WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Admire Your Smile, P.C. v. James Hensley
Case No. D2019-0428
1. The Parties
The Complainant is Admire Your Smile, P.C. of Jefferson City, Missouri, United States of America (“United States”), represented by Dunlap, Bennett & Ludwig P.L.L.C., United States.
The Respondent is James Hensley of Lynbrook, New York, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <admireyoursmile.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2019. On February 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 26, 2019, 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 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 the Respondent of the Complaint, and the proceedings commenced on February 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2019. On March 1, 2019, the Center received an email communication from the Respondent. The Response was filed with the Center on March 18, 2019.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on April 1, 2019. 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 Complainant is a professional corporation offering dentistry services in Jefferson City, Missouri, United States. The Complaint states that the Complainant’s principal is a dentist, Brian Henningsen, who has practiced dentistry since 1985. However, the Panel notes that according to the online database operated by the Missouri Secretary of State, the Complainant Corporation was not formed until June 15, 2009.
The Complainant holds United States Trademark Registration Number 5395966, registered on February 6, 2018, claiming first use in commerce on June 15, 2009 for ADMIRE YOUR SMILE as a standard character service mark for dentistry services. Thus, the Complainant claims use of the mark from the inception of the corporation.
The mark appears in the Complainant’s website at “www.drhenningsen.com”, in the form of a design logo on each page of the website, and also on the Complainant’s social media pages. The mark is also used for the website’s window title in the browser tab of popular web browsers and in the page title (or “SEO title”) in the metadata captured by search engines. The Complainant has done effective search engine optimization using its mark: The first two screens of results of search engine queries based on the mark in popular browsers are almost entirely pointed to the Complainant’s website, social media pages, and directory listings.
However, the record does not include historical information about the use of the mark other than the claimed first use in commerce (June 2009) in the trademark application. The screenshots of the Complainant’s website archived on the Internet Archive’s Wayback Machine do not display the mark until December 2014.
According to the Registrar, the Domain Name was created on August 22, 2007 and is registered in the name of the Respondent, an individual residing in Lynbrook, New York, United States. The Respondent is a dentist whose practice is organized as a New York professional limited liability company named Designing Dental Smiles, PLLC in Merrick, New York, United States. The online database operated by the New York Department of State Division of Corporations shows an initial filing date for this company in January 26, 2010. The Respondent operates a website with a corresponding name at “www.designingdentalsmiles.com” (the “Respondent’s commercial website”). The Complaint attaches evidence that the domain name for the Respondent’s commercial website was registered on September 17, 2007, less than a month after the Domain Name was first registered.
It appears that the Respondent settled on the name “Designing Dental Smiles” for his business and never used “Admire Your Smile” as a company name or trademark. It is undisputed that the Respondent has never developed an active website using the Domain Name nor used it to redirect visitors to the Respondent’s commercial website. Archived screenshots from the Internet Archive’s Wayback Machine consistently show that the Domain Name has resolved to various error messages or “Under Construction” notices over the past eleven and a half years. At the time of this Decision, the Domain Name resolves to a landing page with an “Under Construction” message.
In September 2016 the Complainant attempted, through domain agents, to negotiate with the Respondent to purchase the Domain Name and then left a telephone message for the Respondent in January 2017.
The Respondent did not reply to these communications and renewed the Domain Name registration in December 2017.
The Complainant sent the Respondent an email in February 2018 shortly after obtaining its trademark registration. The email reads in part as follows:
“My name is Brian Henningsen. I practice dentistry in Missouri, doing business as Admire
Your Smile, PC.
I am also the owner of the registered trademark, Admire Your Smile.
I am interested in owning the admireyoursmile.com domain.
My efforts to accomplish this over the past year have seemingly fallen on deaf ears. I have attempted to purchase through domain agents.com, which went ignored. I have emailed you, with no response. I have called your office with no reply.
This will be my final attempt to negotiate the surrender of that domain from you.
If legal representation becomes necessary to enforce this change, I will not compensate you and may seek damages.”
This UDRP proceeding followed more than a year later.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is identical to its registered ADMIRE YOUR SMILE service mark and that the Respondent has no rights or legitimate interests in the Domain Name, as the Respondent does not use the name with permission and it does not correspond to the Respondent’s name, business or trade name, or trademark.
On the third element of the Complaint, bad faith, the Complainant acknowledges its obvious difficulty considering the timing of events: The Respondent initially registered the Domain Name nearly two years before the Complainant came into existence and started using the mark, and more than ten years before the mark was registered. The Complainant is aware that paragraph 4(b) of the Policy requires bad faith both in the registration and the use of the Domain Name and that the consensus view of UDRP panels is that “where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent”. See WIPO Overview of Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0 ”), section 3.8.1 ).
