Larry S. Nichter, M.D. and Jed H. Horowitz, M.D., a Medical Corporation, DBA Pacific Center for Plastic Surgery v. DOMAIN ADMINISTRATOR / THOUGHT CONVERGENCE, INC.
Claim Number: FA1611001702547
Complainant is Larry S. Nichter, M.D. and Jed H. Horowitz, M.D., a Medical Corporation, DBA Pacific Center for Plastic Surgery (“Complainant”), represented by Sylvia Mulholland of Law Office of Sylvia Mulholland, California, USA. Respondent is DOMAIN ADMINISTRATOR / THOUGHT CONVERGENCE, INC. (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <biospa.com>, registered with Uniregistrar Corp.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Michael A. Albert as Panelist.
The Honourable Neil Anthony Brown QC as Panelist; and
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 11, 2016; the Forum received payment on November 11, 2016.
On November 14, 2016, Uniregistrar Corp confirmed by e-mail to the Forum that the <biospa.com> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp 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 17, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 2016 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 email@example.com. Also on November 17, 2016, 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 12, 2016.
Complainant submitted an Additional Submission to the Forum on December 19, 2016 arguing against Respondent’s characterizations of allegations in its complaint and submitting additional Annexes. Pursuant to Supplemental Rule ¶ 7(a), “a party may Submit additional written statements and documents to the Forum and the opposing party(s) within five (5) Calendar Days after the date the Response was received by the Forum . . . .” Supplemental Rule ¶ 7(a). Complainant’s Additional Submission was received seven (7) days after Respondent submitted its timely Response on December 12, 2016. Although Complainant’s Additional Submission was not received in a timely manner and need not be considered by the Panel in rendering its decision, the Panel reviewed and considered the arguments and materials in Complainant’s Additional Submission in rendering its decision, as discussed below.
On December 20, 2016, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed
Michael A. Albert as Panelist;
The Honourable Neil Anthony Brown QC as Panelist; and
Sandra J. Franklin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant alleges that the disputed domain name <biospa.com> is identical to the United States Patent and Trademark Office (“USPTO”) registered trademark BIOSPA (Reg. No. 5,057,206, first use Nov. 17, 1998, filing date May 18, 2015, registered Oct. 11, 2016) for the following services: “non-surgical cosmetic treatment using lasers, ultrasound, infrared, radio frequency technology, and injectables for treatment of excessive sweating, hair loss, hair removal, spider veins and broken capillaries, for fat removal, body shaping and skin tightening, scars, loss of volume in the face, aging hands, neck and chest, all of the foregoing performed by, or under the supervision of, licensed medical and surgical practitioners in a licensed medical and surgical facility.” See Compl., at
Attached Annex 5.
Complainant also asserts its predecessor in title owned the registered trademark BIOSPA (Reg. No. 2319292) for “skin clinics” which was cancelled for failure to renew on July 7, 2007. See Compl., at Attached Annex 6. Complainant contends the cancellation did not become known because Complainant’s attorney was deceased in 2003. Complaint contends that despite the loss of the earlier registration, Complainant’s rights in the trademark BIOSPA continued through its use of the mark in commerce since 1998 with no break in use.
Complainant alleges that Respondent has no legitimate rights or interests in the disputed domain name because Complainant has found no evidence of Respondent’s use of the domain name or a similar name in connection with goods or services since registration by Respondent in December of 2007. Complainant also alleges that Respondent has never been commonly known by the disputed domain name, and that Respondent is not making a legitimate or fair use of the domain name, but is instead using the domain name for commercial gain to the detriment of the rightful trademark holder. Complainant further argues bad faith is evident by the fact that Complainant offered to purchase the domain name and Respondent refused.
Respondent claims its use of the disputed domain name consists of a non-exclusive combination of the common prefix “bio” referring to living things and “spa” referring to a facility for relaxation and non-medical treatment, and that Complainant’s rights in the BIOSPA trademark are limited to its junior registration recently issued for unrelated services performed by medical professionals. See Resp., at Attached Ex. F (demonstrating use of “bio spa” by numerous third parties for a variety of purposes). Respondent contends the scope of Complainant’s rights in the BIOSPA mark is limited as a consequence of inter partes proceedings in which Complainant agreed to limitations on its rights in the trademark. Respondent further contends that it obtained the disputed domain name nearly nine years prior to Complainant’s junior registration (Reg. No. 5057206) at a public auction following abandonment of the domain name by a third party prior registrant. Respondent asserts that Complainant’s earlier cancelled registration (Reg. No. 2319292) conferred no rights in the mark to Complainant at the time Respondent registered the domain name.
