Complainant is Dr. Sherry, LLC, United States of America (“United States”), represented by Spertus, Landes & Umhofer, LLP, United States.
Respondent is Andrew Lane, Coast Science, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2021. On December 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 30, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on January 11, 2022.
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 January 14, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2022. Respondent sent an informal email on February 1, 2022. The Center sent to the Parties a possible settlement email on February 7, 2022. Complainant did not request a suspension of the proceeding. The Center informed the Parties of its commencement of the Panel appointment process on February 17, 2022.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 21, 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 BackgroundComplainant is owner of registration for the word trademark (and service mark) SHE-OLOGY on the Principal Register of the United States Patent and Trademark Office (“USPTO”), registration number 5,839,994, registration dated August 20, 2019, in International Classes (“ICs”) 16 and 44, covering various publications, and news and information, relating to women’s health, and; registration number 6,159,339, registration dated September 22, 2020, in ICs 5 and 10, covering various nutritional supplements and medical devices for use in treating women’s health issues.1
Complainant provides information and products related to women’s health, including sexual health. Complainant’s activities mainly center around Dr. Sheryl A. Ross, who uses the name “Dr. Sherry” in promotional literature, and maintains a commercial website at the domain name
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to the WhoIs database, the disputed domain name was originally created on February 14, 2015. By email dated November 8, 2020, the Registrar notified Complainant that a transfer of ownership of the disputed domain name had been completed. According to Complainant, no such transfer of ownership had been authorized by it.
Complainant and Respondent were parties to a commercial arrangement that did not meet their expectations. Respondent continues to market products using Complainant’s SHE-OLOGY trademark at a website identified by the disputed domain name.
According to Complainant, Respondent transferred the disputed domain name to itself without the consent or authority of Complainant and has impermissibly refused to return ownership of the disputed domain name to Complainant. As the Parties discussed their commercial differences, email correspondence from Respondent indicates that Respondent expended substantial financial and personnel resources in developing and launching the commercial website associated with the disputed domain name, and Respondent stated that “Custody and Control of the domain name was properly assigned to Coast for the development and utilization for sale of the Commercial Products”. (Email from Bruce J. Thompsen, CEO of Coast Science, of April 4, 2021, furnished by Complainant).
Complainant indicates that, in the course of Respondent’s IT contractor setting up the commercial website identified by the disputed domain name, Complainant provided credentials regarding its account with the Registrar in order to facilitate building the improved joint venture website, but Complainant never authorized transfer of the disputed domain name by or to anyone.
According to Complainant, its Commercial Agreement with Respondent authorized Respondent only to make limited use of its trademark.
Complainant makes reference to an email from Bruce Thompsen, dated June 15, 2020, stating as follows:
“Should we be compelled to dissolve the venture, note that Coast owns half of the website as we paid for over half of it. You may own the domain, but in a breakup the website and all the copyright is half Coast’s. The cost and time to rebuild it would be substantial. If we are to move forward which I really hope we do, this needs to be clear that Coast owns half the website and as you have agreed to previously, that any sale of the website would result in a 50/50 split between Dr. Sherry and Coast.”
