WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jos Daniel v. Privacy Administrator, Anonymize, Inc. / Stanley Pace
Case No. D2020-1966
1. The Parties
Complainant is Jos Daniel, United States of America (“United States”), represented by Chyrkin Law, Ukraine.
Respondent is Privacy Administrator, Anonymize, Inc., United States / Stanley Pace, United States, represented by Law Office of Howard M. Neu, PA, United States.
2. The Domain Name and Registrar
The disputed domain name <celluvation.com> (the “Domain Name”) is registered with Epik, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2020. On July 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 4, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2020. On August 21, 2020, the Respondent contacted the Center regarding an extension to the Response filing period. Pursuant to paragraph 5(b) of the Rules, the Response due date was extended until August 28, 2020. The Response was filed with the Center on August 27, 2020.
Complainant submitted an unsolicited “Additional Statement” on August 28, 2020, with annexes. In its discretion, the Panel has chosen to consider this filing.
The Center appointed Robert A. Badgley as the sole panelist in this matter on September 7, 2020. The Panel finds that it was properly constituted. 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.
4. Factual Background
Since 2007, Complainant’s company has manufactured and sold cosmetic products, including beauty masks, creams, and lotions, under the trademark CELLUVATION.
Complainant holds two current trademark registrations for the CELLUVATION trademark with the United States Patent & Trademark Office (“USPTO”). Specifically, Complainant holds USPTO Reg. No. 5,465,519, registered on May 8, 2018, for the word mark CELLUVATION, and USPTO Reg. No. 5,574,679, registered on October 2, 2018, for the stylized mark CELLUVATION. Both marks show a date of first use in commerce of January 1, 2007.
The Domain Name was first registered on April 9, 2007. According to Complainant, he was the original owner of the Domain Name, but his former business partner allegedly “stole” the Domain Name and subsequently “lost” it.
Respondent asserts that he acquired the Domain Name on May 14, 2011, after placing the highest bid at an auction. Respondent states that he owns approximately 60,000 domain names, and that he “is in the business of acquiring and using for business purposes (…) various domain names when they become available”.
The Domain Name currently resolves to a parking page which contains various hyperlinks, such as “Design Software”, “Discount Anime T Shirts,” and “Online Animation Degrees.” Complainant alleges that Respondent derives per-click revenue through these hyperlinks, and Respondent does not deny this. Respondent does note, however, that none of the hyperlinks relates to cosmetic products or beauty masks, which are the products Complainant sells under its CELLUVATION mark.
As of March 16, 2019, the Domain Name resolved to a parking page that advertised the Domain Name as being for sale.
Respondent states that his registration of the Domain Name (May 14, 2011) occurred seven years before Complainant had secured the USPTO trademark registrations discussed above (both in 2018), and therefore he could not have been aware of Complainant’s CELLUVATION mark at the time he registered the Domain Name. Specifically, Respondent stated (with emphasis added):
“There was absolutely no way that Respondent could know or should know of Complainant’s trademarks, though he researched the U.S.P.T.O. for any existing U.S. trademarks and found none on May 14, 2011…”
In his Additional Statement, Complainant notes that, although the two USPTO registered trademarks discussed above were not registered until 2018, Complainant had previously held two USPTO registered trademarks in previous years, both of which were subsequently canceled because Complainant had failed to file a renewal declaration with the USPTO. Specifically, Complainant’s company Celluvation Skin Cares, LLC held: (1) USPTO Reg. No. 3,404,701 for stylized mark CELLUVATION, registered on April 1, 2008, and canceled on November 7, 2014; and (2) USPTO Reg. No. 3,660,326 for word mark CELLUVATION, registered on July 28, 2009, and canceled March 4, 2016.
Thus, it appears that, on May 14, 2011 (the date on which Respondent states that he searched the USPTO database for any CELLUVATION marks but claims to have found none), there were in fact two active registered trademarks for CELLUVATION, both owned by Complainant’s company.
5. Parties’ Contentions
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.
Respondent asserts, as was set forth above, that he has a legitimate interest in the Domain Name, and that he did not register or use the Domain Name in bad faith.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark CELLUVATION through registration and use demonstrated in the record. The Panel also finds that the Domain Name is identical to that mark.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. The chief problem Respondent faces in this proceeding is his lack of credibility with the Panel. This is based on his unambiguous statement that, on May 14, 2011, when he registered the Domain Name, he had searched the USPTO database for any CELLUVATION trademark and found none. As set forth above, this cannot be a true statement, since, as of May 14, 2011, there were two live registered USPTO trademarks for CELLUVATION, both of which happened to be registered in connection with Complainant’s cosmetic products.
Given this blatant falsehood, the Panel cannot credit any of Respondent’s bare assertions, including his claim that he was unaware of Complainant’s CELLUVATION trademark as of May 14, 2011. The Panel finds on this record that Respondent was aware of the trademark, derived commercial gain through commercial hyperlinks at his parking page (based on the content of his current website), and ultimately sought to sell the Domain Name at a profit (based on the content of his site on March 16, 2019). Such conduct plainly does not give rise to rights or legitimate interests under the Policy.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent registered and used the Domain Name in bad faith. The Panel incorporates its finding in the previous section that Respondent, on this record and given Respondent’s lack of credibility, was aware of Complainant’s mark, and was more likely than not motivated primarily to derive commercial gain by targeting Complainant’s CELLUVATION trademark and selling the Domain Name for a sum in excess of his out-of-pocket costs, in violation of the above-quoted Policy paragraph 4(b)(i).
In the alternative, Complainant is in violation of the above-quoted Policy paragraph 4(b)(iv) by deriving per-click revenue at his website, which site likely would not have been reached except by consumers searching for Complainant.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <celluvation.com> be transferred to Complainant.
Robert A. Badgley
Date: September 11, 2020