit admission by Complainant that the two words have different meanings and usages. One is a noun and the other is a verb. Respondent’s use of <airsculpting.com> cannot therefore be confusingly similar to Complainant’s mark.
Complainant contends that because Respondent’s web site is a parked page, Respondent has no legitimate use for the domain name. However, Respondent stated in his Response that he is “testing the waters” by parking the domain name to determine the amount of traffic that it can receive before developing it into a working web site. Respondent acquired the domain name a short while ago and has not yet had the opportunity to develop it into a business. Further, Respondent is a domain investor who has about 100 other domain names that he is holding for investments. Holding domains for investment has been determined by many previous UDRP panels to be a bona fide business use.
Complainant has not been targeted by Respondent, nor has Respondent offered to sell the domain name to Complainant. In fact, when Complainant attempted to purchase the domain name through a third party in order to remain anonymous, the Respondent’s price was “too high”, so the third party stated that it would take further action which resulted in this UDRP as a “Plan B” acquisition.
Complainant completely fabricates the facts by alleging that Respondent plans to “use the domain name in connection with content related to cosmetic and plastic surgery, surgical body contouring, surgical body shaping and liposuction (which) will no doubt cause confusion amongst consumers…” This self-serving malicious misstatement of the facts is deserving of a finding of RDNH.
Finally, a GOOGLE search of the word “airsculpting” shows that there is a legitimate business for air sculpting, including clay and other materials. There are 52 different postings of web sites using “airsculpting” on pages 3 through 10 of the search results.
Complainant has established all the elements entitling it to relief.
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 domain name should be cancelled or transferred:
(1) the 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 domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has shown that it has rights in the AIRSCULPT mark based upon registrations including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,778,054, registered July 21, 2015, for “cosmetic and plastic surgery; surgical body contouring; surgical body shaping and liposuction in Class 44”).
Complainant’s pending application to register AIRSCULPTING as a trademark does not presently give Complainant rights in that mark.
Respondent argues that because AIRSCULPT is a trademarked noun for cosmetic surgery, while "airsculpting" is a verb designating creating sculptures with air, Complainant cannot show that the domain name is identical or confusingly similar to its mark. However, the relevant test under this element is simply to apply a side-by-side comparison of the domain name and the textual components of Complainant’s trademark to assess whether the mark is recognizable within the domain name, as explained in section 1.7 of the WIPO Jurisprudential Overview 3.0. Applying this test, the Panel finds Respondent’s <airsculpting.com> domain name to be confusingly similar to Complainant’s mark because it contains the AIRSCULPT mark in its entirety, merely adding the suffix “ing”, which is insufficient to distinguish the domain name from the mark, and the inconsequential generic top-level domain (“gTLD”) “.com”, which may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <airsculpting.com> domain name was registered on April 29, 2021, over 5 years after Complainant registered its AIRSCULPT mark. It resolves to a parked webpage with sponsored, click-through links to third-party websites unrelated to Complainant’s business.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that he does have rights or legitimate interests in the <airsculpting.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
The Panel accepts Respondent’s submission that the business of purchasing generic term domain names for investment and resale is legitimate and that Respondent is engaged in that business.
As to Respondent’s claim that his intent has always been to develop a ceramic/clay sculpturing business, Respondent does not presently use the domain name in connection with any such business and has provided no evidence of demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with any such business.
Respondent (as an individual, business or other organization) makes no claim to be commonly known by the domain name.
Respondent claims that the domain name is "parked" at a professional monetizer so that Respondent can get an understanding of the relevant traffic to the domain name, pending the development of a ceramic/clay sculpturing business.
Although the Google search pages 3 to 10 for “air sculpting” (Exhibit D to Respondent’s Additional Submission) contain 51 results relating to air dry clay sculpture, the majority of the results on those pages (and nearly all of the results on the first two pages, which were omitted by Respondent) relate to cosmetic surgery, including some that use the word “sculpting” in relation to such treatment, as follows:
“Air Sculpt: r/Charlotte – Reddit
May 3 2022 - Has anyone had air sculpting? I’m struggling with my body and about 20lbs weight gain, all in my lower belly and sides”;
“If you are interested in surgically sculpting your figure, contact North Texas Plastic Surgery to discuss body contouring in Dallas”; and
“Infinity Body Sculpting – Up To 67% Off- Tallahassee, Fl
Laser Lipo has the following benefits * Non-invasive * Painless * Performed in-office”.
Furthermore, the items that do not relate to cosmetic surgery all appear to have been retrieved merely because they happen to include both words, “air” and “sculpting”; none of them appear to include the term “airsculpting” or the phrase “air sculpting.” Accordingly, the Panel is persuaded that the traffic generated by Respondent’s domain name is likely to include Internet users looking for Complainant or for information about cosmetic surgery, and is unlikely to include many users seeking information about ceramic/clay sculpturing. Hence, by using the domain name to attract Internet traffic to a “parked” web site with pay-per-click links unrelated to Complainant, Respondent is capitalizing on the initial interest confusion created by the similarity of the domain name with Complainant's mark. This is not a legitimate noncommercial or fair use of the domain name.
The Panel finds that Respondent has failed to rebut Complainant’s prima facie showing of absence of rights or legitimate interests in respect of the domain name and concludes that Respondent has no such rights or legitimate interests.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct;
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
There is no evidence supporting findings under sub-paragraphs (ii) and (iii).
As to sub-paragraph (i), the Panel is not satisfied that the anonymous approach instigated by Complainant to purchase the domain name from Respondent and Respondent’s response support the conclusion that Respondent registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant. Bringing this Complaint after that offer was rejected indeed constitutes a “Plan B”. However, these circumstances alone do not exculpate Respondent from a finding of bad faith.
As to sub-paragraph (iii), Respondent admits that before he registered the <airsculpting.com> domain name, he conducted a trademark search that revealed Complainant’s AIRSCULPT mark. He says a Google search for Air Sculpt showed a number of web sites using AIRSCULPT for cosmetic and plastic surgery (Response Exhibit B). However, that Exhibit shows a search for “air dried sculptures”, not “Air Sculpt”. As noted above, the majority of the results of a Google search for “air sculpting” (Exhibit D to Respondent’s Additional Submission) relate to body contouring treatment, including some that use the word “sculpting” in relation to such treatment.
Under these circumstances the Panel finds it likely, on the evidence before it, that, in light of the confusing similarity between Complainant’s AIRSCULPT mark and Respondent’s <airsculpting.com> domain name, many Internet users will mistakenly expect that the domain name and the site to which it resolves are connected with Complainant. Although Respondent’s parked website reflects no mention or reference to Complainant's business, Respondent could hardly have been unaware of the likelihood of such initial interest confusion when he chose to register the domain name, and the Panel infers that Respondent registered the domain name intending to take advantage of the traffic resulting from this confusion.
Accordingly, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
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 <airsculpting.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury (Chair)
Professor John V. Swinson
Professor David E. Sorkin
Panelists
Dated: January 13, 2023.
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