The domain name Rejuve.com was acquired by domain investor and entrepreneur, Merlin Kauffman, in 2019.
Kauffman, founder of Soothe.com, formed a business entity offering services under this new brand and filed for a trademark.
Another company, Rejuve Clinics LLC, filed a UDRP to get the domain, on the basis of an existing mark. The Respondent was represented by IP attorney, John Berryhill, who noted:
The Respondent was incorporated on October 23, 2018, before the Complainant filed its ITU application to register REJUVE on November 14, 2018. The application was not amended to claim use in commerce until June 14, 2019, and the REJUVE mark was not registered until August 13, 2019. Although the Complainant’s Statement of Use (SOU) claims first use as of January 8, 2018, the Complainant has provided no evidence of the nature of the use, no evidence of whether the Respondent likely would have known of it, and no evidence that the Respondent selected the disputed domain name, registered on February 1, 2019, to cybersquat or otherwise take advantage of the Complainant’s trademark rights. The fact that the Complainant asserts that it did not have use “in commerce” until June 14, 2019, suggests that the Complainant’s use prior to that date may have been limited to a single state.
The three member WIPO panel ordered the domain Rejuve.com to remain with the Respondent. Full details on this decision follow:
The domain transfer was denied.
Rejuve Clinics LLC v. Merlin Kauffman, Rejuve Inc.
Case No. D2019-26071. The Parties
The Complainant is Rejuve Clinics LLC, United States of America (“United States”), represented by ADLI Law Group, United States.
The Respondent is Merlin Kauffman, Rejuve Inc., United States, represented by John Berryhill, Ph.d., Esq., United States.
2. The Domain Name and Registrar
The disputed domain name <rejuve.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2019. On October 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 30, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 1, 2019.
The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2019. The Response was filed with the Center on November 30, 2019.
The Center appointed William R. Towns, William F. Hamilton, and David H. Bernstein as panelists in this matter on January 2, 2020. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel issued an administrative procedural order on January 9, 2020. The Parties were afforded an opportunity to file supplemental submissions regarding the potential impact on this proceeding, if any, of a certain purchase and sale agreement entered into between Rejuve Inc. (“Purchaser”) and Wellness Management Services, LLC (“Wellness Management”). The Complainant forwarded its supplemental submission to the Center on January 16, 2020. The Respondent forwarded its supplemental submission to the Center on January 23, 2020. The date for the Panel to submit its decision to the Center was extended to February 6, 2020.
4. Factual Background
The Complainant is a limited liability company organized under the laws of California. The Complainant is a provider of medical clinic services, and the owner of a United States trademark registration for REJUVE, U.S. Reg. No. 5836357, filed November 14, 2018, and registered by United States Patent and Trademark Office (“USPTO”) on August 13, 2019. The Complainant claims first use of the REJUVE mark on January 8, 2018, and use in commerce on June 10, 2019.1
The Respondent is Rejuve Inc., incorporated in Delaware on October 23, 2018. Merlin Kauffman (“Kauffman”) is the principal of Rejuve Inc. The Respondent registered the disputed domain name <rejuve.com> on February 1, 2019, after acquiring the disputed domain name in the Afternic.com secondary domain market.2 The Respondent subsequently filed ITU trademark applications with the USPTO for REJUVE (word), U.S. Serial No. 88/288,695, and R. REJUVE. (design plus words), U.S. Serial No. 88/298,377 (“Respondent’s REJUVE applications”). The Respondent’s REJUVE applications were filed on February 4, 2019, and February 12, 2019, respectively. The applicant of record is Rejuve Inc. The goods and services claimed by the Respondent are described as downloadable software for scheduling cosmetic treatment services at a customer’s location and for appointment scheduling services for cosmetic treatment service providers to schedule cosmetic treatment services at customers’ locations.
The Complainant on March 6, 2019, filed with the USPTO an ITU application for the REJUVE mark, U.S. Serial No. 88/328,024. The goods and services claimed by the Complainant are described as downloadable software for scheduling of medical clinic and house call services, namely intravenous therapy and stem cell therapy treatments and for scheduling medical clinic and house call services, namely intravenous therapy and stem cell therapy treatments.
