Regenxbio Inc. v. Marshall Stein
Claim Number: FA1812001819240
Complainant is Regenxbio Inc. (“Complainant”), represented by William R. Samuels of Scarinci Hollenbeck LLC, New York, USA. Respondent is Marshall Stein (“Respondent”), represented by Karen B. Tripp, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <regenxhealth.com>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding:
Jeffrey M. Samuels, Douglas M. Isenberg, and Aaron B. Newell, as Panelists.
Complainant submitted a Complaint to the Forum electronically on December 3, 2018; the Forum received payment on December 3, 2018.
On December 4, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <regenxhealth.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 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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 email@example.com. Also on December 6, 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 26, 2018.
Complainant filed a timely Additional Submission on December 31, 2018.[i]
Respondent filed a timely Additional Submission on January 1, 2019.
On January 2, 2019, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Jeffrey M. Samuels, Douglas M. Isenberg, and Aaron B. Newell as Panelists.
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 be transferred from Respondent to Complainant.
Complainant RegenxBio Inc. alleges that it is a global leader in scientific research, especially in developing gene therapies. Complainant owns a number of registrations throughout the world and in the U.S. for the marks REGENXBIO and REGENXBIO and DESIGN. Complainant’s U.S. registrations (Nos. 5018428 and 5018429) issued on August 9, 2016. Complainant also alleges that it has common law rights in the marks REGENX, REGENX BIOSCIENCES and REGENXBIO throughout the U.S., having used such marks since at least as early as 2009, in the case of REGENX and REGENX BIOSCIENCES, and at least as early as 2014, in the case of REGENXBIO. Complainant owns the domain name regenxbio.com at which it promotes its services.
Complainant maintains that it has rights to its marks and that the disputed domain name, <regenxhealth.com>, is confusingly similar to such mark insofar as it incorporates the term “regenx” and merely adds the suffix “health” instead of “bio.” Complainant asserts that its rights in its marks predate the July 8, 2017, date of registration of the disputed domain name.
Complainant maintains that Respondent has no rights or legitimate interests in the subject domain name. Complainant contends that there is no indication that Respondent is or has ever been known by the name “regenxhealth.” Complainant points out that Respondent registered the disputed domain name using a privacy shield. Complainant further asserts that it has no legal link with Respondent and never authorized Respondent to use any portion of Complainant’s marks in connection with any domain name registration.
Complainant points out that the disputed domain name resolves to a website promoting men’s health services and clinics in the field of hormone replacement, erectile dysfunction treatments and infertility testing services provided by Dr. Marshall J. Stein and Dr. Ned Stein. According to Complainant, such services directly compete with Complainant in the scientific research and medical services market.
With respect to the issue of “bad faith” registration and use, Complainant maintains that this element of the Policy is satisfied because the disputed domain name appropriates Complainant’s mark and uses the site as a portal to redirect Internet traffic to a competing website. Complainant further alleges that Respondent likely knew that the use of the name REGENX infringed on Complainant’s mark. It suggests that a simple online search would have unearthed Complainant’s marks and online presence.
Respondent challenges Complainant’s claim of common law rights, noting that Complainant provided no support for such rights beyond a bald assertion that it has used the marks since either 2009 or 2014. Complainant, Respondent notes, provided no evidence of secondary meaning of its marks – no sales or advertising figures and no other evidence establishing a public association with the marks.
Respondent further points out that Complainant indicated to the U.S. Securities and Exchange Commission in 2015 that it was originally named ReGenX, LLC and changed its name to ReGenX Biosciences, LLC in 2009 and to REGENXBIO Inc. in September 2014. Respondent points out that Complainant told the SEC that it was a biotechnology company that focuses on the development, commercialization and licensing of recombinant adeno-associated virus gene therapy and that in its latest annual report stated it is a “clinical-stage biotechnology company” pursuing “gene therapy.”
With respect to Complainant’s U.S. registrations, Respondent informs the Panel that such registrations are the subject of a cancellation proceeding brought by Respondent at the U.S. Patent and Trademark Office (PTO). The cancellation was filed as a counterclaim to oppositions filed by Complainant to Respondent’s applications to register the marks REGENX HEALTH and REGENX HEALTH LABS. Respondent asserts its belief that this UDRP proceeding was brought in an effort to strengthen Complainant’s position at the PTO.
Respondent contends that the disputed domain name is not identical to Complainant’s marks and notes that Complainant informed the PTO that the term “bio” is the dominant portion of its REGENXBIO mark.
