WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Battle Ground Healing Arts v. Registration private, Domains By Proxy, LLC/ Jon and Diana Davidson, Battleground Apothecary and Natural Goods
Case No. D2021-3965
1. The Parties
The Complainant is Battle Ground Healing Arts, United States (“United States”), represented by Ceres Patent & Technology, LLC, United States.
The Respondent is Registration private, Domains By Proxy, LLC, United States / Jon and Diana Davidson, Battleground Apothecary and Natural Goods, United States.
2. The Domain Names and Registrar
The disputed domain names <bghealingarts.com> and <healingartsapothecary.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2021. On November 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 29, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent a communication to the parties regarding the additional registrant information received by the Registrar. The Complainant filed an amendment to the Complaint on November 30, 2021.
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 (the “Supplemental Rules”).
The Center received various communications from the Respondent on November 30, 2021, December 2, 2021, and December 6, 2021, to which the Center acknowledged receipt.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2021. In accordance with the Rules, paragraph 5, the initial due date was December 22, 2021, but it was extended to December 26, 2021. The Response was filed with the Center on December 25, 2021.
The Complainant submitted unsolicited supplemental filings on December 20, 2021, and December 30, 2021. The Respondent replied on December 31, 2021, to the Complainant’s supplemental filings.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on January 5, 2022. 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
The Complaint names the Complainant as “Battle Ground Healing Arts” “by its agent Jill E. Stansbury”. The Panel notes that the online Corporations and Charities Filing System operated by the Washington State Secretary of State shows that “Battle Ground Healing Arts Pllc” was registered on February 5, 2020, as a Washington professional limited liability company, with Jill Stansbury listed as both its individual “governor” and its registered agent, at the same postal address given in the Complaint. The Panel presumes that this is the entity meant as the Complainant. This entity is relatively new, appears to be controlled by Jill Stansbury, and does not hold the United States registered trademarks at issue, as detailed below. At many points the Complaint refers to the “Complainant” when discussing events that clearly took place before this entity came into existence. Hence, the Panel refers hereafter to Jill Stansbury and Battle Ground Healing Arts Pllc collectively as the “Complainant”.
The Complaint explains that “the business, Battle Ground Family Practice, was founded by Jill Stansbury in the year 1989, also doing business as BATTLE GROUND HEALING ARTS.” The Complaint attaches copies of bank statements and tax records showing that Jill Stansbury previously operated the business as a sole proprietorship “DBA” (doing business as) “Battle Ground Healing Arts” in the town of Battle Ground, Washington, United States, practicing as a naturopathic physician and herbal apothecary. The Complainant currently operates websites at “www.battlegroundhealingarts.com” and “www.healingartsapothecary.org” (both state that the business was founded in 1988).
The Complaint asserts that the Complainant’s business has used several marks continuously since 2002, obtaining the following United States trademark registrations (in addition to using the term HEALING ARTS as an “abbreviated form” of these marks):
BATTLE GROUND HEALING ARTS (standard characters)
(disclaims HEALING ARTS apart from the mark as shown)
October 18, 2016
(application March 14, 2016)
HEALING ARTS APOTHECARY(standard characters)
(disclaims APOTHECARY apart from the mark as shown)
January 12, 2021
(application October 2, 2019)
BG HEALING ARTS (standard characters)
(disclaims HEALING ARTS apart from the mark as shown)
Jill E. Stansbury DBA Battle Ground Healing Arts
March 16, 2021
(application October 18, 2019)
The Complainant Battle Ground Healing Arts Pllc also holds a Washington State registered trademark, number 1081294 (registered September 23, 2021) for BATTLE GROUND HEALING ARTS as a word mark.
The Registrar reports that the Domain Name <bghealingarts.com> was registered on November 16, 2011, by the Respondents Jon and Diana Davidson of the organization Battleground Apothecary and Natural Goods, with a postal address in Portland, Oregon, United States.
According to the Registrar, the Domain Name <healingartsapothecary.com> was created on August 19, 2015. It was registered in the name of a domain privacy service at the time of the Complaint. After receiving notice of the Complaint, the Registrar identified the underlying registrants as the Respondents Jon and Diana Davidson, showing no organization and listing a postal address in Battle Ground, Washington, United States. The Response indicates that the Respondent acquired the Domain Name “in 2018”. The Internet Archive’s Wayback Machine supports this statement. It does not have screen captures for the Domain Name <healingartsapothecary.com> before 2018, but screenshots beginning August 5, 2018 shows that this Domain Name redirected to a website associated with the Domain Name <bghealingarts.com>.