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions A. ComplainantComplainant alleges that it owns rights in the trademark SHE-OLOGY and that the disputed domain name is identical to that trademark.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) theft of the disputed domain name by Respondent cannot be the foundation of a legitimate interest; (2) the Commercial Agreement, sections 6.1 and 7.2 expressly state that the SHE-OLOGY trademark is owned by Complainant, and it argues that the disputed domain name constitutes proprietary information of Complainant that remains the sole property of Complainant (section 6.4), and that pursuant to the termination provision Respondent was obligated to cease using Complainant’s trademark and other proprietary rights; (3) Respondent attempted to negotiate for rights to use Complainant’s trademark, but Respondent’s request was repeatedly rejected; (4) Respondent expressly conceded Complainant’s ownership of the disputed domain name; (5) although Complainant authorized certain access to its website to a developer to allow it to integrate with a shopping feature, it never discussed or authorized transfer of the disputed domain name to Respondent or a developer; (6) shortly after the unauthorized transfer, Respondent proposed to retain the disputed domain name and to license Complainant’s trademark; (7) Respondent subsequently offered to sell the website identified by the disputed domain name to Complainant, including remaining inventory and transfer of the disputed domain name back to Complainant for USD 200,000; (8) Complainant demanded return of the misappropriated disputed domain name from Respondent; (9) Respondent’s use of the disputed domain name in connection with the commercial website selling products with Complainant’s trademark may have been authorized during the term of the Commercial Agreement, constituting at the time a bona fide use of Complainant’s trademark in connection with the sale of products, but such authority was revoked and terminated, and Complainant has indicated its intention to continue owning and using the disputed domain name; (10) Respondent’s contractual right to sell remaining inventory after termination of the Commercial Agreement does not include ownership of the disputed domain name; (11) Respondent is selling remaining inventory at other online locations, including at Respondent’s own website; (12) Complainant is not seeking return of the commercial website identified by the disputed domain name, but rather the disputed domain name itself; (13) Respondent paid renewal fees for the disputed domain name to the Registrar only after it had misappropriated the disputed domain name; and (14) Complainant’s trademark did not lose its status as protected intellectual property upon inclusion in the disputed domain name.
Complainant argues that Respondent registered and used the disputed domain name in bad faith because: (1) proof of misappropriation of the disputed domain name establishes that the disputed domain name has been registered and used in bad faith without needing to consider other factors; (2) Complainant never authorized Respondent to transfer the disputed domain name to Respondent; (3) Respondent is using the transfer of the disputed domain name as a form of commercial leverage vis-à-vis Complainant; (4) Respondent registered the disputed domain name through its transfer with the intent to sell it back to Complainant for an amount in excess of its out-of-pocket costs; (5) Respondent was aware of Complainant’s rights in its trademark when it registered the disputed domain name; (6) Respondent threatened to sell other products on the website hosted by the disputed domain name in competition with Complainant’s trademark products, and; (7) Respondent is continuing to use the disputed domain name in efforts to secure valuable modifications to the Commercial Agreement with Complainant.
Complainant requests the Panel to direct the registrar to transfer the disputed domain name to Complainant.
B. RespondentRespondent provided the following informal response to the Complaint:
“We would like to resolve this issue as soon as possible. Please let me know the steps we need to take.”
6. Discussion and FindingsIt is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. Courier delivery was successfully completed. Respondent transmitted an informal response to the Center that indicates receipt of the Complaint. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly SimilarComplainant has provided evidence of rights in the trademark SHE-OLOGY, including by registration at the USPTO and use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s assertion of rights. The Panel determines that Complainant has established rights in the trademark SHE-OLOGY.
The disputed domain name directly and fully incorporates Complainant’s trademark without modification, adding only the generic Top-Level Domain (“gTLD”) “.com”. The Panel determines that the disputed domain name is identical to Complainant’s trademark within the meaning of the Policy.
The Panel determines that Complainant has established rights in the trademark SHE-OLOGY and that the disputed domain name is identical to that trademark.
B. Rights or Legitimate InterestsThe second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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.” (Policy, paragraph 4(c)).
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5.A., and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
This proceeding arises out of a commercial arrangement between Complainant and Respondent that was memorialized in a Commercial Agreement, further subject to negotiations regarding potential modification, and ultimately to termination by Complainant. Complainant has acknowledged that Respondent was authorized to develop a website that would be used to sell products identified by Complainant’s trademark, and that this website was developed and began to market and sell those products.