Respondent uses a general advertising lander for the resolving website, which is populated with pre-loaded search terms (as demonstrated in Complainant’s Attached Annex 9). Respondent contends the links included point to unrelated goods and services because Complainant has limited rights in relation to procedures performed in a medical setting. Respondent contends that none of the listed advertisements include treatments by medical providers, plastic surgeons, or related services. Further, Respondent alleges that in order to return the results displayed in Complainant’s Annexes 12 and 13, search terms must be manually entered.
Respondent alleges Complainant made a false statement that the cancellation was not known because its attorney died in 2003 because Complainant filed a change of correspondence address for that registration on February 17, 2003. See Resp., at Attached Ex. A (changing the address of record from that of the deceased attorney to Complainant’s own address). The allegedly deceased attorney, Samuel B. Stone, lived until 2015. See Resp., at Attached Ex. B (obituary). Complainant was also demonstrably receiving and responding to correspondence in the cancellation proceeding in 2004 and 2005. See Resp., at Attached Ex. C.
Respondent contends it did not register or use <biospa.com> in bad faith because Respondent had no knowledge of Complainant at the time of registration and Respondent acquired <biospa.com> at a public auction following the abandonment of the domain name by the prior registrant, unrelated to Complainant’s abandonment of its lapsed USPTO registration. Respondent alleges Complainant has provided no evidence of any fame associated with the BIOSPA mark—therefore, there could have been no bad faith registration. Respondent contends its choice to not respond to Complainant’s offer to purchase the domain name for $2,000 does not indicate bad faith. Rather, per Exhibit I, one of the joint Complainants is Jed Horowitz, born in 1952, likely signed up on <igloo.com> as user “jed1952” to make the $2500 offers in March 2015. Complainant then filed its USPTO application 2 months later in May 2015. Therefore, Respondent contends that Complainant’s junior BIOSPA registration was informed by Respondent’s registration of <biospa.com>. Respondent alleges that Complainant has thus engaged in reverse-domain name hijacking.
C. Additional Submissions
Complainant submitted an Additional Submission to the Forum on December 19, 2016 arguing against Respondent’s characterizations of allegations in its Complaint and including additional Annexes. Complainant’s Additional Submission elaborated on its Complaint and provided additional Annexes to show Registrant’s use of the disputed domain name was in bad faith. Although not received in a timely manner, Complainant’s Additional Submission was considered and is discussed below.
Complainant’s predecessor in interest owned the registered trademark BIOSPA (Reg. No. 2319292) for “skin clinics” claiming first use in commerce on November 17, 1998. Complainant’s registration was cancelled on July 19, 2007 for failure to timely file a Statement of Continuing Use and specimen between the 5th and 6th year following the registration date of February 15, 2000.
Following the expiration of ownership of the disputed domain name <biospa.com> by an unrelated third party on September 16, 2007, Respondent purchased the disputed domain name at a public auction on December 4, 2007.
Complainant filed a trademark application for BIOSPA (Reg. No. 5057206) on May 18, 2015, and the mark was registered on October 11, 2016 for services related to non-surgical cosmetic treatment performed by licensed medical professionals.
Complainant offered to purchase the <biospa.com> domain name and received automated responses from Respondent declining Complainant’s offers.
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’s junior registration for BIOSPA (Reg. No. 5057206) for services related to non-surgical cosmetic treatment performed by medical practitioners is identical to the disputed domain name. A complainant’s registration of a mark with the USPTO establishes a complainant’s rights in the mark under Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). The BIOSPA mark is incorporated entirely, while only “.com” is appended. Adding “.com” is irrelevant for the purposes of the Policy. See F.R. Burger & Associates, Inc. v. Shanshan Lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Accordingly, <biospa.com> is identical to the BIOSPA mark.
However, a complainant’s rights date back to the filing date of the approved trademark application. See Thompson v. Zimmer, FA 190625 (Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”). The relevant inquiry is whether the disputed domain name was confusingly similar to a valid trademark at the time the domain name was registered. Complainant filed its application for the junior BIOSPA mark (Reg. No. 5057206) on December 5, 2016 which subsequently registered on October 11, 2016. Complainant filed the application for this mark more than eight years after the disputed domain name was registered by Respondent. Accordingly, the junior registration is irrelevant to the determination of Complainant’s rights in the BIOSPA mark as they existed at the time the domain name was registered.
