WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Maven Esthetics, LLC v. Diana Roth, The Browtique
Case No. D2021-3499
1. The Parties
Complainant is Maven Esthetics, LLC, United States of America (“United States”), represented by Dunlap Codding, P.C., United States.
Respondent is Diana Roth, The Browtique, United States, represented by Cook Alex Ltd., United States.
2. The Domain Names and Registrars
The disputed domain names <eyebrowmaven.com>, and <thebrowmaven.com> (the “Domain Names”) are registered with GoDaddy.com, LLC, and Tucows Inc., respectively (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2021. On October 22, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On October 22, 2021, and October 25, 2021, the Registrars transmitted by email to the Center its verification responses 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 November 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2021. On November 25, 2021, Respondent requested for an extension and the due date for Response was extended to November 29, 2021. The Response was filed with the Center on November 29, 2021.
On December 3, 2021, Complainant submitted an unsolicited supplemental filing to the Center. On Wednesday, December 15, 2021, Respondent submitted to the Center an unsolicited reply to Complainant’s supplemental filing. In its discretion, the Panel has decided to consider both Parties’ supplemental filings.
The Center appointed Robert A. Badgley as the sole panelist in this matter on December 10, 2021. 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
This is a fairly contentious dispute between two estheticians whose salons are some 30 miles apart in or around Chicago, Illinois, United Stats. The Parties’ services both include the beautification of eyebrows. The Parties raise a number of factual allegations and arguments that are not essential to a resolution of this case. The Panel therefore will not address the extraneous allegations and arguments raised by the Parties.
Complainant Maven Esthetics, LLC provides various beauty services, such as hair removal treatments including waxing, and eyebrow treatment services including brow waxing, threading, tinting, and microblading. Based in Chicago, Illinois, United States, Complainant was founded and is owned by “Constance.” Complainant Maven Esthetics, LLC and Constance shall hereafter be referred to collectively as “Complainant.” Constance had more than a dozen years’ experience working as an esthetician for another employer before adopting the nickname “Brow Maven” and, eventually, opening her own business.
Respondent, The Browtique, founded and owned by “Diana,” is based in suburban Chicago, Illinois, United States, less than 30 miles from Complainant’s studio. The Browtique was founded in 2009, according to the Response. The Response describes “Diana” as “a highly skilled and sought-after esthetician and instructor whose establishment was licensed to perform microblading and permanent makeup services on September 14, 2015.” The Browtique and Diana shall hereafter be referred to collectively as “Respondent.”
Complainant has owned the domain name <browmaven.com> since January 22, 2015. That domain name currently resolves to a website describing Constance and her origins in the esthetics field, as well as her purported expertise in the area of microblading. Complainant does not state when this website was actually set up and linked to the <browmaven.com> domain name. According to Respondent and a “Wayback Machine” (“www.archive.org”) screenshot, as late as August 5, 2018, Complainant had no active website at the <browmaven.com> domain name. In its supplemental filing, Complainant did not dispute Respondent’s assertion that Complainant had no actual website as of August 5, 2018.
Complainant filed a trademark registration on August 29, 2019, for the trademark BROW MAVEN (with a disclaimer of rights in the word “BROW”) with the United States Patent and Trademark Office (“USPTO”) in connection with “beauty and waxing salon services.” The application indicates a date of first use in commerce of January 2015. The USPTO registered the BROW MAVEN service mark on April 7, 2020, under USPTO Reg. No. 6,027,616.
Complainant asserts that it “has prominently and extensively used, promoted, and advertised BROW MAVEN and <browmaven.com> for over six years.” Complainant, however, has provided little or no evidence of its actual use of the BROW MAVEN mark as a source identifier for its services until much more recently than six years ago. A 2021 screenshot of Complainant’s website at “www.browmaven.com” states that Constance first opened her own studio in 2016. This site also includes several undated testimonials from clients. As noted above, it seems undisputed on this record that Complainant made no use of the <browmaven.com> domain name until much more recently than “over six years” ago – as of August 5, 2018, that domain name resolved to a parking page.
There is nothing in the record to indicate how extensively Complainant has advertised the BROW MAVEN mark, or how well-known that mark is, or how many customers Complainant has, and so forth. More importantly, the record is devoid of such evidence at the relevant points in time, viz., at the time Respondent registered the Domain Names (in 2016 and 2017).
The Domain Name <eyebrowmaven.com> was registered on June 5, 2016. The Domain Name <thebrowmaven.com> was registered on March 7, 2017.