The online Corporations and Charities Filing System operated by the Washington State Secretary of State shows that the Respondent Battleground (correctly spelled “Battle Ground”) Apothecary and Natural Goods LLC is an active Washington limited liability company formed on July 6, 2011, with a postal address in Battle Ground, Washington. The Respondent Diana Davidson is listed as its individual “governor” and its registered agent.
The Domain Name <bghealingarts.com> is used for a website (the “Respondent’s website”) advertising the Respondent’s herbalist apothecary in Battle Ground, Washington and its local “practitioner partners”, who are described as naturopathic doctors, chiropractors, nutritionists, and an acupuncturist. The Domain Name <healingartsapothecary.com> redirects to the Respondent’s website. The Respondent operates a similar website at “www.bgapothecary.com”, to which the domain name <battlegroundapothecary.com> also redirects.
It appears that the Respondent Jon Davidson assisted in the registration of both Domain Names; otherwise, his role in the business is not identified. The “About Us” section of the Respondent’s website says that “ Battle Ground Apothecary & Natural Goods, LLC is owned and operated by Diana Davidson, with a lot of help and support from her family.” Accordingly, the Panel refers to Diana and Jon Davidson and Battle Ground Apothecary & Natural Goods, LLC collectively as the “Respondent”.
Although the parties’ narratives differ, it is undisputed that in 2002, the Complainant advertised its intention to establish a store on the premises of Dr. Stansbury’s naturopathic practice in Battle Ground, Washington, selling herbal medicines and other “natural goods”. The Complaint attaches a 2002 flyer announcing the coming “Apothecary and Natural Foods Deli” with herbs, vitamins, and supplements. There is no clear evidence that the store commenced business until 2005 or 2006, when the Complainant hired the Respondent Ms. Davidson to operate the store. The parties disagree about the course of their business discussions, but it is clear that these discussions culminated in an agreement in 2011 under which the Respondent Ms. Davidson purchased the inventory of the store, formed a separate business, and continued to operate the store in the same premises, renting space from the Complainant and operating in the same “complex” with other tenants renting from the Complainant with complementary practices, such as naturopathic physicians, massage therapists, and an acupuncturist.
The Respondent registered the Domain Name <bghealingarts.com> a few months later. According to the Complainant, this was without Dr. Stansbury’s prior notice or consent; the Respondent says otherwise. It is not disputed that the Respondent bore all of the expense for the Domain Name and associated website but used it to promote all of the professionals practicing in the complex as well as the Respondent’s herbal apothecary store, anticipating that they would continue to refer customers to one another. The earliest archived screenshot of the Respondent’s website, dated April 19, 2013, shows that the Respondent used the Domain Name <bghealingarts.com> to advertise the “Battle Ground Healing Arts family”, with photos of the building and the “Battle Ground Healing Arts” sign at its front, featuring photos and profiles of the Complainant Dr. Stansbury and other practitioners working at the location, in addition to more detailed information about the herbal products and supplements sold in the Respondent’s store.
The Complainant states that Dr. Stansbury was unhappy with this co-advertising. However, there is no record that she expressed dissatisfaction until June 2015, when she sent an email to a colleague in the complex concerning the website:
“If you all choose, as a group in my absence, not to alter the BGHealingArts website, I will defer to group consensus. I will only ask that the website NOT be displayed on our Main Street sign and that the domain name be changed to the BG Apothecary or something that clearly differentiates the site from my BG Healing Arts business, established in 1988. Diana and family can continue to use the Apothecary website however they see fit, just not to represent me, my BGHA business, or to display on the street sign. This is not to criticize Diana’s site for her family. They are free to choose whatever they like as long as it does not infringe upon the identity and public relations of others...We just need to get the old site off our sign and change the domain name so that there is no chance that anyone confuses me and my BGHA business with the existing site.”
