BODIS : Thought Convergence & John Berryhill fend off UDRP on aged domain, a 2007 domain registration, became the subject of a UDRP; Thought Convergence, Inc. acquired the domain due to its generic qualities.

Complainant is Larry S. Nichter, M.D. and Jed H. Horowitz, M.D., a Medical Corporation, doing business as “Pacific Center for Plastic Surger.”

IP attorney, John Berryhill, successfully fended off the Complainant’s claims:

  • 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.
  • Respondent contends it did not register or use <> in bad faith because Respondent had no knowledge of Complainant at the time of registration and Respondent acquired <> 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 <> 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 <>. Respondent alleges that Complainant has thus engaged in reverse-domain name hijacking.”

The three member panel at the National Arbitration Forum, consisted of Michael A. Albert, Neil Anthony Brown QC, and Sandra J. Franklin, who delivered the following findings:

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).

Respondent uses <> for a general advertising lander that is populated with pre-loaded search terms. Pay per click websites “are not in and of themselves unlawful or illegitimate.”

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.

In the end, the Panelists denied the transfer of the domain to the Complainant; at the same time, the Respondent’s request for a finding of Reverse Domain Name Hijacking was denied.

For the full text of this UDRP, click here.

Note: Thought Convergence, Inc. was co-founded by domain investor, Ammar Kubba, who is the company’s CEO. The company owns the following similar domains, further establishing its interest in generic terms:

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