DECISION

 

Veracyte, Inc. v. Alex Kolomeets

Claim Number: FA2503002147139

 

PARTIES

Complainant is Veracyte, Inc. ("Complainant"), United States, represented by Rosaleen Chou of Knobbe, Martens, Olson & Bear, LLP, United States. Respondent is Alex Kolomeets ("Respondent"), Turkey.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <genomedx.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

David E. Sorkin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 26, 2025; Forum received payment on March 26, 2025.

 

On March 26, 2025, GoDaddy.com, LLC confirmed by email to Forum that the <genomedx.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 March 28, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 2025 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@genomedx.com. Also on March 28, 2025, 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.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On April 18, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant Veracyte, Inc. is a global diagnostics company that provides genomic testing products. Complainant asserts common law trademark rights in GENOMEDX arising from the use of that term by a predecessor in interest, GenomeDx Biosciences Inc. GenomeDx Biosciences Inc. changed its name to GenomeDx Inc., in July 2018, and then to Decipher Biosciences, Inc., in January 2019. It was acquired by Complainant in March 2021, at which time its name was changed yet again, to Veracyte SD, Inc., and its trademark rights and domain names were assigned to Complainant.

 

Complainant states that GenomeDx Biosciences Inc. used GENOMEDX as a brand name and mark for proprietary tests for cancer diagnostic and prediction beginning at least as early as 2006. Complainant states that the disputed domain name <genomedx.com> was registered by an employee of GenomeDx Biosciences on November 7, 2006, and was used by the company for a website promoting its GENOMEDX testing products. Complainant alleges that this employee subsequently transferred the account associated with the domain name to another employee (apparently Respondent), who later left the company without transferring the account or providing Complainant with access to the domain name. Complainant alleges that Respondent is using the domain name to maintain a website that displays the GENOMEDX mark and purports to be the website of GenomeDx Biosciences Inc.

 

The disputed domain name <genomedx.com> is currently registered in the name of a privacy registration service on behalf of Respondent. Complainant states that Respondent is not authorized to use the GENOMEDX mark. 

 

Complainant contends on the above grounds that the disputed domain name <genomedx.com> is identical or confusingly similar to the GENOMEDX mark in which Complainant asserts common law rights; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds that Complainant has not demonstrated the requisite rights in a relevant trademark. Because this finding is dispositive, the Panel declines to enter findings as to the other elements set forth in the Policy. In addition, for the reasons set forth below, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; UDRP Perspectives on Recent Jurisprudence, §§ 0.2, 0.8 (updated Jan. 15, 2025), available at https://udrpperspectives.org/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").

 

Identical and/or Confusingly Similar

Complainant asserts that it has common law trademark rights in GENOMEDX based upon its claim that the term was used by a predecessor in interest beginning in 2006. However, Complainant offers no evidence that GENOMEDX was used as a source identifier rather than merely a trade name, nor of any use whatsoever since early 2019. Complainant's own press release announcing its acquisition of Decipher Biosciences, Inc., in March 2021, makes no mention of GENOMEDX, although it does include an extensive list of other registered and common law marks owned or claimed by both Complainant and its new subsidiary. Nor does Complainant offer any evidence of the acquired distinctiveness that is required to establish common law rights. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 1.3 ("To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant's goods and/or services."); UDRP Perspectives on Recent Jurisprudence, supra, § 1.1 ("To support a claim of common law trademark rights, the Complainant should present strong and serious evidence of constant use by the Complainant and recognition of the trademark from the customers of the associated goods or services.")

 

Accordingly, the Panel finds that Complainant has not demonstrated the requisite rights in a relevant trademark. As this conclusion is dispositive of the present dispute, the Panel need not address the other elements set forth in paragraph 4(a) of the Policy. See, e.g., Huge Legal Technology Co., Inc. DBA Trust & Will v. Domain Administrator / Fundacion Privacy Services LTD, FA 2136242 (Forum Feb. 12, 2025); Zelig AI, LLC v. dong xuyan, FA 2120196 (Forum Nov. 6, 2024).

 

Reverse Domain Name Hijacking

Under Paragraph 1 of the Rules, "Reverse Domain Name Hijacking" (RDNH) is defined as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." Paragraph 15(e) of the Rules provides that if "the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."

 

Where a Complainant proceeds despite the fact that it knew or should have known that it did not have a colorable claim under the Policy, a finding of RDNH may be appropriate. See, e.g., Zelig AI, LLC v. dong xuyan, supra; 668 North, LLC v. Junyun Bi, FA 1759137 (Forum Dec. 27, 2017). See generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 4.16 (setting forth reasons for finding RDNH); UDRP Perspectives on Recent Jurisprudence, supra, § 4.2 (same).

 

Complainant submitted no evidence of the acquired distinctiveness required to support a claim of common law trademark rights, and the predecessor in interest through which Complainant claims to have acquired such rights appears to have abandoned the putative mark several years ago, prior to its acquisition by Complainant. Under the circumstances, and noting that Complainant is represented by professional trademark counsel, the Panel concludes that Complainant or its counsel must have known that it did not have a colorable claim under the Policy. See Zelig AI, LLC v. dong xuyan, supra; Hallmark Licensing, LLC & Hallmark Cards, Inc. v. Privacy Administrator / Anonymize, Inc., FA 1941032 (Forum June 1, 2021) (Levine, dissenting in part) (noting consensus view that legal counsel are expected to have working knowledge of UDRP jurisprudence).

 

The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

 

DECISION

Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <genomedx.com> domain name REMAIN WITH Respondent.

 

 

 

David E. Sorkin, Panelist

Dated: April 18, 2025