The Complaint states that the Respondent continued to maintain BG HEALING ARTS signage on the store as well as using the Domain Name, despite the Complainant’s objections, following this June 2015 email. Then, in October 2015, the Respondent moved the store to a new location in Battle Ground and changed the Respondent’s website to remove all references to the Complainant. The Respondent’s website announced the move and changed its heading to “Battle Ground Apothecary“, more closely corresponding to the Respondent’s registered company name.
The Complaint and Response both detail a fraught relationship between the parties in 2015. By that time, Dr. Stansbury and the Davidsons each had an adult child living in the same building complex shared with their respective businesses. The parties failed to reach an agreement on changing domain names, web hosting, and website content. They exchanged charges of client interference and personal harassment. The record includes accounts of police calls, judicial protective orders, and court appearances as the two families untangled a once-amicable personal and business relationship.
This proceeding represents the Complainant’s second attempt to obtain the Domain Name <bghealingarts.com> through the UDRP, although the Domain Name <healingartsapothecary.com> was not involved in that earlier proceeding, as the Complainant had not discovered it. See Battle Ground Healing Arts v. Jon and Diana Davidson / Battleground Apothecary and Natural Goods, Forum Claim Number FA1912001875226 (Battle Ground I. The panel in Battle Ground I dismissed the complaint in January 2020 after reviewing many of the same facts presented here:
“The Panel finds this is a business and/or contractual dispute that falls outside the scope of the UDRP.”
The panel observed as follows:
“There are numerous arguments from both parties about their various business and personal grievances against the other, and very little discussion or proof regarding trademark rights to BG HEALING ARTS associated with the domain in question. There is no proof of a relevant trademark registration that predates the domain registration.”
5. Parties’ Contentions
The Complaint suggests that the Domain Names are identical or confusingly similar to the Complainant’s federal, state, or common law trademarks or service marks, BATTLE GROUND HEALING ARTS, BG HEALING ARTS HEALING ARTS APOTHECARY, and HEALING ARTS.
The Complainant argues that the Respondent has no rights or legitimate interests in the Domain Names because “nowhere on Respondent’s website since her separation from Complainant in 2015 have the word elements BATTLE GROUND HEALING ARTS, BG HEALING ARTS, HEALING ARTS, or HEALING ARTS APOTHECARY been used to advertise her own business.” The Complainant contends as well that the Respondent abandoned any rights to use those terms through non-use for more than three years, citing United States trademark legislation1 and the Respondent’s remarks on Facebook and its website about no longer being “under the Healing Arts umbrella”.
The Complainant argues that the Respondent has other domain names corresponding to its business name and uses the Domain Names only to confuse consumers and divert them from the Complainant in bad faith. The other domain names, such as <bgapothecary.com>, are the ones linked from the Respondent’s social media sites. The Complainant asserts that the Respondent never had the right to use the Complainant’s marks when registering the Domain Name <bghealingarts.com> in 2011. Relying on the information furnished by the Registrar that the Domain Name <healingartsapothecary.com> was “created” on August 19, 2015, the Complainant argues that this was at the time when the Respondent was “preparing” to split from the Complainant and is therefore further evidence of bad faith. The Complainant cites instances of actual customer confusion following that split and contends that the registration and use of both Domain Names was “solely and intentionally for anti-competitive purposes, diverting traffic away from Complainant’s business, diluting Complainant’s brand by confusing customers searching for Complainant’s business” and deliberately misdirecting Internet traffic to the Respondent’s website. The parties have since competed directly, in “two nearly identical businesses closely located near each other in the same community offering identical goods and services, one being the counterfeit and the other being the authentic business.”
The Complainant’s supplemental filing of December 20, 2021, submits “recent admissions” of the Respondent in the form of an advertisement published by the Respondent in the local newspaper in December 2021 recounting the Respondent’s history:
“We bought the store on Main Street back in 2011 and renamed it BG Apothecary and Natural Goods despite being known as ‘Healing Arts Apothecary’ because we rented our business space in that main street location…When we moved to 314 NE 1st Ave. in 2015 we went back to our original name BG Apothecary and Natural Goods LLC.”
The Complainant considers this to be an admission that HEALING ARTS APOTHECARY was a mark associated with the Complainant, in which the Respondent has no rights.