Respondent argues that it has rights or legitimate interests in respect of the disputed domain name. Respondent contends that, before any notice of the instant dispute, it began using the domain name in connection with a bona fide offering of services, within the meaning of paragraph 4(c)(i) of the Policy. In support of such assertion, Respondent emphasizes that it “had never heard of Complainant until they opposed his registration of his REGENX HEALTH and REGENX HEALTH LABS trademarks before the United States Patent and Trademark Office in October 2018.” Respondent notes that he, along with his father, provides urologic men’s health care services and formed REGENX HEALTH, LLC about two years ago. Respondent then acquired the disputed domain name and put up signage on his office building identifying and promoting his clinic and medical services for men. According to Respondent, his clinic has been well-received in the Houston, Texas community and has had significant growth and success.
Respondent indicates that he used a privacy shield to register the disputed domain name in order to avoid scams and robo-bot emails, pursuant to advice from his internet service provider. However, Respondent adds, his ownership of and use of the website is readily apparent from the website itself.
Respondent takes issue with Complainant’s assertion that the disputed domain name was registered and is being used in bad faith. Respondent maintains that Complainant has not provided any evidence showing how Respondent’s website disrupts Complainant’s business and “Respondent in fact does not disrupt Complainant’s business. Complainant has not established how it and Respondent are competitors, and in fact they are not.” Respondent emphasizes that Complainant is a “clinical-stage biotechnology company seeking to improve lives through the curative potential of gene therapy” and that gene therapy is a sophisticated niche. According to Respondent, “[t]here cannot be any confusion between gene therapies and Respondent’s `standard of care’ urologic medical practice and men’s health services in the field of hormone replacement, erectile dysfunction and infertility. Complainant does not, and cannot, treat patients; Respondent does. And Respondent never uses any gene therapy in his treatment of patients, and he cannot do so, as no such therapies are known that would benefit his patient treatments.” In short, Respondent notes, none of the gene therapies that Complainant is studying or researching has any relationship to or use in urology or men’s health issues.
Respondent also argues that Internet users are not likely to be confused as to the source of its website or of the services advertised thereon. Respondent informs the Panel that not a single person has called Respondent searching for Complainant, that its advertising is targeted only at those consumers who are in need of men’s health medical services, which Respondent provides as a physician and surgeon, and that its website does not point to Complainant or to “Regenxbio.” Respondent accuses Complainant of failing to consider or address the significant and substantial differences in the services offered by the parties. “Complainant’s allegations of bad faith are nothing more than conclusory, and lack any specific evidence in support,” Respondent declares.
Respondent requests the Panel to enter a finding of reverse domain-name hijacking. In support of such request, Respondent asserts that Complainant failed to file any evidence concerning rights or legitimate interests and bad faith and tried to confuse the Panel in asserting that Respondent is profiting from Complainant’s reputation and has redirected traffic from Complainant’s website to Respondent’s website.
C. Additional Submissions
In its Additional Submission, Complainant contends it has extensive common law use of the REGENX mark, as evidenced by nine years of use in connection with medical-related services. Complainant further alleges that its trademark rights predate the registration of the disputed domain name and that Respondent had constructive knowledge of Complainant’s use of such marks in connection with medical-related services. Based on the above, Complainant maintains that it is clear there is no reverse domain-name hijacking.
Respondent, in his Additional Submission, reiterates its claim of reverse domain-name hijacking, complaining that Complainant has provided no evidence of bad faith registration and use, that Complainant has used the UDRP in an attempt to secure transfer of the domain name after commercial negotiations were broken off, and that Complainant has attempted to make false representations or failed to disclose material information to the Panel.
Respondent takes strong issue with Complainant’s assertion that it provides medical-related services. According to Respondent, Complainant is not licensed in the U.S. to provide medical services and does not provide such services. Rather, Complainant provides the means for biotech companies to perform gene research – such means is not a medical service. Gene therapy, Respondent asserts, is not a recognized or available medical-related service.
Respondent emphasizes that the parties’ services are not at all similar and that a number of third parties in the medical and biotech fields have used “regenx” and similar regen-root words.
Respondent accuses Complainant of straining the truth in alleging that the parties are competitors and notes that Complainant failed to inform the Panel of the pending PTO opposition and cancellation proceedings, even though such proceedings concern the same trademarks as before the Panel. “Complainant’s use of this UDRP proceeding in an effort to effectively accomplish what may be unsuccessful for Complainant at the Trademark Office is abusive of Policy and Rules and a misuse of this proceeding.”