Wellness Management is a Pennsylvania limited liability company organized in September 2011 to provide wellness and medical spa and salon services. The initial owner was Jason Michael Holly. Wellness Management conducted its business under the fictitious name “Rejuve”, which was registered with the Pennsylvania Secretary of State in 2011.3
On September 1, 2019, Rejuve Inc. acquired the entire interest in Wellness Management pursuant to a “Pennsylvania LLC Purchase and Sale Agreement” (“Purchase Agreement”), entered into between Rejuve Inc. (“Purchaser”) and Wellness Management, as seller. The Purchase Agreement conveyed to Rejuve Inc. all rights, title, interest and goodwill respecting trade names, trademarks or service marks in and to “REJUVE”, any variations thereof and related registrations, and all rights of priority thereto. The purchase price was USD 1.00. Kauffman also acquired from the previous owner Jason Michael Holly a 100% ownership interest in Wellness Management. Kauffman thus evidently obtained a controlling interest in Rejuve Inc. Wellness Management represented in the Purchase Agreement that it owned no real property, no leased property, and no inventory. As discussed further below, it appears that Wellness Management may have discontinued offering services under the “Rejuve” name in the latter half of 2018.
On September 10, 2019, the Respondent’s REJUVE applications were published for opposition. The Complainant thereafter initiated Opposition proceedings in the USPTO’s Trial and Appeal Board (“TTAB”) on October 2, 2019. The Respondent subsequently filed an Answer and Counterclaim on December 11, 2019. The Respondent’s Counterclaim seeks cancellation of the Complainant’s REJUVE mark. The Respondent notified the Center of the Respondent’s Counterclaim on January 3, 2020. Under the current TTAB scheduling order, the Parties’ case will not come before the TTAB for hearing until May 2021, at the earliest.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name <rejuve.com> is identical to the Complainant’s registered REJUVE mark. According to the Complainant, it is clear that the Respondent intends to use the disputed domain name with a website offering appointment services and medical clinic services, the latter being the same or substantially similar to services offered by the Complainant under its REJUVE mark. The Complainant compares a screenshot of the Respondent’s website, displaying a list of medical services, with a screenshot of the Complainant’s website, which also advertises medical services.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant contends that the Respondent was aware of the Complainant’s REJUVE mark when registering the disputed domain name, and maintains that the Respondent intentionally registered the disputed domain name in order to prevent the Complainant from registering a domain name reflecting the Complainant’s REJUVE mark.
The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant, while acknowledging that the Respondent’s ITU trademark applications refer to appointment scheduling services and related software, nonetheless insists that the Respondent registered the disputed domain name in order to deceive the public into believing that the Respondent has the right to provide medical services under the Complainant’s registered REJUVE mark.
B. Respondent
The Respondent urges the Panel to exercise its discretion to suspend, terminate or continue proceedings in this case as provided for in Rule 18(a). The Respondent contends it would be circuitous for the Complainant to rely upon the non-registered status of the Respondent’s marks to argue lack of rights, when that status is contingent on resolution by the TTAB of substantially the same underlying issues on which a decision under the Policy would turn. The Respondent notes that opposition proceedings provide for full discovery and a comprehensive trial conducted under the rules of civil litigation. The Respondent maintains that the Policy was intended only to address clear-cut cases of cybersquatting, and that UDRP panels are ill equipped to decide disputes involving the weighing of respective trademark rights.
The Respondent acknowledges that the Complainant is the record owner of a United States trademark registration for REJUVE “for medical clinic services”. Given that the disputed domain name is <rejuve.com>, the Respondent accepts this as sufficient to satisfy the first element of the Policy. The Respondent does not concede, however, that the Complainant’s trademark registration is either valid or entitled to priority relative to the Respondent. The Respondent also questions whether the Complainant is authorized to provide “medical clinical services” in the state of California, asserting that the Complainant is not in compliance with California Business and Professions Code section 2285, which, according to the Respondent, requires the Complainant to hold a fictitious name registration.