The Complainant made a second supplemental filing on December 30, 2021, belatedly recognizing that because its mark HEALING ARTS APOTHECARY is registered only on the Supplemental Register of the United States Patent and Trademark Office (“USPTO”) it requires further evidentiary support in a UDRP proceeding. As explained in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.2, “Complainants relying on trademark registrations listed solely on the USPTO Supplemental Register are expected to show secondary meaning in order to establish trademark rights under the Policy because under US law a supplemental registration does not by itself provide evidence of distinctiveness to support trademark rights. Even where such standing is established, panels may scrutinize the degree of deference owed to such marks in assessing the second and third elements.” The supplemental filing includes records of sales under this mark from 2016 through 2021 and evidence of use of the mark in the Complainant’s published books and social media. The earliest instance is a Facebook reference to a “Healing Arts Apothecary” in 2002, around the time when the Complainant was announcing plans for such a store.
The Respondent emphasizes that the “Complainant held no trademark(s) relating to either <bghealingarts.com> or <healingartsapothecary.com> at the times that the domains were registered.” The Response attaches evidence that “there are twenty-six businesses in the state of Washington with “Healing Arts” in their registered business name” and observes that the Complainant used a different name, “Battle Ground Naturopathic Family Practice”, until a massage therapist renting space from the Complainant arrived with the registered business name “Healing Arts Massage”. The Respondent points to examples from the Complainant’s annexed documents to illustrate that the Respondent operated the telephone reception for the Complainant’s building complex and was referred to as “Healing Arts Apothecary” for years after the Respondent was established as a separate business. The Respondent denies that the Complainant had previously established a store with that name, despite the 2002 flyer announcing intentions to open a natural food store. The Respondent points out that there is no evidence in official records of licensing such an establishment before the Respondent began managing operations there in 2005.
The Respondent argues that it has used the Domain Name <bghealingarts.com> “for nearly 10 years as an active commercial website. While it is no longer the primary website of our business, it is an important part of our online presence.” The Respondent states that it registered the Domain Name <healingartsapothecary.com> in 2018 so that its online identity would not be “overwritten” by the Complainant. The Respondent cites examples of the Complainant engendering customer confusion and purportedly changing directory listings without the Respondent’s permission.
The Respondent denies registering and using the Domain Names in bad faith. “The <bghealingarts.com> domain was originally registered, and a website created, to benefit all of the independent businesses who rented space from the Complainant.” The Respondent attaches a “Timeline” document submitted by the Complainant in Battle Ground I, which includes the acknowledgement that the “Respondent’s [sic] paid for the domain themselves and with the good faith intention of creating a website that promoted all the allied practitioners and the Natural Goods retail store at BG Healing Arts.” The Respondent claims this was done with the Complainant’s approval, at least initially, and argues that the Respondent has since taken steps to avoid confusion in the marketplace, as the Respondent has “publicly announced on the home page of our websites, as well as in the local newspaper, that we are no longer associated with the Complainant.” The Respondent insists that it has never offered to sell the Domain Names and has “made no effort to conceal or mislead regarding our ownership of the domains” or to publish false or defamatory content about the Complainant.
In reply to the Complainant’s supplement filings, the Respondent objects to the Complainant’s belated attempt to file additional evidence in support of its common law trademark claims for HEALING ARTS APOTHECARY as a mark. The Respondent stands by its statements to the effect that “Healing Arts” was a name used by the Respondent and other tenants in the Complainant’s building, and there was not an enterprise known as “Healing Arts Apothecary” until the Respondent took over the store on the premises.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(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 in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall 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”.
6.1 Preliminary Matter: Supplemental Filings
The Complainant submitted two unsolicited supplemental filings, and the Respondent replied objecting to the second of these.
Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the proceeding “with due expedition”. Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview 3.0, section 4.6.
The Complainant submitted, first, a recent newspaper advertisement by the Respondent, arguing that it amounts to an admission that HEALING ARTS APOTHECARY was a mark associated with the Complainant, in which the Respondent has no rights because the Respondent has reverted to using another name. The text of the advertisement does not, in fact, mention the Complainant, and there is other evidence in the record that the Respondent was referred to at times in the past as “Healing Arts Apothecary”. The Panel accepts the submission as newly developed evidence but finds it has little weight in establishing either the Complainant’s claimed common law rights in that name as a mark or in assessing the Respondent’s claims of rights or legitimate interests in the Domain Name <healingartsapothecary.com>.
