Complainant is Pure Proactive Health, Inc. d/b/a Betr Health, United States of America (“United States”), represented by Envision IP, United States.
Respondent is Kevin Appelbaum, United States, represented by Goodwin Procter, LLP, 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 July 20, 2020, with regard to two disputed domain names. On July 21, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On July 22, 2020, the Registrars transmitted by emails to the Center their verification response disclosing registrant and contact information for the two disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 23, 2020, 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 July 23, 2020, and requested the withdrawal of the Complaint as it related one of the disputed domain names. The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO 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 July 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2020. The Response was filed with the Center on August 13, 2020. On August 13, 2020, Complainant submitted a supplemental filing in reply to the Response. Exercising its discretion, the Panel chose to consider this supplemental filing. The Center appointed Robert A. Badgley, Frederick M. Abbott, and the Hon. Neil Brown, Q.C. as the three-member panel in this matter on September 14, 2020. 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 According to the Complaint, “Complainant, Pure Proactive Health, Inc. d/b/a Betr Health is a leading digital therapeutics provider that utilizes proprietary technology to provide personalized treatment programs that address obesity, chronic and metabolic diseases, and wellness.” These programs “include digital coaching, nutrition and meal planning, and lifestyle and behavior modification programs.” Complainant asserts that 20,000 clients in the United States have successfully participated in Complainant’s programs. Complainant was founded in 2015, and in 2016 began to use the trademark BETR HEALTH in connection with its programs. Complainant operates its online business at a website accessible at the domain name Complainant also offers a mobile software application under the BETR trademark. According to Complainant, its app “will provide a personal coach to help you plan your grocery list each week…” This app is available to the general public. Complainant holds two registered trademarks with the United States Patent & Trade Office (“USPTO”) for the mark BETR, including USPTO Reg. No. 5,108,062 (registered December 27, 2016, for “medical and wellness services, namely, providing weight loss program services”), and USPTO Reg. No. 5,233,391 (registered June 27, 2017, for “computer software for providing health and wellness coaching”). The claimed date of first use in commerce for both of these BETR marks is February 5, 2016. Respondent was founded in 2015, using the name FareWell, LLC. In early 2018, Respondent changed its name to “Better Therapeutics, LLC.” According to the WhoIs record, the Domain Name was first registered on October 23, 2017. According to Respondent’s CEO (and one of its founders), however, Respondent acquired the Domain Name on or about February 14, 2018. The Domain Name resolves to a fully developed website at which Respondent offers its “Better Therapeutics” services. Respondent’s website states: “Better treats serious cardiometabolic diseases to transform lives and reduce healthcare utilization through the use of digital therapeutics.” The website indicates that Respondent aims to treat “diabetes, hypertension, cardiovascular disease, and obesity.” Further, the website states: “By combining a non-prescription version of our software with expert health coaches and nurses, we deliver a cost-effective solution to innovative health plans seeking to reduce healthcare utilization among their members with cardiometabolic diseases.” Respondent offers a mobile app to deliver “digital behavioral therapy” for its clients, including those with “serious chronic diseases such as Type 2 diabetes.” Respondent’s app is accessible via a passcode, which can be obtained only by a doctor’s prescription or by authorization by a health insurer that has partnered with Respondent. It appears that the services of both Complainant and Respondent are offered to clients through the same large health insurer. By way of demonstrating consumer confusion, Complainant notes that, in 2019, this insurer mistakenly posted on its website an image of Respondent’s mobile app even though the insurer was trying to feature Complainant’s services. Respondent’s CEO states in a sworn affidavit that he was unaware of Complainant or its BETR mark at the time Respondent registered the Domain Name. According to this affidavit, the CEO was first aware of Complainant when Complainant sued Respondent on or about June 28, 2019. That suit apparently was dismissed on January 22, 2020. Respondent provides no further information about this lawsuit, including the allegations made therein and basis on which it was dismissed. Complainant makes no mention of the lawsuit at all. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name. Most pointedly, Complainant asserts that Respondent deliberately targeted Complainant and its BETR mark to mislead the public by offering services in direct competition with Complainant. Complainant also argues, in its supplemental filing, that, even if Respondent did not register the Domain Name in bad faith, it is currently using the Domain Name in bad faith. B. Respondent Respondent asserts that it has a legitimate interest in the Domain Name, and that it has not targeted Complainant and its BETR trademark. According to Respondent, it is not a direct competitor of Complainant, even though both Parties offer “healthcare related mobile applications.” 