Complainant contends that its rights in the BIOSPA mark date back to November 17, 1998, the date of first use indicated by Complainant’s predecessor in interest in its original trademark registration for BIOSPA (Reg. No. 2319292). Although this registration was cancelled on July 19, 2007 for failure to timely file a Statement of Continuing Use and specimen, Complainant contends it retained common law rights in its BIOSPA mark at the time Complainant registered the disputed domain name on December 4, 2007.
In order to acquire common law trademark rights under the Policy, a complainant must show that the mark has acquired secondary meaning identifying the mark with the complainant and its goods and services. See Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (finding that a complainant can only acquire a common law trademark by establishing the mark’s acquisition of secondary meaning). Rights in a mark transcend government registrations, and can be proven through continuous use, proof of consumer recognition, and amount spent on advertising using the mark. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
Although a complainant may claim common law rights following cancellation of a mark, here Complainant has provided very little evidence of secondary meaning or substantial and continuous use of the BIOSPA mark following cancellation of the earlier registration. Complainant has provided Annex 7, which represents a pamphlet bearing the date “9/98,” along with a sticker bearing the date “02-19-1999.” Complainant also provides evidence of its services online at Annex 8 at <mybiospa.com> from 2016. The Panel also notes the cancelled USPTO registration at Annex 6. Complainant’s Additional Submission contained a printout from <waybackmachine.org> to show the mark was used on <bio-spa.org> in 1998, but the printout does not show the website as it actually appeared on that date and does not display the BIOSPA mark. Complainant does not allege the extent of distribution of the single pamphlet from 1998, nor otherwise cite to evidence that the mark acquired secondary meaning or was continuously used prior to Respondent’s purchase of the disputed domain name on December 4, 2007. See C-Byte Computer Systems LLC v. Domain Administrator / C Byte Company Inc. FA 1510001640318 (Forum Dec. 16, 2015) (observing “it is not enough simply to assert a common law trademark without proving it.”). Accordingly, the Panel finds that Complainant has not sufficiently represented continuous use of the mark, or media recognition, etc. to show common law rights in the mark. Therefore, Complainant’s rights in the BIOSPA mark date back to Complainant’s filing date of the junior BIOSPA registration on May 18, 2015. Respondent obtained the disputed domain name over eight years prior to the asserted USPTO registration.
Therefore, the Panel concludes that Respondent’s domain name is not identical to a valid mark owned by Complainant under Policy ¶ 4(a)(i) and finds that Complainant has not met the first required element under the Policy.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006)
(“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain
Complainant alleges that there is no evidence of Respondent’s use of the domain name in connection with a bona fide offering of goods or services, that Respondent has never been commonly known by the domain name, and that Respondent is using the domain for commercial gain to the detriment of the rightful trademark holder. Respondent asserts that it selected the disputed domain name due to the descriptive significance of the individual terms “bio” and “spa” and that it purchased the domain name at a public auction.
Respondent can establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the telecommunications industry,” where a variety of other businesses used the mark in unrelated fields).
The evidence submitted by both parties indicates that Respondent uses the disputed domain name as a landing page for paid search monetization related to the “bio” and “spa” terms. Respondent provides several screenshots of third parties using the term BIOSPA and its phonetic equivalents to support its position that the term BIOSPA as a whole is descriptive. See Z Interactive, S.L. v. Feniwel, S.A., D2009-0975 (Forum Sept. 3, 2009) (“The relevant comparison is between the Complainant's mark as a whole and the disputed domain name.”) (emphasis added). Complainant shows in its Additional Submission that several initial Google search results for “BIOSPA” display information relating to Complainant. However, although Respondent cites to no dictionary definitions of “BIOSPA” as a whole, Respondent has shown that several third party websites use BIOSPA to describe identical medical spa services and related goods. See Resp., at Attached Ex. F (demonstrating use of “bio spa” by numerous third parties for a variety of purposes, including identical services and related goods).