With respect to the second supplemental submission, the Complainant, which is represented by intellectual property law counsel, should have been aware of the need to establish acquired distinctiveness for the mark HEALING ARTS APOTHECARY. Any such evidence was in the Complainant’s possession, and the Complainant controlled the timing of the Complaint and was responsible for keeping its briefing within the prescribed word limits. The Panel does not find extraordinary circumstances warranting supplemental submissions on this issue and accordingly denies the Complainant’s request to consider its supplemental filing.
6.2 Refiled Complaint
As noted above, this proceeding involves one Domain Name, <bghealingarts.com>, that the Complainant made the subject of an unsuccessful UDRP complaint against the Respondent in Battle Ground I, as well as another Domain Name, <healingartsapothecary.com>, that was not involved in that proceeding. The WIPO Overview 3.0, section 4.18, summarizes precedents on “refiled” complaints as follows:
“A refiled case is one in which a newly-filed UDRP case concerns identical domain name(s) and parties to a previously-decided UDRP case in which the prior panel denied the complaint on the merits. (The previous case may or may not be from another UDRP provider.) As the UDRP itself contains no appeal mechanism, there is no express right to refile a complaint; refiled complaints are exceptional.
Panels have accepted refiled complaints only in highly limited circumstances such as (i) when the complainant establishes that legally relevant developments have occurred since the original UDRP decision, (ii) a breach of natural justice or of due process has objectively occurred, (iii) where serious misconduct in the original case (such as perjured evidence) that influenced the outcome is subsequently identified, (iv) where new material evidence that was reasonably unavailable to the complainant during the original case is presented, or (v) where the case has previously been decided (including termination orders) expressly on a “without prejudice” basis.”
The Complainant cites the WIPO Overview 3.0 and then simply makes the conclusory statement that the “Complainant herein provides sufficient bona fide reasoning and evidence to support a refiling of her complaint on the domain www.bghealingarts.com, and a new complaint on the domain, www.healingartsapothecary.com.”
The Respondent objects that the “Complainant has not presented any new evidence that would warrant re-opening the case.”
The Complainant does not specify the elements of its “sufficient bona fide reasoning and evidence to support a refiling”. The Complaint does not allege misconduct or a breach of due process in the earlier proceeding. The Panel has addressed above the Complainant’s supplemental filing with inconclusive “new evidence” in the form of a recent advertisement published by the Respondent referring to its previous use of the name “Healing Arts Apothecary”. There are two obvious “new developments” since the Battle Ground I proceeding: the Complainant at some point discovered that the Respondent also registered the Domain Name <healingartsapothecary.com>, which is properly addressed in this proceeding, and the Complainant obtained two United States trademark registrations in 2021, for HEALING ARTS APOTHECARY (Supplemental Registry) and BG HEALING ARTS, as well as a Washington State trademark registration for BATTLE GROUND HEALING ARTS.2
These new trademark registrations are not relevant, however, to the outcome of the UDRP complaint regarding the Domain Name <bghealingarts.com>. It remains true, as the panel found in Battle Ground I, that there is no proof of any relevant trademark registration prior to the registration of that Domain Name in 2011.
It is possible that some of the evidence submitted here in support of the Complainant’s claims for common law marks was not presented in Battle Ground I; the full record in that proceeding is not before this Panel for comparison. In any event, the Complaint does not purport to present newly discovered evidence of common law trademark rights established by 2011. Proving that an unregistered mark has acquired distinctiveness (or “secondary meaning”) requires “evidence 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.” WIPO Overview 3.0, section 1.3. There is very little evidence in the record of sales, advertising, or media recognition by 2011 under any of the claimed marks BG HEALING ARTS, BATTLE GROUND HEALING ARTS, HEALING ARTS APOTHECARY, or HEALING ARTS. And there is no explanation of why such evidence was “newly discovered” and not available to the Complainant in the prior proceeding.
Accordingly, the Panel finds no exceptional circumstances that justify the reconsideration of the Complainant’s UDRP Complaint against the Respondent with respect to the Domain Name <bghealingarts.com>.
