Regenxbio Inc. v. Tessa Solomon / Regenx Medical Institute
Claim Number: FA1812001819239
Complainant is Regenxbio Inc. (“Complainant”), represented by William R. Samuels of Scarinci Hollenbeck LLC, New York, USA. Respondent is Tessa Solomon / Regenx Medical Institute (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <regenxmd.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 3, 2018; the Forum received payment on December 3, 2018.
On December 5, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <regenxmd.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 December 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 2018 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@regenxmd.com. Also on December 10, 2018, 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.
A timely Response was received and determined to be complete on December 28, 2018.
Complainant submitted a timely Additional Submission on January 2, 2019.
Respondent submitted a timely Additional Submission on January 3, 2019.
On December 31, 20018, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Carol Stoner, Esq., 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.
Complainant requests that the domain name <regenxmd.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant, RegenxBio Inc., is a global leader in scientific research and development, especially in developing gene therapies. Complainant has rights in the REGENXBIO mark through its registration of the mark with the USPTO (e.g. Reg. No. 5,018,428, registered Aug. 9, 2016). See Compl. Ex. E. Complainant also has common law rights in the REGENX and REGENXBIO marks, as it has used the REGENX mark in commerce since at least as early as 2009, and has used the REGENXBIO mark in commerce since at least as early as 2014. Respondent’s <regenxmd.com> domain name is confusingly similar to Complainant’s mark as it replaces the suffix “bio” with the descriptive suffix “md.”
Respondent has no rights or legitimate interests in the <regenxmd.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Even more, Respondent does not appear to have any trademark of which the disputed domain name is predominantly comprised. See Compl. Ex. G. Further, Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the domain name resolves to a website which offers products and services that directly compete with Complainant in the scientific research and medical services market. See Compl. Ex. C.
Respondent registered and uses the <regenxmd.com> domain name in bad faith. Respondent’s use of the domain name to offer competing scientific and medical services disrupts Complainant’s business by confusing Internet users into believing some affiliation exists between Respondent and Complainant. See Compl. Ex. C. Further, Respondent likely knew of Complainant’s rights in the REGENXBIO mark as a simple Internet search would have uncovered Complainant’s online presence, and because Complainant has made a substantial investment in its marks.
B. Respondent
Respondent, Regenx Medical Institute, Inc., is a small closely held company that offers hormone replacement therapy for men and women in order to, among others, increase muscle mass, sexual function, and healthier skin. Complainant has failed to establish common law rights in its REGENXBIO mark, as it failed to offer evidence of having established a secondary meaning. The <regenxmd.com> domain name is not identical or confusingly similar to the REGENXBIO mark save for the “regenx” prefix used in both cases. The domain name does not confuse users, as it is not visually similar, and the terms appending the “regenx” prefix are descriptive of the services offered under both the mark and the domain name. Further, in Complainant’s reconsideration filing for the first denial of its trademark application with the USPTO for the REGENXBIO mark, Complainant states that the dominant portion of the mark is the “bio” portion – the term “md” cannot be found similar to the term “bio.” See Resp. Ex. 3. Additionally, the term “regen” or “regenx” is generic, as there are currently twelve (12) companies who make use of these prefixes.
Respondent does have rights and legitimate interests in the <regenxmd.com> domain name. Respondent is commonly known by the domain name, which is used in connection with its incorporated name of Regenx Medical Institute, Inc. (incorporated since June 24, 2011). See Resp. Ex. 6. Further, Respondent uses the domain name in connection with a bona fide offering of goods and services. Specifically, Respondent uses the domain name in connection with its business, where it provides medically supervised services to men and women seeking to feel younger and more sexually vibrant, among other, via hormone replacement therapy. This use differs from Complainant’s use, who uses its mark to conduct medical research in the gene therapy industry. See Resp. Ex. 2. Respondent has never intended to profit or benefit from Complainant, nor has it even diverted a single customer of Complainant.
