DECISION

 

RENU MEDISPA, L.L.C. v. Angela Sattler / Aesthetics

Claim Number: FA2503002143814

 

PARTIES

Complainant is RENU MEDISPA, L.L.C. ("Complainant"), represented by Stacey L. Beaumont of HAWLEY TROXELL ENNIS & HAWLEY LLP, Idaho, USA. Respondent is Angela Sattler / Aesthetics ("Respondent"), represented by Mark W. Hendricksen of Wells St. John P.S., Washington, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <renewcda.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin and David H. Bernstein as Panelists and Steven M. Levy as Chair.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 6, 2025; Forum received payment on March 6, 2025.

 

On March 13, 2025, GoDaddy.com, LLC confirmed by e-mail to Forum that the <renewcda.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 March 17, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2025 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@renewcda.com. Also on March 17, 2025, 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 April 10, 2025.

 

On April 15, 2025, pursuant to Respondent's request to have the dispute decided by a three-member Panel, Forum appointed Sandra J. Franklin and David H. Bernstein as Panelists and Steven M. Levy as Chair.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: CONCURRENT COURT PROCEEDINGS

The parties note that there are currently pending between them two court cases involving their respective trademark rights. Rule 18 provides in pertinent part: "(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision." UDRP panels have often rendered a decision despite concurrent court litigation when the domain name issues are ancillary to other issues in those proceedings and the domain name issues can be resolved without reference to the remedies at issue in the court case. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0") at ¶ 4.14.2; Creative Paradox LLC v. Talk America a/k/a Vital Basics, Inc., FA 155175 (Forum June 23, 2003) ("the panel has decided to proceed with a decision in this case under the authority of Rule 18(a); BPI Communications, Inc. and VNU Business Media, Inc. v. Boogie TV LLC, FA105755 (Forum April 30, 2002) (Panel decided to proceed despite complainant filing suit in federal court for trademark and service mark infringement.)

 

Here, Complainant has commenced legal proceedings against Respondent in the District Court of the First Judicial District of the State of Idaho, in and for the County of Kootenai, Case No. CV28-24-1731, and also in the District Court of the Fourth Judicial District of the State of Idaho, in and for the County of Ada, Case No. CV01-24-19129 (collectively, the "Idaho Litigation"). These cases involve questions of whether the parties own certain trademark rights and whether there is any conflict between them. Respondent has submitted an October 28, 2024 Order, by the Court in the Kootenai case, denying Complainant's motion for a preliminary injunction and temporary restraining order, in which the court found that the words "Renu" and "Renew" are "descriptive in nature" and that Complainant had not supplied the court with "the necessary facts upon which the Court can determine whether the Plaintiff's mark has acquired distinctiveness sufficient to give it a secondary meaning that would entitle it to trademark protection." The court also found that Complainant had not "presented sufficient evidence to support its claim of actual confusion" because its submitted proof of vendor confusion was rebutted and its evidence of "actual confusion by customers [was] unsupported by evidence." The court went on to hold:

 

"Similarly, the Court finds that the Plaintiff [Complainant] has produced no evidence of the Defendant's [Respondent's] intent to infringe upon its trademark or any admissible evidence as to its likelihood of expansion into the North Idaho area. Neither does the Court find the Plaintiff's argument regarding similar marketing channels to be persuasive, as most businesses these days market through social media and the internet. . . .

 

"The Plaintiff's inability to provide more meaningful evidence of confusion when the lawsuit was filed some time after the Plaintiff discovered the Defendants' name is inconsistent with claims of mark confusion and urgency."

 

On March 26, 2025, Respondent filed a motion for summary judgement in that case seeking to have the claims filed by Complainant dismissed. That motion is currently pending before the court.

 

Although the Idaho Litigation involves issues of trademark validity and infringement, which are relevant to the questions presented here, including whether Complainant has trademark rights and whether Respondent is making a bona fide offering of services in connection with the disputed domain name, the Panel notes that, in the documents submitted to Forum, the disputed domain name is not mentioned or referenced in the litigation. As the UDRP is directed solely at the question of domain name transfer or cancellation, and given that Complainant commenced this proceeding with full knowledge of the pending litigation and neither party has asked the Panel to dismiss this proceeding in light of the Idaho Litigation, the Panel finds that it may proceed to a decision in this matter despite the existence of the pending litigation between the parties.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant provides medically supervised spa services and is the owner of all rights in and to the trademark RENU MEDISPA which is the subject of U.S.A. state registrations in Idaho (Reg. Nos. 18626 dated February 13, 2006 and Reg. No. 19121 dated April 24, 2007), Oregon (Reg. No. 53417 dated January 27, 2025), Montana (Reg. No. T1502708 dated January 24, 2025), and Washington (Reg. No. 1083353 dated February 3, 2025). Complainant also owns the <renumedispa.com> domain name through which the services are offered. Complainant has prominently and extensively used, promoted, and advertised the RENU marks and domain name for over twenty years. By virtue of these efforts, the RENU marks and domain name have become well-recognized by consumers as designating Complainant as the source of the services and goods so marked.