The Respondent submits the record is more than sufficient to demonstrate that the Respondent possesses substantial legitimate rights in the REJUVE mark senior to any claim of the Complainant, and that the Respondent is commonly known by the disputed term “Rejuve”. The Respondent emphasizes that the disputed domain name was registered on February 1, 2019, whereas the Complainant’s application to register the REJUVE mark, although filed on an ITU basis on November 14, 2018, was not amended to claim use until June 14, 2019, and the REJUVE mark was not registered until August 13, 2019. The Respondent thus maintains that the registration of the disputed domain name pre-dates any enforceable rights the Complainant might assert in its REJUVE mark.
The Respondent claims ownership of all right, title and interest in Wellness Management, a Pennsylvania limited liability corporation formed in August 2011, which, according to the Respondent, has carried on business as “Rejuve” from 2011 until its recent acquisition and reorganization. The Respondent holds itself out as the successor in interest to the goodwill, business, and assets of the medical and cosmetic treatment clinic that has operated as “Rejuve” since 2011. The Respondent maintains that use of the “Rejuve” name has not been abandoned, although such use briefly has been curtailed pending the reorganization and launch of the Respondent’s app. Aside from this, the Respondent represents that its predecessor in interest has operated the “www.rejuvewb.com” website under the name “Rejuve” from 2012 to the present. The Respondent further submits that sample screen captures from “Archive.org” reflect such use, and claims substantial prior rights in the use of “Rejuve” since 2011, including the fictitious name reservation “Rejuve” used for clinic operations, and prominently displayed on the “www.rejuvewb.com” website.
The Respondent contends that the Complainant has failed to demonstrate that the disputed domain name has been registered and used in bad faith. The Respondent maintains that it should be clear from the Respondent’s obvious priority and longstanding use of REJUVE by its predecessor in interest that no claim of bad faith conceivably could be asserted based on the Complainant’s factual allegations. The Respondent asserts that the disputed domain name was registered prior to any assertion of rights by the Complainant in the REJUVE mark. The Respondent explains that a pending ITU application does not confer rights in the mark, and that an allegation of first use is but a mere allegation that must be proven by the Complainant. The Respondent further states that the Complainant has submitted no evidence of the existence of common law rights predating the Complainant’s registration of the REJUVE mark. Conversely, the Respondent maintains that its longstanding rights in and the use of “Rejuve” as a trade name and trademark are sufficient to establish the Respondent’s common law rights in the REJUVE mark.
C. Parties’ Supplemental Submissions
(i) Complainant’s Supplemental SubmissionThe Complainant asserts there is no connection between the Respondent’s acquisition of Wellness Management, the fictitious business name “Rejuve,” or any other component of the September 1, 2019 Agreement that would entitle the Respondent to register and use the disputed domain name. According to the Complainant, even if the Purchase Agreement conveyed to the Respondent trade name, trademark and service mark rights in REJUVE, “one cannot convey what one doesn’t have.” The Complainant contends that neither the Respondent nor its predecessor has secured federal or state trademark registrations for REJUVE for use with spas and related services. The Complainant allows that, while the Respondent might be able to assert common law rights in REJUVE for use with spa services, the Respondent has submitted no evidence of such use outside of Pennsylvania.
The Complainant takes issue with the Respondent’s claim that screenshots captured by the Respondent on “Archive.org” establish continuous use of the “www.rejuvewb.com” website from 2012 to the present. The Complainant argues that the Respondent’s screen captures do not reflect continuous use of the “Rejuve” name, and document nonuse of the “Rejuve” name by the Complainant since as early as August 8, 2018.
(ii) Respondent’s Supplemental SubmissionAccording to the Respondent, the Complainant has conceded the Respondent’s common law rights in the REJUVE mark as used in connection with spa services in Pennsylvania. The Respondent contends the Complainant’s concession in this regard is sufficient to allow the Panel to deny the Complaint. The Respondent explains that the outcome of this dispute is not dependent on whether the Respondent has demonstrated use in interstate commerce, but in any event calls attention to relevant factors that the Respondent submits support the use of the mark in interstate commerce.