Respondent purchased the domain name at a public auction after a third party allowed the domain name registration to lapse, and Complainant has not shown it held a registration or common law right to the trademark when Respondent purchased the disputed domain name. Thus, Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent uses <biospa.com> for a general advertising lander that is populated with pre-loaded search terms (as demonstrated in Complainant’s Attached Annex 9). Pay per click websites “are not in and of themselves unlawful or illegitimate.” McMullen Argus Publ’g Inc. v. Moniker Privacy Servs., D2007-0676 (WIPO July 24, 2007). Further, where there has been an extended period of use of a pay-per-click website, panels have been amenable to making findings for respondents under Policy ¶ 4(c)(i). See Multicast Media Networks, LLC v. MDNH, Inc., FA 434268 (Forum Apr. 28, 2005) (finding that the respondent’s use of the disputed domain name to operate a pay-per click website from which Respondent derives revenue was considered a bona fide use within the meaning of Policy ¶ 4(c)(i), especially considering the extended period of such use); see also Accetta v. Domain Admin, FA 826565 (Forum Jan. 2, 2007) (finding the respondent’s use of the disputed domain name to operate a pay-per-click search engine was a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) because the terms of the disputed domain name were of common usage and did not refer to the complainant or its products). None of the listed advertisements include treatments by medical providers, plastic surgeons, and the like. In order to return the results displayed in Complainant’s Annexes 12 and 13, search terms must be manually entered. The Panel therefore finds that Respondent had no intention of infringing upon any rights Complainant has asserted in the BIOSPA mark through its operation of <biospa.com> for nearly ten years.
The Panel finds that Complainant has not met the second required element under Paragraph 4(a)(ii) of the Policy.
The Panel finds that Complainant has also failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Complainant asserts that Respondent is using the domain name in bad faith to divert customers from Complainant by linking to businesses directly competing with Complainant, for a fee, which links are operated for profit by Respondent. Complainant further contends that the domain name was registered to prevent Complainant from obtaining the domain name, and that Respondent intentionally created a likelihood of confusion with Complainant’s trademark for commercial gain. Respondent alleges that it uses the disputed domain name for a general advertising lander page with pre-loaded search terms related to spas, and not the medical goods and services used by Complainant.
Complainant cites to printouts from the disputed domain to show that the parties’ goods and services are related and that Respondent is attempting to create a likelihood of confusion. However, the cited printouts only show Respondent is offering information related to spas generally, not the cosmetic surgery services offered by Complainant, as indicated in Complainant’s cited pamphlet, website, and current trademark registration for the BIOSPA mark. Complainant’s cited printout from the disputed website to show Respondent offers links to goods related to “skin medical spa” and “cosmetic laser skin care” appear to be the result of Complainant entering those specific terms into the search field, as discussed above. Those terms do not appear in the main landing page of the disputed domain, as indicated by Respondent, and Complainant does not offer evidence to rebut this assertion in its Additional Submission to this Panel.
Complainant also asserts that it made multiple offers to purchase the domain name but received no response, to show that Registrant registered and used the domain name in bad faith. A respondent’s rejection of a complainant’s offer for the purchase of the domain name in lieu of greater consideration can indicate bad faith. See Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where the respondent, a domain name dealer, rejected the complainant’s nominal offer of the domain in lieu of greater consideration); see also Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the respondent offered to sell the Domain Name to the complainant for $10,000 when the respondent was contacted by the complainant). Complainant provided some additional evidence about these offers in its Additional Submission. However, here the only rejections Respondent made to Complainant’s offers were from automated responses generated by Respondent’s website. These responses were generated by Complainant’s offer to purchase the website, not Respondent’s offer to sell. Respondent is under no duty to accept any offer made to it. Generally, “[T]he mere offering [of the domain name for sale], without more, does not indicate circumstances suggesting that Respondent registered the domain name primarily for the purpose of selling, renting, or transferring the domain name to the Complainant as required under [Policy ¶ 4(b)(i)].” LifePlan v. Life Plan, FA 94826 (Forum July 13, 2000). Here, two months after Complainant offered to purchase <biospa.com> and received an automated rejection, Complainant filed for trademark protection with the USPTO and brought this dispute in an effort to acquire the disputed domain name. Therefore, the circumstances do not suggest Respondent registered or used <biospa.com> in bad faith under Policy ¶ 4(b)(i).
Complainant also alleged that Respondent waited until a few months after Complainant’s original trademark registration was cancelled to capture the domain name for the purpose of selling or otherwise transferring the domain name to competitors of Complainant. To show bad faith by a respondent by the registration of a domain name to prevent the owner from reflecting the mark in a corresponding domain name, a respondent must have engaged in a pattern of such conduct. See Policy ¶ 4(b)(ii). The only evidence Complainant cites to show Respondent has engaged in a pattern of such conduct is a printout from <bloomberg.com> describing Respondent’s business as relating to domain names. Although the Panel notes a prior decision against Respondent in 2008, this decision alone is not sufficient to establish a “pattern” of such conduct under the Policy. See Allied Domecq Spirits & Wine Limited v. PWX, D2008-0118 (WIPO April 3, 2008) (ordering the domain name <beefeaters.net> transferred from Respondent to Complainant).