Nevertheless, the Complainant argues that this case should be considered an exceptional instance of bad faith for the following reasons:
(1) UDRP panels have favored complainants in cases involving domain names registered in specific anticipation of trademark rights (see WIPO Overview 3.0 , section 3.8.2 ). In December 2017 the Respondent was aware of the Complainant, from its earlier attempts to purchase the Domain Name, and was likely aware or had “constructive notice” of the Complainant’s pending application to register a service mark in the United States, which had been published for opposition a few days earlier. The Respondent registered the Domain Name for a shorter period than the domain name for its commercial website and out of sequence with the usual timing for renewal, indicating that the registration was a “reaction” to the Complainant’s trademark application. The Complainant concludes that the Respondent’s renewal registration was done “primarily for the purpose of disrupting the business of a competitor”, citing the Policy, paragraph 4(a)(iii).
(2) The Respondent’s failure to make any use of the Domain Name also fits the pattern of “passive holding” (see WIPO Overview 3.0 , section 3.3 ), supported by the Respondent’s non-responsiveness and efforts to conceal his identity. The Complainant urges that the “totality of the circumstances here unequivocally support finding Respondent’s passive use in bad-faith, and wholly support ‘the implausibility of any good faith use to which the domain name may be put’ ”.
The Respondent, who is not represented by counsel, does not challenge the Complainant’s service mark but observes that the Complainant had no trademark rights at the time the Respondent registered the Domain Name.
The Respondent explains his interest in the Domain Name as follows: The Respondent says that he is “not someone who collects domain names”; he has only the Domain Name and the domain name used for the Respondent’s commercial website, <designingdentalsmiles.com>. In 2005, the Respondent was practicing dentistry with a partner, who is still with the practice but no longer a partner. The Respondent states that he thought of two phrases appropriate to the dental practice that could be used as names, “Admire Your Smile” and “Designing Dental Smiles”. The Respondent registered both phrases as domain names within a few weeks of each other in 2007. While his partner liked “Admire Your Smile”, the Respondent ultimately decided to use “Designing Dental Smiles” as the name of the professional limited liability company. The Respondent has never used “Admire Your Smile” but says he hopes eventually to do so, as stated in the Response:
“I am a simple dentist, that does not bother anyone, takes care of his community and hopes one day I can own my own building to practice dentistry, and then use the name I thought of…admire yoursmile.com. I do not have or have had the opportunity or the means of making that happen yet, but it is still a dream and hope for my future.”
The Respondent, a dentist in New York, denies that he is a “competitor” with the Complainant’s dental practice in Missouri and affirms that he had never heard of the Complainant before the Complainant tried to purchase the Domain Name from him and then “bully” him into transferring it. The Respondent says he had never considered selling the Domain Name and did not register it to disrupt the Complainant’s business or misdirect Internet users seeking the Complainant. The Respondent asserts that he is holding the Domain Name for eventual use in his own business.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed 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”.
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 disputed domain name”. WIPO Overview 3.0, section 1.7. The Complainant indisputably holds a registered service mark for the standard character mark ADMIRE YOUR SMILE, confusingly similar to the relevant string in the Domain Name (which cannot include the spaces between the words because of technical restrictions in the Domain Name System). As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is not a distinguishing feature. Id.
For purposes of the first Policy element, it is not relevant whether the Complainant acquired or registered the trademark after the registration of the Domain Name; it suffices to furnish the Complainant standing. The timing may, of course, be relevant for other elements of the UDRP Complaint.
The Panel concludes that the Complainant has established the first element of the Complaint.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the 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 a 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed 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. Here, the Complainant attempts to establish a prima facie case by demonstrating its trademark rights, confusing similarity, a lack of permissive use, the Respondent’s lack of a corresponding business name or mark, and its failure to use the Domain Name for an active, relevant website.
The Respondent acknowledges that he has not yet made use of the Domain Name and did not, in the end, select a corresponding name for his business or trademark. The Respondent has also not presented evidence of “demonstrable preparations to use” the Domain Name in his business, apart from maintaining the Domain Name registration itself, despite holding the Domain Name for more than eleven years. Simply renewing the Domain Name registration without taking other steps, such as developing a business plan to use the Domain Name and related promotional materials, does not suffice to meet the requirements of Policy paragraph 4(c)(i) (see WIPO Overview 3.0, section 2.2).
The Panel concludes that the Respondent has not rebutted the Complainant’s prima facie case and therefore the Complainant prevails on the second element.
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 on which the Complainant relies (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 …”
As the Complainant recognizes, the consensus of UDRP panels is that the Policy, paragraph 4(b) is a requirement to establish bad faith both in the registration and in the use of the disputed domain name, and panels generally reject complaints in circumstances such as this where there is an unbroken chain of control over a domain name that was created before the complainant’s trademark rights accrued, regardless of the respondent’s subsequent conduct or purely “formal” changes at the time of any renewal of registration. See WIPO Overview 3.0, sections 3.8.1 and 3.9.
