WIPO doesn’t admire dentist’s creative arguments.
A Missouri dental practice run by dentist Brian Henningsen has been found to have engaged in reverse domain name hijacking over the domain name AdmireYourSmile.com.
Admire Your Smile, P.C. started using the “Admire Your Smile” mark after a dentist in New Jersey registered the domain name. The Missouri dentist later tried to buy the domain name but didn’t get a response. He then threated to take legal action if he didn’t receive a response. He followed up by filing a UDRP cybersquatting complaint with World Intellectual Property Organization.
Of course, that complaint fell flat on its face. Admire Your Smile, represented by Dunlap, Bennett & Ludwig P.L.L.C., tried to come up with creative arguments why the panel should make exceptions to the language of UDRP that requires a domain name be registered in bad faith, not merely used in bad faith. It even argued that the domain was renewed in bad faith.
Panelist W. Scott Blackmer wasn’t having any of it. In finding that the case was filed in bad faith, he wrote:
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…
…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.