 

The <renewcda.com> domain name, registered on February 25, 2018, is confusingly similar to the RENU MEDSPA mark as it incorporates the word "renew" which is phonetically identical to the term "renu", the dominant and distinctive portion of the mark.

 

Respondent lacks rights or legitimate interests in the disputed domain name because it currently resolves to a page that offers identical services and goods to those provided under the RENU Mark, capitalizing on the Complainant's long-standing use of its Mark, and thus is not a bona fide offering of goods or services.

 

The disputed domain name was registered and is used in bad faith because it resolves to a website offering competing services primarily to profit from and exploit Complainant's RENU Mark by misdirecting internet users.

 

B. Respondent

Respondent adopted and started using the name Renew Aesthetics & IV Hydration Bar ("Renew Aesthetics") and the <renewcda.com> domain name in Coeur d'Alene, Idaho in February 2018, 345 miles away (a 6 3/4 hour drive) from Complainant. Although Complainant claims to have learned of Respondent's use in 2021, it took no action until January 2023, when its attorney wrote a letter to Respondent. The Complainant subsequently filed litigation, in the Idaho courts, in March 2024, and the court, in one of these cases, denied Complainant's motion for a preliminary injunction and temporary restraining order. The litigation is currently pending and the parties have engaged in discovery and motion practice.

 

Respondent chose a descriptive word in the field of medical spas ("renew"), combined with a geographically descriptive moniker ("CDA" for "Coeur d'Alene"). It was not aware of Complainant at the time it adopted and registered the disputed domain name. Complainant did not then (nor does it now) have an exclusive right to restrict others in the medical spa field from using the word "renew." Importantly, the State of Idaho granted Respondent its own Idaho State Trademark Registration for RENEW AESTHETICS (Reg. No. 032857 dated March 14, 2024), indicating that the Idaho Secretary of State deemed that Respondent's trademark is not confusingly similar to Complainant's two prior registrations on the Idaho trademark register in the same class of services. Thus, Respondent has a clear legitimate interest in the <renewcda.com> domain name.

 

There was no bad faith as Respondent did not hear of Complainant until five years after adopting its trademark and domain name. Also, Respondent has continuously been in operation for six years and has become recognized as providing services in the medical spa industry. Furthermore, this is a crowded field as there are numerous others in Idaho and the surrounding areas using "renu" and "renew" for spa related services.

 

FINDINGS

-       Complainant has not demonstrated its ownership of rights in the claimed RENU MEDISPA trademark to the satisfaction of this Panel under the standards applicable to the Policy;

-       Complainant has not made a prima facie case and, in any event, Respondent has proved that it is making a bona fide offering of goods and services under the disputed domain name and, thus, that it has rights or legitimate interests therein;

-       There is no evidence that Respondent targeted Complainant's trademark by registering or using the disputed domain name in bad faith; and

-       By bringing this case, Complainant has abused the Policy and engaged in reverse domain name hijacking.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

On its face, Policy ¶ 4(a)(i) requires that Complainant must prove its ownership of rights in a trademark or service mark. This has been characterized as a threshold requirement for purposes of standing to file a UDRP case. WIPO Jurisprudential Overview 3.0" at 1.2.1. The definition of trademark rights encompasses both registered and unregistered (sometimes referred to as common law) marks. Id. at 1.1.1. However, local state registrations are not accorded the same deference as national trademark registrations (e.g., from a national authority such as the United States Patent and Trademark Office ("USPTO") or a multi-national authority such as the European Intellectual Property Office) and most often do not on their own satisfy the "rights in a mark" standing test of the Policy. Id. at 1.2.2. This is because most states offer trademark registrations as a simple ministerial or administrative function and do not conduct a thorough and substantive examination of applied-for marks. See, e.g., Town of Easton Connecticut v. Lightning PC Inc., FA 1220202 (Forum Oct. 12, 2008) ("no such deference is due because State registrations, which are usually granted automatically or only after a cursory review for exact matches on the State's trademark registry, are unexamined and thus are not deserving of any presumption of validity"). This issue was highlighted in All Day $49 Montana Registered Agent, LLC v. Nathan Resnick, 1 DollarMontana, Street Legal Registration and Wasatch Real Estate LLC, D2022-4302 (WIPO Jan. 23, 2023), where the Panel noted that:

 

All of the Complainant's marks could be characterized as descriptive. The Panel considers that such unexamined, [Montana] state-registered marks of a descriptive nature are not entitled to deference with regard to standing for purposes of the first element of the Complaint but require evidence of acquired distinctiveness, which is lacking on this record.