Respondent registered the <regenxmd.com> domain name in good faith. Respondent’s registration of the domain name predates Complainant’s rights in the REGENXBIO mark by three (3) years, as Complainant failed to offer any evidence to establish common law rights in the mark aside from its self-serving statements. Further, Respondent does not compete with Complainant in gene therapy research. See Resp. Exs. 2 & 6.
C. Additional Submissions
Complainant’s Additional Submission
Complainant has extensive common law use of the REGENX mark, namely nine (9) years of common law use and continuing reference as REGENX in the market. See Exhibit I. Reflecting this common law identification, Complainant’s trading symbol on NASDAQ is RGNX, which is the functional equivalent of REGENX. See Exhibit J.
Complainant has had clear and obvious trademark rights in the REGENX and REGENXBIO marks for medical-related services years before Respondent amended its business name on June 24, 2011 and before Respondent registered the <regenxmd.com> domain on June 23, 2011.
All Respondent had to do was search REGENX or REGENX MD via Google, Bing, or another search engine on the Internet to see that Complainant already operated in the space.
Complainant’s Exhibit I offers evidence of common law use by and common law references to Complainant via the REGENX mark. Complainant’s Exhibit J is a screen shot of NASDAQ website displaying Complainant’s trading symbol.
Respondent’s Additional Submission
Complainant’s Additional Submission fails to establish that common law trademark rights exist. All trademarks, in order to be valid or protectable, must be distinctive of a product’s source, and a mark can be distinctive in one of two ways.
First, a mark is inherently distinctive if its intrinsic nature serves to identify a particular source. Second, a mark has acquired distinctiveness, even if it is not inherently distinctive, if it has developed secondary meaning,
The considerations to be assessed in determining whether a mark has acquired secondary meaning can be described by the following six factors: (1) association of the trade dress with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark.
None of the above six factors have remotely been established by Complainant. A conclusory allegation of common law rights is normally insufficient, even if undisputed.
Where the claimed mark is comprised of descriptive or dictionary words, Complainant has a greater onus to present compelling evidence of secondary meaning or distinctiveness.
Exhibit I attached to the supplemental filing of Complainant does not suffice to demonstrate common-law rights for purposes of the Policy. Complainant has presented no evidence regarding the volume of sales under the claimed trademark, advertising expenditures, nor the extent to which the mark has been featured in advertisements. There are no customer surveys regarding evidence of consumer or media recognition of its claimed marks or unsolicited media coverage.
Complainant has failed to meet its burden of showing that it has rights in a relevant mark for purposes of paragraph 4(a)(i) of the Policy.
Panelist has made the following findings:
(1) the domain name <regenxmd.com> registered by Respondent is not identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has rights or legitimate interests in respect of the domain name
<regenxmd.com>; and
(3) the domain name <regenxmd.com> has not been registered and is not being used in bad faith.
DISCUSSION
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.
USPTO Reg. No. 5,018,428, registered Aug. 9, 2016, established Complainant’s rights in the RegenxBio mark as of that date. However, Respondent’s registration of the domain name <regenxmd.com> predates these rights, as Respondent registered the <regenxmd.com> domain name on June 23, 2011.
In the alternative, Complainant seeks to establish trademark rights in the REGENXBIO mark through an assertion of secondary meaning. Secondary meaning is a trademark precept that confers trademark protection upon those marks that have acquired distinctiveness through common law usage, rather than through registration. However, this common law usage has to be evidenced in a forthright fashion, in order to confer the blessings of trademark status upon the unregistered.
If Complainant had successfully propounded clear and forthright evidence of its asserted common law usage in its REGENX mark since at least as early as 2009, this usage would likely have materialized into common law trademark rights which pre-dated Respondents registration of his domain name of <regenxmd.com> on June 23, 2011. However, as discussed below, Complainant did not produce said clarifying evidence. And obviously, Complainant’s assertion of date of first use in commerce of the REGENXBIO mark of 2014, (registered in 2016) cannot establish bad faith registration of Respondent’s domain name registered in 2011.
Complainant has failed to establish common law rights in the REGENXBIO mark, as it failed to produce any evidence to establish a secondary meaning. Respondent well lays out these factors, in its Additional Submission, as follows:
The considerations to be assessed in determining whether a mark has acquired secondary meaning can be described by the following six factors: (1) association of the trade dress with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark.