The Panel finds that:
(1) the disputed domain name is confusingly similar to a mark in which Complainant has rights;
(2) Respondent has rights or legitimate interests in the disputed domain name;
(3) the domain name was not registered and is not being used in bad faith;
(4) Complainant engaged in reverse domain-name hijacking.
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.
The Panel determines that the disputed domain name, <regenxhealth.com>, is confusingly similar to the mark REGENXBIO. The domain name incorporates the term “regenx” in full, adding only the descriptive term “health” as well as the generic tLD “.com.” See AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”).
The Panel further determines that Complainant has rights in the REGENXBIO mark. While the Panel agrees with Respondent that Complainant’s conclusory allegations are insufficient to establish common law rights in the mark, Complainant has presented evidence of ownership of a number of foreign registrations for the mark. As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, §1.2, where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.
The Panel finds that Respondent has rights or legitimate interests in the disputed domain name. The evidence establishes that Respondent and his father established a men’s health medical services clinic focusing on urological issues about two years ago and soon thereafter acquired the domain name <regenxhealth.com>. The clinic has enjoyed significant success in the Houston, Texas community. Respondent also presented evidence that the term “regenx” is used by others in the medical and biotech fields. Most importantly, Respondent contended he had never heard of Complainant until Complainant opposed Respondent’s trademark applications in October 2018, which is over one year after Respondent registered the disputed domain name. Such contention appears reasonable in view of the fact that Respondent is a licensed physician who provides medical services, while Complainant is a biotech research company in the area of gene therapy. In short, in the view of the Panel, the evidence does not point to any cybersquatting intent on the part of Respondent.
In view of the above, the Panel determines that, before notice to Respondent of the instant dispute, Respondent made use of the domain name in connection with a bona fide offering of services, within the meaning of paragraph 4(c)(i) of the Policy. 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].”)
The Panel concludes that the disputed domain name was not registered and is not being used in bad faith. While Complainant contends that Respondent registered the domain name for the purpose of disrupting the business of a competitor under paragraph 4(b)(iii) of the Policy, such claim appears rather far-fetched. As noted above, Respondent operates a men’s health medical facility. He is a licensed doctor. Complainant, on the other hand, is involved in biotech gene therapy research. While both parties may broadly be considered to be involved in medicine, they do not vie for the same customers or compete in any other way. Moreover, there is nothing on the Respondent’s website that suggests it is Respondent’s intent to disrupt Complainant’s business. 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); see also Election Systems & Software, Inc. v. Stewart, FA 805224 (Forum Nov. 14, 2006) (Where the respondent registered the disputed domain name to reflect one of the products available from Respondent, the panel did not find bad faith pursuant to Policy ¶ 4(b)(iii)); see also Accu-Find Internet Servs. v. AccuFind, FA 94831 (Forum June 19, 2000) (denying the complainant’s request because the complainant’s allegations that the respondent registered the disputed domain name to divert Internet users from the complainant’s business were not sufficiently substantiated).
While Complainant alleges that Respondent likely knew that his use of the term “regenx” infringed on Complainant’s marks, the evidence indicates that the parties operate in separate fields and that others in the medical and biotech fields use the term “regenx.” Thus, while a search may have unveiled Complainant’s prior use of its REGENXBIO mark, Respondent could have reasonably concluded that his registration and use of the <regenxhealth.com> domain name would not result in a likelihood of confusion.
Reverse Domain-Name Hijacking
The Panel concludes that the evidence supports a determination that Complainant engaged in reverse domain-name hijacking. In reaching this determination, the Panel notes that: (1) Complainant asserted that Respondent, through the use of a privacy shield is “unknown” despite ample evidence, including the pending proceedings at the PTO and access to the Respondent’s website, that Complainant knew the Respondent’s identity; (2) Complainant’s argument that the parties are competitors, insofar as they both provide medical-related services, is disingenuous at best, given the highly differentiated nature of the services; and (3) Complainant’s assertion that Respondent’s website uses and displays Complainant’s REGENXBIO mark is not supported by the evidence
In view of the above, the Panel concludes that this proceeding was brought in bad faith and warrants a finding of reverse domain-name hijacking under Rule 15(e).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <regenxhealth.com> domain REMAIN WITH Respondent.
Jeffrey M. Samuels, Douglas M. Isenberg, Aaron B. Newell, Panelists
Dated: January 16, 2019
[i] Respondent contends that Complainant’s Additional Submission was untimely. The Forum concluded, however, that the submission was timely. The Panel agrees with the Forum and will consider the arguments advanced in Complainant’s Additional Submission.
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