Id.

 

Of course, the unacceptable nature of most state trademark registrations under the Policy does not preclude a party from demonstrating common law rights in a claimed mark. To meet this evidentiary burden, a complainant generally must show extensive and continuous use in commerce of a mark that is inherently distinctive or, if the mark is descriptive, that the mark has developed a secondary meaning with respect to the complainant and its business. See Iacocca v. Tex. Int'l Prop. Assocs., FA 1088017 (Forum Nov. 29, 2007) ("In order to garner the benefit of common law trademark rights, Complainant must lay out, not only evidence of extensive and continuous use of the mark in commerce, but also evince some strong probability that as a result of such exposure, that consumers have come to associate the mark with Complainant, as to the source of the goods.") The WIPO Jurisprudential Overview 3.0, at 1.3, offers the following guidelines:

 

To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant's goods and/or services.

 

Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

Id. 

 

Although it is not required that all of the above-mentioned items be submitted by a complainant, there must be enough evidence for a Panel to find that the asserted mark has inherent or at least acquired distinctiveness and is likely recognized by the relevant consuming public as a common law trademark of that specific complainant.

 

Here, Complainant has submitted copies of its state trademark registrations from Idaho, Oregon, Montana, and Washington. There is no information supplied by Complainant to demonstrate that these registrations were obtained through substantive examination of its applications through which the states considered whether the applied-for mark was distinctive and the Panel is not aware of any such process.¹ As such, the Panel declines to accept the proffered state registration certificates as sufficient proof of Complainant's rights in the claimed RENU MEDISPA trademark.

 

The Panel next turns its attention to the question of whether Complainant has established common law trademark rights. The entirety of Complainant's evidence on this point consists of a single screenshot of the home page at its www.renumedispa.com website that, while showing use of the RENU MEDISPA logo, does not provide sufficient evidence to meet any of the guidelines noted above. Further, Complainant does not provide any evidence to support its claim that the mark, even if it has been used for twenty years, is "well-recognized by consumers as designating Complainant as the source of the services and goods so marked." Thus, the Panel finds that Complainant has not submitted sufficient evidence upon which to base a finding that it possesses common law trademark rights in the term RENU MEDISPA.

 

This finding comports with and is buttressed by the finding in the Idaho Litigation, wherein the Court stated, in its denial of Complainant's motion for a preliminary injunction and temporary restraining order: "Plaintiff does not supply the necessary facts upon which the Court can determine whether the Plaintiff's mark has acquired distinctiveness sufficient to give it a secondary meaning that would entitle it to trademark protection."  In light of that finding, issued in October 2024, more than four months before Complainant filed the Complaint in this matter, Complainant's failure to come forward with evidence of secondary meaning is particularly significant.

 

As the Panel has determined that Complainant does not meet the threshold test of proving its ownership of relevant trademark rights under Policy ¶ 4(a)(i), it is unnecessary to proceed to a discussion of whether the <renewcda.com> domain name is confusingly similar to the clamed RENU MEDISPA mark.

 

It also would technically be unnecessary for the Panel to consider the second and third elements of the Policy, given that Complainant cannot prevail in the absence of establishing trademark rights. However, for completeness, the Panel will consider the parties' evidence and arguments on the second and third elements as well. Not only will that discussion provide the parties with a ruling on the issues they have presented to the Panel, and will provide other parties with guidance on how the UDRP applies in circumstances like these, but it also is relevant to the Panel's below consideration of reverse domain name hijacking ("RDNH").

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden of production then shifts to Respondent to come forward with evidence that it does have rights or legitimate interests (though the burden of proof always remains on Complainant). See WIPO Jurisprudential Overview 3.0 at 2.1; Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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"). The Complainant has not met its burden of proof.

 

Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that the respondent has "no rights or legitimate interests in respect of the domain name" and Policy ¶ 4(c) sets out three examples of how a respondent may demonstrate that it does, in fact, have these attributes. The Complaint does not specifically mention ¶ 4(c) but it does touch on certain issues which impact two of the examples of this paragraph.