The Domain Names resolve to Respondent’s website, where Respondent’s eyebrow and other esthetician services are marketed. Respondent annexed to the Response a screenshot of its website as of August 23, 2018. The site features Diana and her eyebrow services. Also annexed to the Response are Instagram posts dating back to 2016, in which Respondent Diana refers to herself as the “Eyebrow Maven” and refers to the company name, the Browtique.
On August 13, 2020 (concerning the Domain Name <thebrowmaven.com>) and September 21, 2020 (concerning the Domain Name <eyebrowmaven.com>), Complainant’s counsel sent cease-and-desist letters to Respondent. In these letters, Complainant asserts that it began using the BROW MAVEN trademark in 2015. These letters also state that Respondent’s use of the Domain Names has “caused actual confusion.” No evidence of actual consumer confusion, however, has been provided by Complainant in this proceeding.
On August 18, 2020, Respondent Diana replied to Complainant’s cease-and-desist letter, disputing Complainant’s contention that Complainant was entitled to the Domain Name <thebrowmaven.com> and pointing out that she had also registered the Domain Name <eyebrowmaven.com> in 2016. Respondent Diana also provided evidence of her use of “@eyebrowmaven” as her Instagram handle. Respondent’s disclosure about the Domain Name <eyebrowmaven.com> evidently prompted Complainant’s second cease-and-desist letter of September 21, 2020, discussed above.
5. Parties’ Contentions
Complainant contends that it has proven all three elements required under the Policy for a transfer of the Domain Name.
Respondent denies Complainant’s contentions. Respondent’s main arguments of relevance to this case are twofold: (1) Respondent lacked any knowledge of Complainant or her BROW MAVEN trademark until August 13, 2020 (the first cease-and-desist letter), which was several years after Respondent had registered and begun using the Domain Names for Respondent’s legitimate business; and (2) Respondent’s lack of knowledge of the BROW MAVEN mark is plausible, because (a) “brow maven” is a common term to describe an expert in eyebrow treatment services, (b) Complainant provided little or no evidence that its BROW MAVEN mark had acquired any meaningful distinctiveness by the time the Domain Names were registered, and (c) numerous third parties use the term “brow maven” in its generic sense, i.e., as an expert in brow treatment services.
In this latter vein, Respondent furnishes numerous examples of third parties using the term “brow maven” in its generic sense, such as: “Oprah’s brow maven,” “fellow brow maven [name omitted],” “a brow maven and lash enthusiast,” “the ultimate gift for brow mavens,” and many more.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(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 trademark BROW MAVEN through the USPTO registration granted on April 7, 2020. The Panel also concludes that the Domain Names are confusingly similar to that mark. The addition of the word “the” in one Domain Name is of virtually no consequence. The addition of the word “eye” in the other Domain Name is also nearly meaningless. The words “brow” and “eyebrow” are virtually synonymous in most contexts. In sum, the mark BROW MAVEN is clearly recognizable within the Domain Names.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
For each of the Domain Names, 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.
Given its conclusion in the “Bad Faith” section below, the Panel need not address the “Rights or Legitimate Interests” issue. The Panel notes, however, that on the record provided it appears that Respondent was legitimately using the Domain Names in connection with a bona fide offering of services, before notice of a disputing trademark.
C. Registered and Used in Bad Faith
For each of the Domain Names, 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 has not registered and used the Domain Names in bad faith. Based on the evidence presented, and on a balance of probabilities, the Panel finds Respondent’s claim not to have been aware of Complainant’s BROW MAVEN mark at the time the Domain Names were registered to be plausible. On this record, the Panel sees little reason to believe that Respondent was aware of that mark until the July 13, 2020, cease-and-desist letter was received. Even though BROW MAVEN is a registered trademark, the term appears to be widely used by third parties to describe someone with an expertise in eyebrow treatment. Finally, even though the Parties’ beauty salons are less than 30 miles apart, there is simply no evidence in the record upon which to doubt Respondent’s denial of knowledge of the mark until July 13, 2020.
The Panel renders no opinion on the issue whether Complainant may have a viable trademark infringement claim under the federal Lanham Act. Whether such a claim lies is outside the scope of the UDRP, which deals with bad-faith registration and use of a domain name by a respondent who lacks a legitimate interest in the domain name. The UDRP is not, strictly speaking, concerned with the typically more difficult question whether one party’s use of a mark is senior and superior to another party’s use of that mark.
Complainant has not established Policy paragraph 4(a)(iii). The Complaint therefore fails.
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Date: December 18, 2021