Here, the Respondent initially registered the Domain Name nearly two years before the Complainant came into existence and claims that it started using the mark. The Panel does not find the mark in use on the Complainant’s website until the end of 2014, more than seven years after the Domain Name was registered. Moreover, the Respondent’s Domain Name registration preceded the Complainant’s trademark registration by more than a decade.
The Complaint accepts that UDRP panels have rejected “a disjunctive interpretation” of paragraph 4(b) (bad faith in the registration or use of a domain name) or a unitary concept of registration and use, going so far as to cite Randy A. Leslein v. Domain Hostmaster, Customer ID: 69323121876872, WhoIs Privacy Services Pty Ltd / Lisa Katz, Domain Protection LLC, WIPO Case No. D2017-1233 (“Chambong”), where the panel emphasized the importance of maintaining consistency in UDRP jurisprudence and concluded:
“Whatever the possible merits of some of those arguments, the fact is that those arguments have been considered by many panels since then, and the overwhelming consensus of panelists has been to reject those arguments and to reaffirm the conjunctive requirement. That is because the plain language of paragraph 4(a)(iii) of the Policy requires a showing that the domain name has been ‘registered’ and ‘used’ in bad faith. Reading ‘registered’ as a continuous act that can be abused at any time would appear to make it essentially synonymous with ‘use’ and deprive the conjunctive phrase of its meaning”.
Nevertheless, the Complainant argues that the Respondent’s renewal of the Domain Name registration in December 2017, although it did not involve a change in ownership, was not “routine”. What the Complainant finds suspicious is that the Respondent renewed the Domain Name in December 2017, not close to the ten‑year expiration date of the registration in August 2017 but just ten days after the Complainant’s service mark application was published for opposition on November 21, 2017. The Complainant infers that the Respondent either hurried to renew the registration before the end of the Registrar’s grace period or preemptively extended the registration for a longer period, to assure that the Complainant would not be able to obtain the expiring Domain Name in which the Complainant now clearly had a trademark interest. The Complainant also notes that this out-of-sequence renewal was for two years, not for five-years as with the timely renewal of the domain name for the Respondent’s commercial website. The Complainant cites these facts as indications that the Respondent renewed the Domain Name only “reactively” to the Complainant’s trademark application.
The Complainant contends that “[t]he totality of the circumstances here cannot support any other conclusion besides the most logical one: Respondent’s registration of the Disputed Domain on Dec. 1, 2017 was a bad‑faith registration done ‘primarily for the purpose of disrupting the business of a competitor’ ”. The Complainant suggests that the Respondent was aware of the Complainant because of its earlier efforts to purchase the Doman Name and that the Respondent also had “constructive notice” of the Complainant’s trademark filing. The Complainant cites WIPO Overview 3.0, section 3.8.2, which reports as follows:
“As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.
Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application”.
These are all cases, however, where the disputed domain name is first registered or acquired with such advance knowledge of an incipient trademark, not where (as here) the same registrant renews its longstanding domain name. As the WIPO Overview 3.0, section 3.9, concludes, “panels have found that the mere renewal of a domain name registration by the same registrant is insufficient to support a finding of registration in bad faith”. Moreover, the “constructive notice” concept mentioned by the Complainant has only been applied in “limited circumstances” and where the complainant has actually obtained a trademark registration pre-dating registration of the disputed domain name, typically with corroborating factors such as the strength and distinctiveness of the mark (see WIPO Overview 3.0, section 3.2.2); none of these circumstances apply here.
The Complainant’s reliance on the “passive holding” doctrine is also misplaced. A review of the decisions cited in WIPO Overview 3.0, section 3.3 shows that transfers based on this doctrine are grounded on a distinctive mark uniquely associated with the complainant, where there is no plausible reason for the respondent to have chosen the domain name other than ultimately to exploit the mark illegitimately in one fashion or another. The Complainant urges that the “totality of the circumstances here unequivocally support finding Respondent’s passive use in bad-faith, and wholly support ‘the implausibility of any good faith use to which the domain name may be put’ ”. But that is not the case here. The Respondent chose a relevant phrase in the Respondent’s professional field, not a distinctive, established trademark.
The additional “bad faith” factor cited by the Complainant as an element of “passive holding” is that the Respondent allegedly sought to “conceal his identity by providing false contact details”. That charge is based on the Respondent giving his home address but not his office address and omitting one digit from his telephone number. The Complainant is also distressed that the Respondent did not reply to the Complainant’s offers to purchase the Domain Name. Of course, the missing digit in the telephone number did not prevent the Complainant from reaching the Respondent by telephone and email, and the Respondent is not obliged to negotiate for the sale of the Domain Name. The Respondent is also not obliged to register the Domain Name in the name of his business or use his office address. The Respondent registered with workable contact details and submitted a timely Response in this proceeding.
