Reverse domain name hijacking in spa dispute — Panel finds

Firm with pending lawsuit tries to settle trademark dispute with UDRP.

A three-member National Arbitration Forum panel has found Renu Medispa, L.L.C. guilty of reverse domain name hijacking in a dispute over the domain name RenewCDA.com.

Renu Medispa filed the UDRP in March against Angela Sattler, who operates Renew Aesthetics & IV Hydration Bar in Coeur d’Alene, Idaho. The spa registered the domain in 2018 and has operated under that brand locally for a number of years.

Renu Medispa, which operates in a different part of Idaho and uses the domain renumedispa.com, claimed rights in the mark RENU MEDISPA based on a number of state trademark registrations.

Still, the panel found that these registrations were insufficient to establish rights under the UDRP, noting that state registrations typically don’t undergo substantive examination. The panel also found Renu Medispa failed to provide evidence of common law rights, such as advertising, consumer recognition, or secondary meaning.

Further undermining the complaint, a state court judge in a related lawsuit previously denied Renu Medispa’s request for a preliminary injunction, finding that the marks were descriptive and that there was no evidence of secondary meaning or actual confusion. The UDRP panel stated Renu Medispa ought to have referenced the findings in its complaint.

Respondent Sattler submitted a sworn declaration that she had never heard of Renu Medispa when she registered the domain name in 2018 and had operated continuously under the Renew Aesthetics brand since then.

The panel found that Sattler was making a bona fide offering of services and had not targeted the Complainant’s mark in bad faith. It went further, determining that the case was brought in bad faith and constituted reverse domain name hijacking (RDNH).

Complainant knew, or ought to have known, that it could not succeed in establishing any of the UDRP elements given the favorable ruling for Respondent on Complainant’s motion for a preliminary injunction and temporary restraining order in the Idaho Litigation. The Idaho court made a number of findings relevant to the present matter, counting that (1) Complainant did not present sufficient evidence to support its claim of actual confusion; (2) Complainant provided no evidence of Respondent’s intent to infringe upon Complainant’s trademark; and (3) Complainant did not provide any necessary facts on which the Court could determine whether the claimed trademark was enforceable or had purchased distinctiveness. The fact that Complainant did not disclose the existence of that court decision in the complaint (which was filed more than four months following the decision was issued) is bad faith withholding of material evidence and shows that Complainant ought to have known it could not succeed in a claim under the Policy. Complainant also failed to inform the Panel that its two applications to register RENU MEDISPA ahead of the USPTO were refused and that Complainant expressly abandoned both of those applications. These facts lead the Panel to conclude that the present proceedings were brought in an effort to harass Respondent.

This is another example of a firm trying to use UDRP to settle a trademark dispute, not a cybersquatting dispute.

Hawley Troxell Ennis & Hawley LLP represented the Complainant, and Wells St. John P.S. represented the domain name owner.