Complainant’s contention regarding rights or legitimate interests is not that Respondent did not have the right to commercially market products using Complainant’s trademark. The contention, instead, is that Respondent was never given the right, expressly or by implication, to transfer ownership of the disputed domain name from Complainant to Respondent. Therefore, even if Respondent’s commercial marketing of Complainant-branded products might have been a bona fide offering of goods in the sense of involving authorized sale of those products under Complainant’s trademark, that offering was delegitimized from the standpoint that Respondent acted unlawfully by misappropriating the disputed domain name from Complainant in the course of Respondent’s preparation of the website where those sales took place.
The Panel considers Complainant justified in arguing that a misappropriated domain name is not the subject of a bona fide use even if the products sold under that domain name are bona fide or legitimate (e.g., branded with authorization). The Panel does not consider that Respondent’s offering for sale and sale of products branded with Complainant’s trademark are bona fide if, in fact, Respondent misappropriated the disputed domain name from Complainant.
Complainant has provided evidence that the Commercial Agreement it entered into with Respondent did not confer any rights in Complainant’s trademark to Respondent. The Commercial Agreement appears silent on “domain names” as such. Nonetheless, the Commercial Agreement does not appear to confer a right on Respondent to register Complainant’s trademark as a domain name, Respondent does not appear to have been granted permission to transfer the disputed domain name from Complainant to Respondent.
Complainant denies the existence of any form of communication with Respondent authorizing Respondent to undertake the transfer of the disputed domain name to Respondent. Respondent was given the opportunity to provide evidence of such authorization, express or implied, in response to the Complaint. Respondent chose not to do so. The fact that Respondent expressly acknowledged Complainant’s continued ownership of the disputed domain name in the event of dissolution of the joint venture between the parties (see email of June 15, 2020, from Bruce Thompsen, Factual Background, supra) militates against an argument from Respondent that it inferred such a right based on surrounding circumstances. Respondent expressly acknowledged that it transferred the disputed domain name to itself, though stating that its act was proper (see email of April 4, 2021, from Bruce Thompsen, supra).
Respondent has chosen not to submit a Response. Respondent might have attempted to rebut Complainant’s factual and legal arguments. The Panel will not speculate regarding what information Respondent might have provided had it chosen to respond. On the facts before the Panel, Respondent transferred the disputed domain name from Complainant to Respondent without authority and may not use that course of conduct as the basis for establishing rights or legitimate interests.
Respondent is not making fair commercial use of the disputed domain name, and there is no other manifest basis for establishing rights or legitimate interests on behalf of Respondent.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include “(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; […] or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location”.
Respondent transferred registration of the disputed domain name to itself knowing of Complainant’s rights in its trademark and knowing of Complainant’s ownership of the disputed domain name. Respondent subsequently used its ownership of the disputed domain name to demand favorable modification of its Commercial Agreement with Complainant, or alternatively for a sum of money substantially in excess of its direct expenses associated with the disputed domain name. While Respondent has claimed (in correspondence with Complainant) that it lost a substantial amount of money in creating and executing its part of their joint venture, those expenses are not directly related to the disputed domain name. They are rather losses from flowing from the absence of sufficient sales and revenue to justify the joint venture expenses.
The list of potential bad faith conduct in paragraph 4(b) of the Policy is non-exhaustive. Misappropriating a domain name to extract monetary or contractual concessions from the rightful owner of that domain name is a form of bad faith registration and use. That is what Respondent has done here. Having recognized that Complainant owned the disputed domain name, and that Complainant would continue to own the disputed domain name upon dissolution of the joint venture, Respondent nevertheless transferred the disputed domain name to itself and used it in an attempt to extract concessions.
The Panel finds that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.
The Policy is a mechanism for addressing claims of abusive domain name registration and use. There is a commercial contract and related dispute between the parties beyond the disputed domain name. This decision does not address the totality of the issues outstanding between Complainant and Respondent. It is limited. It addresses only whether Respondent engaged in abusive registration and use of the disputed domain name.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name,
Frederick M. Abbott
Sole Panelist
Date: March 4, 2022
1 Complainant's ownership of registration number 5,839,994 is by way of assignment from Sheryl A. Ross, recorded by the USPTO on December 20, 2019.