 

Specifically, Policy ¶ 4(c)(i) states that rights or legitimate interests may be shown where, "before any notice to you of the dispute, your use 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". The conduct of an ongoing business, by a respondent, when viewed against all of the circumstances of a case, may satisfy the definition of a "bona fide offering of goods or services," as long as the domain name used in connection with that business is not infringing. My Healthy Home, LLC v. Joshua Harper / Home Health Experts, FA 2124448 (Forum Dec. 17, 2024) ("Respondent Healthy Home Experts LLC, is an Indiana-based company, which provides construction and home improvement services, such as crawl space waterproofing and structural repairs, with branding prominently displayed on trucks, equipment, and team uniforms. Therefore, the Panel believes that before any notice, Respondent used the Disputed Domain Name in connection with a bona fide offering of goods or services."); On AG, On Clouds GmbH v. Nguyen Luu, D2021-1714 (WIPO July 28, 2021) ("a use cannot be deemed bona fide if the disputed domain names constitute trademark infringement").

 

Here, Complainant does not dispute that Respondent does, in fact, operate a medical spa business, and its submitted evidence shows the home page of Respondent's website that contains links titled "Services", "Classes", "Book Online", "Shop", amongst others. Thus, Complainant's claim rises or falls on the question of whether Respondent's use of its name and domain name constitutes infringement; in other words, whether its business improperly uses the disputed domain name based on confusion with a trademark. As noted above, Complainant has not proven its ownership of trademark rights and so this claim cannot be sustained.

 

For its part, Respondent has submitted a number of documents which support its claim of having actually operated a medical spa for seven years under the name Renew Aesthetics & IV Hydration Bar. These include declarations from its owners/operators, the Chief Operations Officer of Respondent's external marketing and media strategy firm, and even the owner of a nearby medical spa business, all of which were filed in connection with the Idaho Litigation. Respondent also has submitted a declaration from a vendor that rebuts Complainant's alleged evidence of actual confusion. Considering all the evidence submitted, the Panel finds, by a preponderance of the evidence, that Complainant has failed to establish that Respondent's use of its name and domain name is causing actionable confusion (a finding that is consistent with the court's finding in the Idaho Litigation).

 

Rights or legitimate interests also may be shown where a respondent has been "commonly known by the domain name."  Policy ¶ 4(c)(ii).  Here, there is no dispute that Respondent has been commonly known by the name Renew Aesthetics & IV Hydration Bar for the past seven years, and that it is located in Coeur d'Alene, Idaho. Indeed, Respondent is even the owner of its own Idaho trademark registration for the mark RENEW AESTHETICS.²  Although that state registration also is not sufficient evidence of trademark rights for purposes of the Policy, it does establish that Respondent has taken formal steps to legitimize its business operation and therefore supports its assertion that the use of the disputed domain name is legitimate for purposes of the Policy.  

 

In a further effort to establish that Respondent lacks rights or legitimate interests in the disputed domain name, Complainant states that "Respondent is not a licensee of Complainant nor is Respondent otherwise authorized to use Complainant's RENU Marks for any purpose." However, as noted above, Complainant has not demonstrated its ownership of rights in its claimed trademark and has not demonstrated that Respondent's use of the disputed domain name is infringing, and so the Panel finds no support for the proposition that Respondent would need a license or authorization from Complainant to use the disputed domain name. 

 

By a preponderance of the evidence submitted in this case, the Panel finds, under Policy ¶ 4(c)(i), that Respondent is using the disputed domain name to promote its bona fide offering of goods and services and that it has done so from a time long before being on-notice of the present dispute. The Complainant has thus failed to demonstrate that the Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

A foundational question under ¶ 4(a)(iii) is whether or not Respondent had knowledge of Complainant or its claimed trademark at the time it registered the disputed domain name. Some attribution of knowledge of a complainant's trademark, whether actual or based upon a conclusion that a respondent should have known of the mark, is inherently prerequisite to a finding of bad faith under the Policy. USA Video Interactive Corporation v. B.G. Enterprises, D2000-1052 (WIPO Dec. 13, 2000) (claim denied where "Respondent registered and used the domain name without knowledge of Complainant"). Respondent claims, through signed declarations, that it and its owners had never heard of Complainant at the time that it adopted their business name and domain name in 2018. That assertion is credible given that Respondent operates in a geographically separate market which is "345 miles away (a 6 3/4 hour drive) from Complainant," and that the RENEW name is a commonly used term in the aesthetics and medical spa industry, as supported by Respondent's evidence. In fact, Respondent credibly asserts that it was not aware of Complainant until 2023 when it received a letter from Complainant's attorney. Given Respondent's lack of knowledge of Complainant, its registration of the disputed domain name cannot possibly have been in bad faith. See WIPO Jurisprudential Overview 3.0 at 3.2.2 ("where the complainant's mark is not inherently distinctive and it also corresponds to a dictionary term . . . , if a respondent can credibly show that the complainant's mark has a limited reputation and is not known or accessible in the respondent's location, panels may be reluctant to infer that a respondent knew or should have known that its registration would be identical or confusingly similar to the complainant's mark").