However, Complaint is devoid of any such evidence adduced as secondary meaning; notwithstanding unsupported assertions of dates of first use in commerce.
Nor was Panelist persuaded by Complainant’s Additional Submission, citing common law usage engendered in its Exhibits I and J, sufficient to establish secondary meaning.
Rather, up until several years ago, the WayBack Machine’s Exhibit I characterized REGENX as a partnership, which is in a research and development stage. An entity in the R&D stage is not wont to promulgating branded goods and services to the public through an extensive advertising budget. And Exhibit J, shows the NASDAQ symbol of RGNX, which was not extant in the so-called common law years.
Consequently, absent supporting evidence of sales figures or extent of use, a complainant may not sufficiently allege common law rights in a mark under the Policy. See CW & Associates Consulting and Recruiting Inc. v. Lynda Pitchford / ITSR, FA 1619758 (Forum June 29, 2015) (finding Complainant failed to establish common law rights, stating, “Complainant has failed to provide evidence of any sales figures or advertising expenditures or any indication of the extent of use aside from what may be implied from the business name registration and placement of the name(s) on social media. There is no evidence to show that the public is aware of the claimed marks at all, much less a public association of the claimed ETS marks with the Complainant. Mere use of social media alone is not acceptable proof of secondary meaning, a/k/a/ acquired distinctiveness, in the mind of the general public.”). Accordingly, the Panel rules after conducting its common law rights analysis under Policy ¶ 4(a)(i), that Respondent’s argument against the establishment of secondary meaning has prevailed against the insubstantial weight of Complainant’s common law contentions.
Panel is also persuaded by Respondent’s argument that its <regenxmd.com> domain name is sufficiently different than Complainant’s REGENXBIO mark so as not to be held to be confusingly similar, for the purposes of this UDRP analysis. The term “regenx” is a common term used in the medical industry and thus is a diluted mark, not entitled to exclusive use. See Resp. Ex. 4. Moreover, Complainant argued in its USPTO reconsideration that BIO was the dominant portion of the wordmark REGENXBIO.
Further, a primary consideration in the assessment of confusing similarity is the channels of distribution of the product or service. Here, gene therapy is the primary service of Complainant, whose REGENXBIO is a small conclave of scientists who were, until quite recently (See Compl. Ex. I) still in the Research and Development stage. To the contrary, the Respondent is making its services known to lay people, who are interested in hormone replacement therapy.
The Panel therefore, concludes that Respondent’s domain name of <regenxmd.com> is not identical or confusingly similar to a trademark in which Complainant has rights, pursuant to UDRP Policy ¶ 4(a)(i).
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).
Respondent convincingly argues that it does have rights and legitimate interests in the <regenxmd.com> domain name. Specifically, Respondent evidences that it is commonly known by the domain name, which is used in connection with its incorporated name of Regenx Medical Institute, Inc. Where a respondent conducts business under the name, it can be found to be commonly known by the domain name under Policy ¶ 4(c)(ii). See Modern Props, Inc. v. Wallis, FA 152458 (Forum June 2, 2003) (finding that as the respondent had registered its domain name as its business identity with the New York County Clerk a month after registering the domain name and then conducted his prop rental business under that name, it had demonstrated rights and legitimate interests in the domain name). Here, Respondent provides its Articles of Incorporation in the state of Florida, which show that it was incorporated on June 24, 2011. See Resp. Ex. 6. Accordingly, the Panel finds that Respondent is commonly known by the <regenxmd.com> domain name for the purposes of Policy ¶ 4(c)(ii).