The Respondent contends the Complainant does not dispute that the Respondent is a successor in interest to a business with a longstanding right to use “Rejuve” as a registered fictitious business name in Pennsylvania. The Respondent represents that the Complainant has acknowledged the Respondent to be a successor in interest to the <rejuvewb.com> domain name, and asserts that the Complainant has never objected to the use of the domain name. The Respondent argues that, under general principles applied by UDRP panels, the use of “Rejuve” in Wilkes Barre, Pennsylvania is sufficient to establish legitimate rights or interests under the Policy.
The Respondent observes that the Complainant appears to be attempting to assert an abandonment argument. The Respondent explains that the operation of its “www.rejuvewb.com” website has been “momentarily discontinued” due to other preparations being made in connection with software development. The Respondent contends that, under applicable U.S. law, abandonment requires a discontinuation of use with no intent to resume use, and must be proven by affirmative evidence. The Respondent further acknowledges that under U.S. law a rebuttable presumption of abandonment arises after three years of nonuse.
The Respondent submits that the REJUVE mark as used by the Respondent’s predecessor has not been abandoned. The Respondent contends that any nonuse does not remotely approach three years, referring to the continued good standing of Wellness Management, and to the renewal of the <rejuvewb.com> domain name registration well past 2018. The Respondent also cites the following as evidence of non-abandonment: preparations to improve services through the launch of a new software app, acquisition of a shorter domain name, and applications for federal registration of multiple REJUVE marks.
6. Suspension or Termination of Administrative Proceeding under Rule 18(a)
The Policy was designed to protect the parties’ court options before, during and after a UDRP proceeding, as evidenced in paragraph 4(k) of the Policy. Pursuant to paragraph 18(a) of the Rules, when notified 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.” This is a matter that a panel may raise on its own initiative.
The Policy was adopted to deal with the problem of cybersquatting – that is, the abusive registration of domain names consisting of, including, or confusingly similar to marks belonging to another for the purpose of profiting from the goodwill associated with the mark. The questions that the Panel has jurisdiction to address under the Policy are relatively simple and straightforward. Such proceedings are summary in nature, without the benefit of confrontation of the witnesses or of a hearing. Jason Crouch and Virginia McNeill v. Clement Stein, WIPO Case No. D2005-1201.
As previously noted, the Complainant initiated Opposition proceedings in the TTAB on October 2, 2019, in connection with the Respondent’s REJUVE applications. The Respondent then filed an Answer and Counterclaim on December 11, 2019. Such trademark issues are not ordinarily within the purview of UDRP proceedings, and the domain name dispute between the Parties in this UDPR proceeding is at best ancillary in relation to the ongoing TTAB litigation. See Quadrific Media Private Limited v. Rajat Agarwal, WIPO Case No. D2017-1050. It appears that the Parties’ case will not come before the TTAB for hearing until May 2021, at the earliest. And, while the TTAB may eventually rule on issues of trademark ownership and priority, the TTAB will not address cybersquatting issues.
Having regard to the foregoing, the Panel has determined to proceed to a decision on the merits. As noted in section 4.14.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), UDRP panels generally favor the issuance of decisions on the merits in overlapping court-UDRP scenarios, even though such UDRP decisions would not be binding on the court. See Displays Depot, Inc. v. GNO, Inc., WIPO Case No. D2006-0445. In the attendant circumstances, the Panel considers that the expediency of a decision under the Policy may prove beneficial to the Parties. See WIPO Overview 3.0, section 4.14, and relevant decisions cited therein.
7. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the domain name once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <rejuve.com> is identical to the Complainant’s REJUVE mark, in which the Complainant has established rights by virtue of the USPTO’s registration of the mark. In considering this issue, the first element of the Policy serves essentially as a standing requirement.4 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name. In this case, the Complainant’s REJUVE mark is clearly recognizable in the disputed domain name.5 Top-Level Domains (“TLDs”) can be disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, unless the TLD has relevance in a particular case.6
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that the Complainant has made a prima facie showing under paragraph 4(a)(ii) of the Policy. It is undisputed that the Respondent has not been authorized to use the Complainant’s REJUVE mark. The Respondent nonetheless registered the disputed domain name for use with a downloadable app to schedule in-home appointments for cosmetic treatment services and service providers, which the Complainant maintains are substantially similar to services and products offered by Complainant under its REJUVE mark.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent maintains that it is a successor in interest to Wellness Management, with a longstanding right to use “Rejuve” as a registered fictitious business name in Pennsylvania since 2011. The Respondent submits it is entitled as a successor in interest to the <rejuvewb.com> domain name to use “Rejuve” in a domain name (whether or not followed by the initials “wb” for “Wilkes Barre”), and further submits that such use establishes rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(c)(i) of the Policy.
The Respondent submits that, before any notice to it of the dispute, demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services had been undertaken. The Respondent describes Kauffman as a founder of online professional services scheduling apps, including “Soothe”, which has been profiled in an article in Forbes magazine. According to the Respondent, substantial expense and effort has gone into Kauffman’s developing an on-demand scheduling app, which the Respondent represents it is prepared to launch. The Respondent has provided copies of sample developer invoice payment records, uploaded records showing the development of the app from the initial version 1.0.0 to a more recent version (1.3.0), and screenshots depicting potential pages for the as yet unlaunched “www.rejuve.com” website.
However, the Complainant has alleged that the Respondent’s registration and use of the disputed domain name will infringe upon the Complainant’s REJUVE mark, and that the Respondent thus cannot not establish rights or legitimate interests in the disputed domain name. Moreover, there are, in the Panel’s view, legitimate questions regarding the Respondent’s acquisition of Wellness Management, and whether the Respondent consequently possesses rights in the REJUVE mark senior to any claim of the Complainant.
As discussed earlier, on September 1, 2019, approximately seven months after the Respondent registered the disputed domain name, Rejuve Inc. acquired the entire interest in Wellness Management for the purchase price of USD 1.00. Wellness Management represented in the Purchase Agreement that it owned no real property and no leased property. In light of the foregoing, and given the Respondent’s nonuse of REJUVE beginning in approximately August 2018, it is plausible that Wellness Management either had closed or was in the process of closing its business. With respect to the question of whether Wellness Management had any trademark rights in REJUVE to sell, the Panel notes that the Purchase Agreement lacks any representation that the mark was valid and subsisting or that the mark was still in continuous use.
As previously noted, the Respondent has acknowledged that the use of the REJUVE trademark was discontinued in August 2018. However, the Respondent represents that the operation of its “www.rejuvewb.com” website has been “momentarily discontinued” only, due to other preparations being made in connection with software development. The Respondent submits that the REJUVE mark has not been abandoned.
The Lanham Act, at 15 U.S.C. §1127, provides that a mark shall be deemed to be “abandoned” when its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances, and nonuse for 3 consecutive years constitutes prima facie evidence of abandonment. The record in this case appears to reflect the Respondent’s continuous nonuse of the REJUVE mark since at August 8, 2018, and possibly earlier.
As noted, under the Lanham Act, an intent not to resume use of a mark may be inferred from relevant circumstances. Taking into consideration the Respondent’s nonuse of the REJUVE mark for some 20 months, accompanied by little more from the Respondent than conclusory statements that use will be resumed at some point, an inference might conceivably be drawn that the Respondent has abandoned use of the REJUVE mark. The evidence submitted to the Panel is inconclusive on this issue and its resolution, if necessary, is more appropriate in a proceeding involving a full exchange of documents and testimony.