Respondent asserts that it registered the <biospa.com> domain name several years prior to Complainant’s junior registration for BIOSPA filed in 2015. This is consistent with information received from the domain name registrar and the USPTO. At the time Respondent registered the disputed domain name, Complainant’s registration had already been cancelled, albeit by only a few months. Complainant alleges this cancellation was the inadvertent result of a change in Complainant’s counsel prior to the date the Section 8 declaration of continued use was required. The change in Complainant’s counsel prior to cancellation of the mark does not negate the cancellation of the registration, and the Panel is aware of no authority that expired or cancelled trademark registrations are appropriate evidence of rights under the Policy. See DoorKing, Inc v. United Marketing Group, Inc. D2012-0952 (WIPO July 9, 2012) (finding the cancellation of Complainant’s trademark registrations due to Complainant’s changing attorneys insufficient to excuse the cancellation, holding “[w]hile the Panel has no reason to question this unsupported excuse, the Panel is aware of no authority that expired or cancelled trademark registrations are appropriate evidence of rights under the Policy. As a result, the Panel is left with no evidence in the Complaint of any rights that Complainant has in the mark .”).
Although a complainant may claim common law rights following cancellation of a mark, here Complainant has cited to no evidence showing substantial and continuous use of the mark following the cancellation, nor evidence showing Complainant has established secondary meaning in the mark, as discussed above. Complainant does not indicate how its mark was well known sufficient to put Respondent on notice of the existence of the mark, nor does Complainant show that Respondent had actual knowledge of the existence of the mark. Complainant’s cancelled trademark registration at the time Respondent registered the domain name did not put Respondent on notice that the mark was still in use. Respondent acquired <biospa.com> at a public auction conducted upon the abandonment of the domain name by the prior registrant, and had nothing to do with Complainant’s abandonment of its lapsed USPTO registration. See Resp., at Attached Ex. G (WHOIS record demonstrating that the domain name expired on September 16, 2007, and was due for deletion); see also Resp., at Attached Ex. H (Respondent’s auction receipt notification).
Respondent also argues that Complainant has provided no evidence of any fame associated with the BIOSPA mark—therefore, there could have been no bad faith registration. Even if Respondent had looked up BIOSPA through the USPTO, it would have shown that Complainant did not have rights in the mark pursuant to the previously mentioned cancellation. Where no bad faith registration can be shown, complainants fail under Policy ¶ 4(a)(iii). See Reid v. Chao, FA 154587 (Forum May 29, 2003) (finding that the respondent could not have registered the disputed domain name in bad faith where its registration came months before the complainant filed its trademark application and no evidence of common-law rights in the mark were submitted to the panel); see also Way Int’l Inc. v. Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy. The essence of the complaint is an allegation of bad faith, bad faith targeted at the complainant. For that bad faith to be present, the cybersquatter must have actual knowledge of the existence of the complainant, the trade mark owner.”). Accordingly, the Panel finds that Respondent’s registration of <biospa.com> is senior to Complainant’s filing date for the BIOSPA mark with the USPTO, and there is insufficient evidence to show Respondent could have registered <biospa.com> in bad faith.
Given this timeline, and because Complainant provides insufficient evidence that it has common law rights in the BIOSPA mark, Respondent could not have registered the domain name in bad faith. See Reid v. Chao, FA 154587 (Forum May 29, 2003) (finding that the respondent could not have registered the disputed domain name in bad faith where its registration came months before the complainant filed its trademark application and no evidence of common law rights in the mark were submitted to the panel); see also Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel therefore finds that Complainant has not met the third required element under Paragraph 4(a)(iii) of the Policy.
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of <biospa.com>, of its rights to use the disputed domain name.
Although the Panel finds that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See ECG European City Guide v. Woodell, FA 183897 (Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
Here, Complainant’s prior use and registration of the BIOSPA mark since 1998, although later cancelled, shows Complainant has not acted in bad faith in initiating this dispute. Accordingly, the Panel finds Complainant has not engaged in domain name hijacking.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <biospa.com> domain name REMAIN WITH Respondent.
Michael A. Albert, Panel Chair
The Honourable Neil Anthony Brown QC , Panelist;
Sandra J. Franklin, Panelist.
Dated: January 3, 2016
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