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 or is being used in bad faith. The Panel observes that, unlike claims under the Uniform Domain Name Dispute Resolution Policy (“UDRP”), which applies to many domain names with various Top-Level Domains, the .IO Policy (which governs this case) does not require a complainant to prove bad faith registration and bad faith use of the subject domain name, but requires only proof of bad faith registration or bad faith use of the domain name. This difference was not manifested in the Complaint or the Response, but was raised by Complainant in its supplemental filing. A. Identical or Confusingly Similar Given its decision below on the issue of bad faith registration or use, the Panel need not consider this element.1 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. Given its decision below on the issue of bad faith registration or use, the Panel need not consider this element.2 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 or 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 Complainant has failed to prove that Respondent registered or used the Domain Name in bad faith. The Panel first observes that the mark BETR is not the same as “Better,” and the latter word is widely used in marketing and advertising brands throughout the English-speaking world, and is even included within many brand names. The Panel also notes that Complainant has provided very little evidence that its BETR mark is well known. Complainant refers to 20,000 clients, but that figure on its own does not suffice to establish, on a balance of probabilities, that some other firm – even one operating in the general healthcare field – would more likely than not be aware of the BETR mark. According to Respondent’s CEO, in a sworn statement presented to the Panel, the Domain Name was registered in conjunction with Respondent’s rebranding of its services from “FareWell” to “Better Therapeutics.” Respondent’s CEO states under oath that he had never heard of Complainant or its BETR trademark at the time the Domain Name was registered. Given the fact that Complainant’s mark is BETR (a coinage, not a preexisting word), and given the commonness of the word “Better,” the Panel has little reason to doubt that sworn statement. Complainant has simply failed to carry its burden of proving bad faith registration on the part of Respondent. Complainant argues in the alternative that a transfer is warranted because, since Respondent became aware of the BETR mark by virtue of the lawsuit Complainant filed against Respondent on or about June 28, 2019, Respondent has continued to use the Domain Name to operate a website in “direct competition” with Complainant, with full awareness of the BETR mark. The Panel finds this alternative argument ultimately unavailing. The Panel first observes in this vein that it is curious that neither Party – and in particular Complainant – did not discuss the Parties’ seven-month litigation in their submissions to the Center. In any event, even after becoming aware of a mark aurally similar to its “Better Therapeutics” brand, Respondent did not necessarily commit bad faith use of the Domain Name by continuing its website activity in the same manner as it had done for nearly a year and a half. If Respondent had ceased to use the Domain Name after the lawsuit began, it might have suffered a disruption in its business. Further, given the clear difference between the mark BETR and the word “Better” in Respondent’s brand, Respondent could very well have persisted in a good-faith belief that its Domain Name was not infringing Complainant’s mark. For instance, it could have received a legal opinion to the effect that its use of the Domain Name was non-infringing. Again, the Panel has no idea what was alleged in the litigation between the Parties, nor what was said in defense of the suit, nor why the suit was dismissed. More information about the lawsuit might have shed useful light on the dispute before the Panel now, particularly as it relates to bad faith use after June 28, 2019, but it is conjecture to say so. In any case, the Panel has no insight into that prior dispute. In sum, based on this record, and given Complainant’s burden of proof, the Panel concludes that Respondent has not used the Domain Name in bad faith within the meaning of the Policy. The Policy is designed to address clear cases of abusive Domain Name registration and use. This is not such a case. Complainant has not established Policy paragraph 4(a)(iii). 7. Decision For the foregoing reasons, the Complaint is denied. Robert A. Badgley Frederick Abbott The Hon. Neil Brown Q.C. 1 Panelist Brown wishes to say that in his view the Domain Name is not confusingly similar to the trademark. The Domain Name is clearly generic and, in contrast, the Internet user would see the trademark as a unique stand-out, separate and distinct from the wider concept embraced by the Domain Name. Indeed, Respondent is probably right in submitting that the trademark has been coined to create this very uniqueness. 2 Panelist Brown wishes to say that in his view Respondent has shown that it has both a right and a legitimate interest in the Domain Name. The significance of the Domain Name is that it has clearly been chosen to reflect the name of Respondent’s company and its application. Also, the Domain Name is made up from two generic words and there has been no targeting or other untoward conduct by Respondent that might negate its right or legitimate interest.
Presiding Panelist
Panelist
Panelist
Date: September 28, 2020
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