Renalytix AI, Inc. v. DuanZuoChun
Claim Number: FA2006001900479
Complainant is Renalytix AI, Inc. (“Complainant”), represented by Brian J. Focarino of Cooley LLP, Massachusetts, USA. Respondent is DuanZuoChun (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <renalytix.com> (“Domain Name”), registered with 22net, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 16, 2020; the Forum received payment on June 16, 2020. The Complainant was received in both English and Chinese.
On July 9, 2020, 22net, Inc. confirmed by e-mail to the Forum that the <renalytix.com> domain name is registered with 22net, Inc. and that Respondent is the current registrant of the name. 22net, Inc. has verified that Respondent is bound by the 22net, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 13, 2020, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 3, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@renalytix.com. Also on July 13, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 7, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
The language of the Registration Agreement in this case is Chinese. The Complaint has been provided in English and Chinese.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English as to continue this proceeding in English would not materially result in prejudice to Respondent. See TRIA Beauty, Inc. v. Xu Bao Rong c/o Xu Bao, FA 1336978 (Forum Aug. 30, 2010).
A. Complainant
Complainant, Renalytix, is a leading developer of artificial intelligence-enabled clinical diagnostic solutions. Complainant has common law rights in the RENALYTIX mark based upon the extensive advertising and promotion of the RENALYTIX mark following Complainant’s establishment in 2018. Respondent’s <renalytix.com> domain name is confusingly similar to Complainant’s RENALYTIX mark, as the domain name incorporates the mark in its entirety and merely adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <renalytix.com> domain name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized or licensed Respondent to use the RENALYTIX mark in any manner. Respondent’s use of the Domain Name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the Domain Name misleads Internet users who are seeking Complainant’s products and services to a website that has no affiliation with Complainant.
Respondent registered and is using the <renalytix.com> domain name in bad faith. Respondent intends to mislead Internet users into believing some affiliation exists between Complainant and Respondent. Due to the uniqueness of the mark, Respondent had actual knowledge of Complainant’s rights in the mark. Further, Respondent fails to make an active use of the Domain Name, rather it has offered to sell the Domain Name for a sum well in excess of its out of pocket costs.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the RENALYTIX mark. The Domain Name is identical to Complainant’s RENALYTIX mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
While Complainant has a number of trade mark applications for the RENALYTIX mark, including with the USPTO, an application of a mark with the USPTO is generally not sufficient to establish rights in that mark. See Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”).
As Complainant does not have any registered trade mark rights it is therefore necessary to consider whether Complainant holds common law rights in the RENALYTIX mark as Policy ¶ 4(a)(i) does not require a complainant to hold a registered trademark if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Complainant states that it was founded in early 2018 and since that date it has offered artificial intelligence-enabled clinical diagnostic solutions for kidney disease under the RENALYTIX mark. Complainant also asserts that it has engaged in extensive advertising and promotion of its services under the RENALYTIX mark however in support of these assertions it only provides a limited selection (seven in total) of media releases and third party journal articles. In the Complaint the Complainant refers to its website at www.renalytixai.com but does not provide documentary evidence of this fact, instead providing a link to the website in the Complaint. Given the circumstances, the Panel has clicked on the link and reviewed the contents of the Complainant’s website. See Paragraph 4.8 of WIPO Jurisprudential Overview 3.0 (Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.)
This visit confirmed the Complainant’s use of the RENALYTIX Mark, its extensive partnership with the Mount Sinai Health System to develop its solution, and that it has been the subject of significant media coverage relating to its investment funding. In addition, the Complainant was listed on the AIM Market in the London Stock Exchange on November 16, 2018, the same day the Domain Name was registered. The Panel is satisfied from Complainant’s evidence as to length and manner of use that Complainant’s use of the RENALYTIX mark to offer its clinical diagnostic solutions for kidney disease is sufficient to establish secondary meaning in that mark and hence Complainant has common law rights in the RENALYTIX mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that the <renalytix.com> domain name is identical to Complainant’s RENALYTIX mark as it incorporates the RENALYTIX mark in its entirety and merely adds the “.com” gTLD. This change is insufficient to distinguish the Domain Name from the RENALYTIX mark under Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name”).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the RENALYTIX mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “DuanZuoChun” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is presently inactive and prior to the commencement of this proceeding resolved to a website indicating that the website was under construction but that “for business negotiations please contact [e-mail]”. There is no other evidence of any intention to use the Domain Name for any purpose, be it a bona fide offering or legitimate non-commercial use. In the absence of any additional evidence (none available in the present case) inactive holding of a disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel notes that Respondent’s registration of the Domain Name (on November 16, 2018) may predate the point at which Complainant’s common law rights in the RENALYTIX mark arose as Complainant had only been trading for 9 months at the time. When the registration of a disputed domain name predates Complainant’s trademark rights, Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”). However, as noted at section 3.8.2 of the WIPO Overview 3.0, “in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.”
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, November 16 2018, Respondent had actual knowledge of Complainant’s RENALYTIX mark. The RENALYTIX mark is a coined word with no meaning in the English language. It is highly unlikely to be a coincidence that on the same day the Complainant listed on the AIM Market, Respondent registered a domain name identical to the Complainant’s RENALYTIX mark. There is no obvious reason (and none has been provided) why an entity would register the Domain Name containing the coined RENALYTIX mark and not use it in any way other than take advantage of the similarity between the Domain Name and Complainant’s nascent rights in the RENALYTIX mark. In the absence of rights or legitimate interests of its own the Panel finds that Respondent’s registration of the Domain Name in awareness of the RENALYTIX mark demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
Respondent has, without alternative explanation (or other active use), registered a domain name that wholly incorporates the RENALYTIX mark, failed to use it and has offered to sell the Domain Name to Complainant for valuable consideration in excess of any out-of-pocket costs (EUR 21,000). An offer to sell a disputed domain name (regardless of whether Complainant or Respondent initiated the offer) may be evidence of bad faith per Policy ¶ 4(b)(i). See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (finding that where a respondent’s only employment of a substantially identical domain name is to attempt to sell the name, there exist sufficient grounds to find the respondent registered and used the name in bad faith per Policy ¶ 4(b)(i)). In the present case, given the nature of the Domain Name, the lack of use and the lack of alternative explanation provided by Respondent, the Panel finds that the Respondent registered and used the Domain Name in bad faith pursuant to Policy ¶ 4(b)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <renalytix.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: August 7, 2020
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