The Panel will proceed to a decision solely with respect to the Domain Name <healingartsapothecary.com>.
6.3 Substantive Issues
A. Identical or Confusingly Similar
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7. The Complainant holds a trademark registration for HEALING ARTS APOTHECARY as a standard character mark, and the Domain Name incorporates this mark in its entirety. As usual, the generic Top-Level Domain (“gTLD”) “.com” in the Domain Name string is disregarded as a standard registration requirement. See id. section 1.11.2.
As discussed above, however, the Complainant’s HEALING ARTS APOTHECARY mark is registered only on the USPTO Supplemental Register, which affords certain protections but does not establish that a mark has acquired distinctiveness. It requires, therefore, supporting evidence as in the case of unregistered (common law) marks to sustain a UDRP complaint, such as proof of duration and of the nature of use, amount of sales, extent of advertising, and degree of public recognition. See WIPO Overview 3.0, section 1.2.2. The Complainant offered some evidence of sales and advertising belatedly in its second supplemental filing, which the Panel has declined to accept for consideration (see section 6.1 above). The Panel notes that it would be difficult in any event to establish in this UDRP proceeding that the name should be recognized as a common law mark when it was so recently registered on the USPTO Supplemental Register, a sign of its relative lack of distinctiveness at least to date.
The Complainant also holds registered trademarks for BATTLE GROUND HEALING ARTS and BG HEALING ARTS, which incorporate the term “healing arts” found in the Domain Name. That term is inherently descriptive, however, and is disclaimed in both USPTO trademark registrations. The Complainant also claims HEALING ARTS alone as a common law mark but does not furnish a record of sales, advertising, or media recognition sufficient to support this claim.
The question is whether the term “healing arts” in the Complainant’s registered trademarks suffices to establish “confusing similarity” with the Domain Name <healingartsapothecary.com> for purposes of the first element of Policy.
“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” WIPO Overview 3.0, section 1.7.
As the Complainant was obliged to disclaim exclusive rights to the term “healing arts” in both of the registered trademarks BATTLE GROUND HEALING ARTS and BG HEALING ARTS, it is questionable whether this can be characterized as a “dominant feature” of the marks for comparison with the Domain Name. The Respondent points out that many other Washington businesses are registered with a name that includes the descriptive term “healing arts”. A search engine query demonstrates that “healing arts” appears in the name of tens of thousands of businesses, educational institutions, and even governmental licensing agencies.
The WIPO Overview 3.0, section 1.7 also reports that in some cases “the broader case context such as website content trading off the complainant’s reputation, or a pattern of multiple respondent domain names targeting the complainant’s mark within the same proceeding, may support a finding of confusing similarity. On the other hand, if such website content does not obviously trade off the complainant’s reputation, panels may find this relevant to an overall assessment of the case merits, especially under the second and third elements (with such panels sometimes finding it unnecessary to make a finding under the first element).”
The Panel considers this such a case, where the straightforward comparison of the Domain Name to the Complainant’s relevant trademarks is inconclusive, and the Panel must consider the “broader case context” including the Complainant’s claims that the Respondent maintained multiple domain names and published misleading website content trading off the Complainant’s reputation. These may support a conclusion that the Domain Name is in fact confusingly similar to the Complainant’s marks and meant to be so. This is better determined after considering the second and third elements below.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in a 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 domain name or a name corresponding to the domain name in connection with bona fide offering of goods or services; or
(ii) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
The Complainant has established trademark rights in the marks BATTLE GROUND HEALING ARTS and BG HEALING ARTS, although as discussed above it is unclear whether the Domain Name <healingartsapothecary.com> can be considered confusingly similar. The Respondent Battle Ground Apothecary and Natural Goods LLC was established on July 6, 2011, and by its own account acquired that Domain Name in 2018. The Respondent states that it renamed its “Natural Goods” store in 2011 to “BG Apothecary and Natural Goods” but was also commonly known as “Healing Arts Apothecary” because it shared the Complainant’s Healing Arts building and switchboard. The Respondent points to one of the Complainant’s exhibits, a screenshot from a Facebook page in 2012, to support this contention.