Finally, the Complainant’s convoluted attempt to avoid the weight of UDRP precedent against complainants with later-acquired trademark rights comes down to an ill-conceived theory that the Respondent acted in bad faith in December 2017 in renewing his Domain Name registration “primarily for the purpose of disrupting the business of a competitor”, citing the Policy, paragraph 4(a)(iii). The Panel finds it plausible that the Respondent would want to retain the Domain Name for the reasons he originally acquired it – to use, ultimately, for his dental business, because it is a phrase that virtually any dentist in an English‑speaking market could find appealing. He may find it problematic to do so, now that the Complainant has a registered United States service mark covering dentistry services. But the Complainant’s inference is simply not credible, that the Respondent renewed the Domain Name registration primarily to disrupt a “competitor’s” business. Both of them are dentists serving local markets in distant parts of the United States. It is hardly likely that a patient in Jefferson City, Missouri will be motivated to travel 1,100 miles (1,769 kilometers) to have her teeth cleaned or a crown replaced in Merrick, New York. The Respondent is surely correct is saying that while the two are in the same profession, they are not competing.
The Panel finds no merit in any of the Complainant’s arguments for bad faith. The Complainant had no trademark rights at the time the Respondent initially registered the Domain Name, and none of the exceptions (such as a change of control or advance knowledge of incipient trademark rights) apply to warrant considering bad faith at a later date, even if the Complainant’s strained interpretations of the Respondent’s motivations at the time of the renewal of the Domain Name registration were credible.
The Panel concludes that the third element of the Complaint has not been established.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking (‘RDNH’) or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
The Respondent has not expressly requested such a finding here, although he accuses the Complainant of bad faith in demanding the transfer of the Domain Name in the full knowledge that the Complainant had no trademark rights when the Respondent created the Domain Name.
Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Mere lack of success of a complaint is not sufficient to find Reverse Domain Name Hijacking. See WIPO Overview 3.0, section 4.16. A finding of RDNH is warranted, for example, in cases such as these (especially where the complainant is represented by counsel, as in this proceeding):
“(i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as … clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence.” Id.
The Complaint argued disingenuously that the Respondent (a dentist in a distant state) was a “competitor” who registered the Domain Name “less than two years” before the Complainant began using its mark in commerce and then renewed the registration in 2017 to “disrupt” the Complainant’s business. There is no plausible evidence that the parties actually compete, and the Complainant provided no historical evidence of use of its mark beyond the unexamined claim of “first use in commerce” in its much later trademark application. The Panel found that the Complainant did not, for example, place the mark on its website until the end of 2014, seven years after the Respondent registered the Domain Name, and the Complainant did not possess a registered mark even at the time of the Respondent’s renewal of the Domain Name registration in December 2017.
The Complainant did not entirely ignore “established Policy precedent”, but the Complainant’s arguments for applying exceptions to the principle of denying complaints based on later-acquired trademarks are so strained and speculative that they cannot be considered reasonable. It is highly unlikely that the Respondent, a local dentist in New York State, was eerily prescient about the business plans of a Missouri dentist two years before they came to fruition, or that he tracked announcements from the United States Patent and Trademark Office a decade later so that he could promptly “react” as part of a scheme to poach patients at some time in the future and “disrupt” the business of a dentist a thousand miles away. The Complainant offers no reasoning why the Panel should depart from UDRP precedents and consider bad faith at the time of renewal by the same registrant, even if that registrant had become aware of a later‑acquired common law or pending trademark application; the rationale of those decisions still points to the original registration as the relevant date under the plain language of the Policy. Moreover, the “passive holding” doctrine has not been applied to marks that are not yet acquired and that are not so distinctive that other legitimate uses are implausible – and the Complainant offers no considered argument for why they should be. In short, with all the relevant precedents solidly against it, the Complainant does not make a serious case for an applicable exception or for an extension of existing jurisprudence.
This case does seem to reflect an illegitimate domain name acquisition strategy. The Complainant adopted a business name without ascertaining that the corresponding “.com” domain name was already taken. Years later, the Complainant tried to purchase the Domain Name. Years after that, the Complainant obtained a trademark registration and threatened the Respondent. It may be telling that the Complainant did not act on that threat for more than a year. There are obvious gaps in the evidence and argumentation presented in the Complaint, as discussed above, despite signs that the Complainant’s counsel was aware that the third element, bad faith, would appear on its face to be impossible to establish.
The Panel finds on this record that the Complainant brought the Complaint in bad faith, in an attempt at Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Date: April 17, 2019