Respondent also argues that its use of the <regenxmd.com> domain name differs from Complainant’s use of its mark, who uses its mark to conduct specialized medical research, specifically in the gene therapy industry as opposed to the mere provision of hormone replacement therapy. A respondent can evidence a bona fide offering of good or services where its use of the domain name differs from a complainant’s use of a mark. See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (“Respondent maintains that it uses the [disputed] domain name… for the bona fide offering of information for products and services including and related to connecting customers to suppliers of various electronic devices including record devices, connect devices for tablets, mobile phones TVs, power supplies, and other similar electronic devices… The Panel finds Respondent’s evidence and purported use supportive of Respondent’s assertion that it is using the <recordconnect.com> domain name to make a bona fide offering of goods or services [unrelated to those of Complainant].”). Here, Respondent avers that it uses the domain name in connection with its business, where it provides medically supervised services to men and women seeking to feel younger and more sexually vibrant, through such services as hormone replacement therapy.
Panelist notes convincing evidence of Complainant’s stated use on its USPTO reconsideration application of the REGENXBIO mark in connection with medical research, specifically in the field of gene therapy. See Resp. Ex. 2. The Panel finds that Respondent’s use of the domain name sufficiently differs from Complainant’s use of its mark when conducting its Policy ¶ 4(c)(i) analysis.
Further, Respondent claims that the terms “regen” and “regenx” of the <regenxmd.com> domain name are common in the medical industry, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. A complainant does not have exclusive rights to use a common/generic term. See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields). Respondent provides a list of twelve (12) companies who make use of these prefixes. See Resp. Ex. 4.
Panel therefore concludes that Respondent has established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name.
Here, Complainant asserts in its Complaint that “Respondent likely knew of Complainant’s rights in the REGENXBIO mark, as a simple interest search would have uncovered Complainant’s online presence, and because Complainant has made a substantial investment in its marks.” Yet, Complainant has not, even to this day, adduced any specific evidence, that an internet search in 2011 would have uncovered its presence, nor any information as to its substantial investments. Resp‘s Exhibit I spoke only of a partnership in the gene therapy business that was in the research and development stage. An ivory tower entity, not likely to rub elbows with a hormone replacement business, open to the general public.
Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
Respondent’s claims that it did not have any knowledge of Complainant or its rights in the REGENXBIO mark when it registered the <regenxmd.com> domain name, is compelling, largely because Respondent’s domain name predates Complainant’s first acquired rights in the REGENXBIO mark. Respondent registered the domain name on June 23, 2011, and the USPTO granted Complainant’s trademark application on August 9, 2016. See Compl. Exs. A & E.
A complainant generally cannot succeed on a bad faith registration argument where a domain name predates a complainant establishing rights in a mark. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).
As the Panel has also concluded that Respondent has rights or legitimate interests in the <regenxmd.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
The <regenxmd.com> domain name is comprised of the term “regenx” or “regen,” both generic terms used in the medical industry. As arbitrators have found that that a Respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such a common term, the Panel finds that Respondent did not register or use the <regenxmd.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Target Brands, Inc. v. Eastwind Group, FA 267475 (Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term).
Complainant has offered no compelling evidence that Respondent competes with Complainant, despite self-serving assertions to the contrary in the Coruzzi Affidavit. See Compl. Ex. F. However, Panel did take notice in Complainant’s Additional Submission, Exhibit I, that in the early years, commencing with 2009, that Complaint RegenX regarded itself as “a research and development stage pharmaceutical company developing novel therapeutics and research tools based on adeno-associated vectors.” This highly specialized scientific research entity does not compete with the public offering of hormone replacement therapy.
Complainant states in its Complaint that “Complainant’s use of the domain name to offer competing scientific and medical services disrupts Complainants business by confusing internet users into believing some affiliation exists between Respondent and Complainant. Yet Complainant provides no evidence of said claimed disruption to substantiate this claim. Citation of Compl.’s Ex. C, which are mere screen shots of Respondents website, does not offer any evidence of internet users who are confused as to an affiliation with Complainant. See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding that the respondent did not register and use the <racegirl.com> domain name in bad faith because the complainant provided no evidence that the respondent intended to disrupt or divert business from the complainant),
Panel therefore holds that Respondent did not register or use <regenxmd.com> in bad faith pursuant Policy ¶ 4(a)(iii),
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 <regenxmd.com> domain name REMAIN WITH Respondent.
Carol Stoner, Esq., Panelist
Dated: January 14, 2019
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