 

Complainant's claim of bad faith use is similarly without merit. Although Complainant submits an email from one of its vendor representatives, which, it asserts, shows actual confusion between the parties' claimed trademarks, Respondent submits a signed declaration from the same individual clarifying that its confusion was limited to a simple mistake on its marketing contact list and that it was never confused as to whether Respondent was, in fact, Complainant.  In contrast, Respondent submits evidence that it is using the disputed domain name fairly, and in good faith, to promote its business in Coeur d'Alene (a/k/a., CDA) that helps renew consumers' skin through aesthetics procedures.

 

Complainant has not come forth with any assertions or evidence to show that the disputed domain name was chosen and used with prior knowledge of Complainant's claimed mark and to target Complainant's business in bad faith. There is no evidence that Respondent registered the disputed domain name primarily for the purpose of selling it to Complainant, that Respondent registered the disputed domain name to prevent Complainant from reflecting its mark in a corresponding domain name, that Respondent registered the disputed domain name to disrupt Complainant's business, or that Respondent used the disputed domain name to cause confusion with Complainant. This leads the Panel to conclude that the disputed domain name was not registered nor is it used in bad faith under any of the examples provided in Policy ¶ 4(b) or otherwise under Policy ¶ 4(a)(iii).

 

Reverse Domain Name Hijacking

RDNH is defined in Rule 1 as a complainant "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." Rule 15(e) directs that, "[i]f after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding." Such abuse has been found in cases brought by complainants who use the Policy for leverage or harassment during or after unsuccessful litigation. Digital Overture Inc. v. Chris Bradfield / GoPets Ltd., D2008-0091 (WIPO Apr. 23, 2008) ("The Complainant should have known its case was fatally weak. The District Court findings, in relation to similar evidence presented here, should have given the Complainant notice that the Complainant lacks trademark rights in the GOPETS name.") 

 

Complainant knew, or should have known, that it could not succeed in establishing any of the UDRP elements given the favorable ruling for Respondent on Complainant's motion for a preliminary injunction and temporary restraining order in the Idaho Litigation. The Idaho court made a number of findings relevant to the present matter, including that (1) Complainant did not present sufficient evidence to support its claim of actual confusion; (2) Complainant provided no evidence of Respondent's intent to infringe upon Complainant's trademark; and (3) Complainant did not provide any necessary facts on which the Court could determine whether the claimed trademark was enforceable or had acquired distinctiveness. The fact that Complainant did not disclose the existence of that court decision in the complaint (which was filed more than four months after the decision was issued) is bad faith withholding of material evidence and shows that Complainant should have known it could not succeed in a claim under the Policy. Complainant also failed to inform the Panel that its two applications to register RENU MEDISPA before the USPTO were refused and that Complainant expressly abandoned both of those applications. See endnote i.  These facts lead the Panel to conclude that the present proceedings were brought in an effort to harass Respondent.

 

A finding of RDNH is especially appropriate here given that Complainant is "'represented by competent legal counsel,'" and counsel "is not expected to 'initiate[] a proceeding that is quite clearly devoid of merit.' Attorneys are expected to have an appreciation for the jurisprudence of the forums in which they practice." Domain Name Arbitration, 7.11-D.1 (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019), citing Sustainable Forestry Management Limited v. SFM.com and James M. van John 'Infa dot Net' Web Services, D2002-0535 (WIPO Sep. 13, 2002). See also Electrosoft Services, Inc. v. TechOps / SyncPoint, FA 1969515 (Forum Dec. 9, 2021) ("Panels have traditionally held parties represented by counsel to a higher standard especially when deciding whether to make a finding of RDNH.") See also WIPO Jurisprudential Overview 3.0, at 4.16 ("some panels have held that a represented complainant should be held to a higher standard.")

 

Here, Complainant is represented by legal counsel and the Panel notes that this law firm has represented parties in at least eighteen prior UDRP cases, most of them successfully. It is therefore surprising that it would have proceeded with the current claim despite the various and obvious indications that it could not succeed.

 

For the above reasons, the Panel finds that Complainant has engaged in reverse domain name hijacking under Rule 15(e).

 

DECISION

Having not established any of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <renewcda.com> domain name REMAIN WITH Respondent.

 

 

 

Sandra J. Franklin and David H. Bernstein, as Panelists

and Steven M. Levy, as Chair

Dated: April 28, 2025