This is not sufficient evidence, however, to establish that the Respondent is “commonly known” by a name corresponding to the Domain Name <healingartsapothecary.com> at the time of this proceeding, which is generally deemed to be the relevant time for establishing rights or legitimate interests for purposes of the second element of the Policy. See WIPO Overview 3.0, section 2.11. Instead, the record shows that the Respondent currently uses the names “Battle Ground Apothecary and Natural Goods” and “BG Apothecary and Natural Goods” on its signage and online, with corresponding domain names and names for its social media sites.
The Panel finds that the Respondent has not established rights or legitimate interests in the Domain Name <healingartsapothecary.com> for purposes of the second element of the Policy.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Respondent of course, was well aware of the Complainant when it acquired the Domain Name <healingartsapothecary.com> in 2018 and started using it to redirect to the Respondent’s website at the corresponding Domain Name. Ms. Davidson was a former employee of the Complainant, and the parties had once amicably co-located, shared a telephone switchboard, and referred customers to one another. The Respondent had promoted the Complainant’s business for years on the Respondent’s website before their rift in 2015. Since then, they have competed in the sale of herbal medicines and natural foods and supplements, in the same geographic area, and the Respondent’s website also advertises the services of naturopathic physicians who compete with the Complainant.
The Complainant suggests that this is done to disrupt the Complainant’s business and exploit the reputation associated with the Complainant’s trademarks for commercial gain. The Complainant observes that the Respondent’s website to which the Domain Name <healingartsapothecary.com> resolves (at the Domain Name <bghealingarts.com>) retains the “trade dress” or appearance that it did when it was used before 2016 to advertise the Complainant’s business as well as the Respondent’s. This is true, but it appears that the website was from the beginning controlled and operated by the Respondent and predominantly advertised the Respondent’s products. The Respondent was therefore not mimicking the Complainant’s trade dress but, notwithstanding the particular domain name chosen to do so, retaining its own.
The Complainant acknowledges that the Respondent initially registered the Domain Name <bghealingarts.com> and established the associated website with the “good faith” intention of promoting all the tenants in the Complainant’s Healing Arts building, who referred patients and customers to one another, as the Respondent reports. By the time the Respondent acquired the Domain Name <healingartsapothecary.com>, however, the Respondent had moved from the building complex and the parties were in a contentious and competitive relationship. The Respondent asserts that it acquired this Domain Name defensively in 2018, to protect its online identity from being “overwritten” by the Complainant. The Complainant argues to the contrary that the Respondent registered this Domain Name and uses it along with the Domain Name <bghealingarts.com> to perpetuate confusion in the marketplace, diverting some customers seeking the Complainant’s practice or store.
On this contentious and complex record, both arguments appear plausible.
There is evidence that the Respondent has been known in the past by a name corresponding to the Domain Name <healingartsapothecary.com>. While there is insufficient evidence of current use to warrant a finding of rights or legitimate interests under the second Policy element, this evidence works in the Respondent’s favor in assessing bad faith at the time of registration in 2018. The Respondent had reasons to try to retain the customers it originally cultivated while using that name and operating in the “BG Healing Arts” complex, before the Complainant had any relevant trademark rights to exploit.
The Complainant may rightly suspect that the Respondent meant to target those existing or anticipated trademark rights as their competition developed from 2015, but the Panel finds that the Complainant lacks persuasive evidence of this motive on the existing record. As the panel observed in Battle Ground I, a UDRP proceeding is not well suited to assessing conflicting testimony in a commercial dispute. The Complainant bears the burden of persuasion on each element of the Complaint, and the Panel finds that the Complainant has not met that burden in the proceeding on the third element, bad faith.
This finding has consequences as well for the first element: the Panel finds that in the broader context of the case the Domain Name <healingartsapothecary.com> does not target a mark in which the Complainant has rights and this is not evidence of confusing similarity to a mark in which the Complainant has rights. The Panel concludes that the Complaint fails on the first element as well as the third.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Date: January 19, 2022
1 Under 15 United States Code section 1127, a trademark may be deemed “abandoned” where there is no use for three years and the holder cannot establish intent to resume use.
2 Note that state trademark registrations, which are not subject to the same examination procedures as federal registration applications, “are not accorded the same deference and may not on their own satisfy the UDRP’s ‘rights in a mark’ standing test.” WIPO Overview 3.0, section 1.2.2.