As noted earlier, the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy. In view of the Panel’s determination under paragraph 4(a)(iii) of the Policy, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests with respect to the disputed domain name under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the respondent registered the disputed 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
The Complainant contends that the Respondent was aware of the Complainant’s REJUVE mark when registering the disputed domain name. The Complainant maintains that the Respondent intentionally registered the disputed domain name in order to prevent the Complainant from registering a domain name reflecting the Complainant’s REJUVE mark. However, and as discussed below, the Complainant has not brought forth evidence that can establish by a preponderance that the Respondent, when registering the disputed domain name, sought to profit from and exploit the Complainant’s rights in its REJUVE mark.
As previously discussed, Wellness Management was organized in September 2011. Wellness Management conducted business under the fictitious name “Rejuve”, which was duly registered with the Pennsylvania Secretary of State. Wellness Management used the fictitious name “Rejuve” in connection with wellness and medical spa and salon services since as early as 2011. No evidence has been presented to the Panel that the Complainant ever objected to the Respondent’s use of the fictitious name “Rejuve” or to Wellness Management’s registration and use of the <rejuvewb.com> domain name.
The Respondent was incorporated on October 23, 2018, before the Complainant filed its ITU application to register REJUVE on November 14, 2018. The application was not amended to claim use in commerce until June 14, 2019, and the REJUVE mark was not registered until August 13, 2019. Although the Complainant’s Statement of Use (SOU) claims first use as of January 8, 2018, the Complainant has provided no evidence of the nature of the use, no evidence of whether the Respondent likely would have known of it, and no evidence that the Respondent selected the disputed domain name, registered on February 1, 2019, to cybersquat or otherwise take advantage of the Complainant’s trademark rights. The fact that the Complainant asserts that it did not have use “in commerce” until June 14, 2019, suggests that the Complainant’s use prior to that date may have been limited to a single state.
The Complainant also contends that the Respondent knew about the Complainant’s REJUVE trademark application and “swooped in and purchased” the disputed domain name to deprive the Complainant of it. The Registrar’s WhoIs records reflects a creation date for the disputed domain name of June 26, 2001. The Respondent subsequently registered the disputed domain name on February 1, 2019, after it became available for purchase in the “Afternic.com” secondary domain market. The Complainant has offered no explanation why it could not also have made efforts to acquire the <rejuve.com> disputed domain name, had it so desired. It certainly has offered nothing other than conjecture to support a finding that Respondent knew about the Complainant’s REJUVE trademark application when it purchased the disputed domain name. The fact that Respondent was incorporated before that application was filed supports the opposite conclusion.
For the reasons discussed above, the Panel concludes that the Complainant has failed to carry its burden of demonstrating bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy.
Accordingly, the Panel finds that the Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy.
8. Decision
For the foregoing reasons, the Complaint is denied.
William R. Towns
Presiding PanelistWilliam F. Hamilton
PanelistDavid H. Bernstein
Panelist
Date: February 6, 20201 The Complainant’s application to register REJUVE was filed on an intent-to-use (“ITU”) basis. The Complainant subsequently amended the application to a use basis. The Complainant submitted a sworn Statement of Use (and specimen) on June 14, 2019, claiming first use anywhere on January 8, 2018, and first use in commerce on June 10, 2019. The USPTO issued a Notice of Acceptance of Statement of Use on July 9, 2019, and the registration certificate was issued on August 13, 2019.
2 The registration date is reflected in an invoice from Afternic provided by the Respondent. The invoice also identifies Kauffman as the purchaser of the disputed domain name.
3 In Pennsylvania, use of fictitious names is governed by the Fictitious Names Act of 1982, (54 Pa. C.S. §§ 301 et seq.), as amended. Any individual, sole proprietorship, partnership, corporation, limited liability company or other form of association conducting commercial activities under a name other than its proper name must register this name with the Pennsylvania Department of State. A new owner is required to publish a notice that it has filed or intends to file an application for registration of a fictitious name.
4 See WIPO Overview 3.0 , section 1.7.
5 See WIPO Overview 3.0, section 1.8 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
6 The meaning of a particular TLD may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. See WIPO Overview 3.0 , section 1.11 and cases cited therein. See also WIPO Overview 3.0, section 1.8.
