Lumos Pharma, Inc. v. Mark Meuwese
Claim Number: FA1204001439367
Complainant is Lumos Pharma, Inc. (“Complainant”), represented by Jessica M. McGlynn, Texas, USA. Respondent is Mark Meuwese (“Respondent”), represented pro se, The Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lumospharma.com>, registered with Enom, 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.
M. Kelly Tillery, Esquire as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 13, 2012; the National Arbitration Forum received payment on April 13, 2012.
On April 16, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <lumospharma.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 April 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2012 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@lumospharma.com. Also on April 19, 2012, the Written Notice of the Complaint, notifying Respondent of the email 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.
A timely Response from Respondent was received and determined to be complete on May 7, 2012.
An Additional Submission from Complainant was received on May 11, 2012.
An Additional Submission from Respondent was received on May 16, 2012.
On May 14, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed M. Kelly Tillery, Esquire as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant Contends That:
B. Respondent Contends That:
1. Complainant does not allege that Respondent’s domain name is identical or confusingly similar to Complainant’s intent-to-use U.S. trademark that it uses to research, test, and treat genetically linked disease that causes mental retardation;
2. Complainant has not established that the mark has become distinctive as an identifier of Complainant’s goods or services and has not shown that it even has or uses a website;
3. Respondent focuses on an emerging market that is the next step away from energy drinks, with a completely different product offering from Complainant;
4. Complainant’s rights postdate Respondent’s registration of the disputed domain name by two months and postdate Respondent’s use of the name by twenty months;
5. Respondent has used the “Lumos Pharma” mark continuously since early 2009 in connection with instant energy for increased concentration and better performance;
6. Respondent has common law rights in the mark through its actual use of the mark, which rights are allowed under Dutch law;
7. Complainant applied for its trademark without ever having used the mark in commerce or elsewhere;
8. Products for Respondent’s website are in development but launching energy products within the existing international rules takes time;
9. Complainant’s arguments that the Chamber of Commerce in Austin, Texas, USA, talking about Complainant but linking to Respondent shows that even locally no one knows about Complainant or any existing website that Complainant uses;
10. Respondent has rights and legitimate interests in the disputed domain name for its product line;
11. Respondent could not have registered the disputed domain name in bad faith because it registered the domain name when Complainant did not even exist.
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.
Complainant contends that it has protectable rights in its LUMOS PHARMA mark by virtue of an Intent-to-Use (“ITU”) Trademark Application that its CEO filed with the USPTO (Ser. No. 76,705,625 filed December 9, 2010). Although Complainant has not presented evidence of any current and valid trademark registrations either with the USPTO or any other trademark authorities, Policy ¶ 4(a)(i) does not require a complainant to produce a trademark registration to have rights in its asserted mark, so long as complainant can establish its rights under common law. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant seems to rest its Policy ¶ 4(a)(i) rights argument on its ITU Trademark Application with the USPTO. Complainant asserts that in September of 2010, Richard J. Hawkins began discussions to obtain specialized medical technology that could treat or prevent a specific form of genetically-linked mental retardation in the population and that Mr. Hawkins was acting as a promoter for the LUMOS PHARMA entity that he intended to form. Complainant contends that it contacted a company to design a logo for this new entity. Complainant asserts that the design company held a “design contest” on October 28, 2010 that would lead to a winning design for Complainant’s company. In November of 2010, Complainant contends that Mr. Hawkins attempted to buy the disputed domain name, but it was unavailable, so he instead purchased the <lumos-pharma.com> domain name. Further, Complainant asserts that on December 9, 2010 it submitted its ITU Trademark Application to the USPTO, and in January of 2011, Mr. Hawkins formed Complainant as a Texas, USA corporation. Complainant contends that it subsequently obtained patent licensing for medical technology that it needed and in September of 2011, received a multi-million dollar grant from the National Institute of Health’s rare disease program.
However, Complainant’s Trademark Application is and remains an Intent-To-Use Application; without any date of First Use, and Complainant does not claim any particular date of when its rights in the mark should attach or any particular date of actual First Use. Arguably and presumably, it would be December 9, 2010, the date of the ITU Trademark Application, a date after Respondent’s registration of the domain name on October 30, 2010.
Even if Complainant’s pending ITU Application establishes “rights” in the mark, said rights are inchoate until there is actual use and it files an Affidavit of Use with the USPTO. See Fila Sport, S.p.A. v. Diadora America, Inc., 141 F.R.D. 74 (N.D. Ill. 1991); Mkt Corner Realty Assoc., LLC v. CGM-GHLLC, 2004 WL 1077918 (S.D.N.Y. 2004). Respondent’s domain name registration (10-30-10) and use (as early as 2009) trump Complainant’s rights, at least as to the domain name. Thus, at least for purposes of these proceedings, Complainant has not proven that it has rights in a trademark and certainly none predating and superior to those of Respondent.
Complainant points to what it claims to be “use” of the mark prior to its ITU Application Date. However, such evidence does not establish any trademark use which could possibly be the basis for common law rights prior to October 30, 2010 or even prior to December 9, 2010. Use of a word in a non-disclosure agreement and an e-mail when there has been no sale or offer for sale of any product or service bearing the mark is not trademark use. Thus there is insufficient evidence from which this Panel can find common law rights at any point.
The Panel need not address this issue as Complainant must prove all three elements of a claim.
The Panel need not address this issue as Complainant must prove all three elements of a claim.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <lumospharma.com> domain name REMAIN WITH Respondent.
M. KELLY TILLERY, ESQUIRE, PANELIST
Dated: May 29, 2012
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