Complainant is Dr. Ava T. Shamban, United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.
Respondent is Contact Privacy Inc. Customer 1246634008, Canada / Amy Wu MD, Dr Wu Skin Solutions, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2021. On April 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 9, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 16, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 21, 2021. The Center verified that the Complaint together with the amended 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 April 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2021. The Response was filed with the Center on May 5, 2021. The Center appointed Robert A. Badgley as the sole panelist in this matter on May 26, 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 Complainant is a board-certified dermatologist who operates a clinic in the Los Angeles area. She is also a professor, an author, and a frequent guest on television shows such as The Doctors and Extreme Makeover. Complainant has also developed a line of skincare products, which she sells under the trademark AVA MD. Since May 2006, Complainant has used the trademark AVA MD in connection with “cosmetic body care services” and “skin care services.” She also sells skincare products under the trademark AVA MD. (“MD” is a well-known abbreviation for “Medical Doctor” in English.) Complainant holds various trademark registrations for AVA MD or other marks including AVA MD, including United States Patent and Trademark Office Reg. No. 3,357,264, registered on December 18, 2007 in connection with “medical services” and “health spa services, namely, cosmetic body care services,” as well as “skin care services.” Complainant has owned the domain name There is evidence in the record, in the form of various magazine articles and other periodicals, that Complainant is often referred to as “Dr. Ava”. Many of these media references also confirm Complainant’s use of the trademark AVA MD to identify and distinguish her services and her products. The Domain Name was registered on March 8, 2020. The Domain Name resolves to an inactive “error” page stating: “This site can’t be reached.” Respondent is a board-certified otolaryngologist. She states that she registered the Domain Name because her daughter’s first name is Ava, and that she has been planning since 2018 to develop and market a line of products, under the brand “AVA by DR WU”. The prototype of Respondent’s product that is annexed to the Response is a “Retinol – Vitamin A Milk Lotion” featuring the brand “AVA by DR WU”. This prototype photo is dated July 6, 2020. There is no evidence in the record of any activity by Respondent in 2018 or 2019 toward the development or branding of any product. Complainant’s counsel sent Respondent a cease-and-desist letter on March 26, 2021, using the contact information supplied in the Whois database. Complainant received no reply to this missive. 5. Parties’ Contentions A. Complainant Complainant contends that it has established all three elements required under the Policy for a transfer of the Domain Name. B. Respondent As noted above, Respondent states that she registered the Domain Name because her daughter’s first name is Ava, and that she has been planning since 2018 to develop and market a line of products, under the brand “AVA by DR WU”. 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 trademark AVA MD through registration and use demonstrated in the record. The Panel also concludes that the Domain Name is confusingly similar to Complainant’s mark. The Domain Name entirely incorporates the AVA MD mark, and adds the word “skincare.” (Because Complainant sells her line of skincare products under the AVA MD mark, the additional word “skincare” actually exacerbates the confusion between the Domain Name and Complainant’s 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. Respondent does not claim rights or legitimate interests the above-quoted Policy paragraphs 4(c)(ii) or 4(c)(iii), but does appear to seek refuge under paragraph 4(c)(i). Respondent’s stated motive vis-à-vis the Domain Name is thin, and her evidentiary support is even thinner. Perhaps above all else, the Panel simply cannot accept that Respondent was unaware of Complainant’s AVA MD trademark, used extensively and for years in the field of skincare products and services, when she registered the Domain Name on March 8, 2020. From the record supplied by the Parties, it seems far more likely Respondent was aware of the AVA MD trademark. Although Respondent claims that she registered the Domain Name because her daughter’s name is Ava, noting that she is a doctor whereas so far as the evidence presented shows her daughter is not, she does not explain why she also chose to include the letters “md” in the Domain Name. Also, since Respondent’s purported brand is “AVA by DR WU,” one must ask why “Dr. Wu” does not appear in the Domain Name. The Panel also notes that, if Respondent had begun to sell lotions under the brand “AVA by DR WU”, such a use would very likely infringe upon Complainant’s AVA MD trademark used in connection with skincare products. In any event, the unauthorized use of the Domain Name Complainant has established Policy paragraph 4(a)(ii). C. Registered or 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 has registered and used the Domain Name in bad faith. The Panel finds it more likely than not that Respondent had Complainant’s AVA MD trademark in mind when registering the Domain Name. Complainant has provided evidence that her AVA MD mark has achieved a degree of notoriety in the area of skincare products, which is also Respondent’s allegedly prospective field of commercial activity. Further, the additional term “skincare” in the Domain Name makes it almost impossible to believe that Respondent was unaware of Complainant’s AVA MD trademark and its use in the field of skincare products. Finally, Respondent did not deny Complainant’s direct allegation that “it is obvious that the Respondent had actual knowledge of the Complainant’s marks” at the time she registered the Domain Name. In the context of a UDRP case, where targeting of a complainant’s trademark is an essential element of a successful claim, a respondent’s failure to deny a direct allegation of having actual knowledge of the complainant’s trademark is rather telling. With respect to bad faith use, Respondent has not linked the Domain Name to any active website. According to Respondent, she will be using the Domain Name for a website at which her “AVA by DR WU” lotion product will be marketed. The Panel notes that, as discussed in the previous section, any such use of the Domain Name would very likely infringe upon Complainant’s AVA MD trademark. It appears to the Panel that the Parties’ respective products would be in competition, as lotions are best known as skincare products, and Respondent has not argued that her prospective product line would not overlap with Complainant’s. As such, the Panel, on this record and on a balance of probabilities, finds it more likely than not that Respondent registered the Domain Name and intends to use the Domain Name in bad faith within the meaning of the above-quoted Policy paragraphs 4(b)(iii) (disrupting the business of a competitor) and 4(b)(iv) (intentionally attempting to attract, for commercial gain, Internet users by means of creating consumer confusion between the Domain Name and Complainant’s trademark). Complainant has established Policy paragraph 4(a)(iii). 7. Decision 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 Robert A. Badgley
Sole Panelist
Date: June 8, 2021
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