The Complainant is Profectus BioSciences, Inc. of Baltimore, Maryland, United States of America (“US”), represented by Morgan, Lewis & Bockius, LLP, US.
The Respondent is Dave Ashley d/b/a NetXMatrix of Baltimore, Maryland, US. 2. The Domain Names and Registrar
The disputed domain names , , and (the “Domain Names”) are registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2014. Following a request from the Center for more information about the Complainant’s asserted trademarks, an Amended Complaint was submitted on July 7, 2014. On July 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 8, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2014. The Center received informal communications from the Respondent on July 10, 2014 and August 1, 2014. An informal communication from the Complainant dated August 1, 2014 asked the Center to proceed expeditiously to a decision in the absence of a Response.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 7, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a business corporation organized under the laws of the State of Delaware, US, and headquartered in the State of Maryland, US. Rel-MD, Inc. (“Rel-MD”), also a Delaware corporation, is a wholly-owned subsidiary of the Complainant. The Complainant conducts clinical-stage research and development for vaccines against human infectious diseases, including the HIV and Ebola viruses, apparently selling its research services to pharmaceutical companies that manufacture and distribute the vaccines.
The Complainant holds the following standard-character US trademark registrations:
PROFECTUS, Registration No. 3514093 (registered October 7, 2008)
PROFECTUS BIOSCIENCES, INC., Registration No. 3173338 (registered November 21, 2006).
In addition, the Complainant claims common law rights to REL-MD as an unregistered service mark used in the same business since June 30, 2011 by both the Complainant and its subsidiary Rel-MD.
According to the Complaint, the Complainant retained the Respondent as a computer services consultant for “more than nine years”. The Respondent registered two of the Domain Names “[o]n behalf of Complainant”: (first registered on November 5, 2004) and (first registered on May 23, 2011). These Domain Names were used for the Complainant’s websites and email domains. The Complainant terminated the consulting arrangement with the Respondent on March 5, 2014 and asked the Respondent to transfer control of these two Domain Names. The Respondent has not done so, demanding payment for disputed services. These two Domain Names no longer resolve to the Complainant’s website or any other active website. The Respondent has also not forwarded emails to the Complainant that were sent to email addresses using those Domain Names, further disrupting the Complainant’s business.
Unable to continue to use the Domain Names and , on March 7, 2014 the Complainant registered the domain name , which it currently uses for its website and email addresses. Three days later, on March 10, 2014, the Respondent registered the Domain Name . This resolves to an “under construction” page displaying the Registrar’s logo and what appears to be pay-per-click (“PPC”) sponsored links to various information technology service providers. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Names are confusingly similar, respectively, to its registered PROFECTUS and PROFECTUS BIOSCIENCES, INC. trademarks and its unregistered REL-MD service mark. The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Names, obtaining the first two on behalf of the Complainant and then “holding them hostage” for unrelated and disputed payments, and registering the last Domain Name, , merely to keep the Complainant from obtaining it and to further disrupt the Complainant’s business.
The Complainant urges a finding of bad faith, arguing that the Respondent, with actual knowledge of the Complainant’s marks, acted unlawfully and out of anger at being terminated as a consultant to the Complainant. B. Respondent
No formal Response was submitted in this proceeding. In informal communications to the Center, the Respondent requested more information about the UDRP Complaint and procedures and observed that the Complainant currently has a functional website using its new domain name. Otherwise, the Respondent has not replied substantively to the allegations found in the Complaint. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall 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.” A. Identical or Confusingly Similar
UDRP panels customarily treat the first element of a Policy complaint as a standing requirement, which simply requires “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. The Complainant holds trademark registrations for the marks PROFECTUS and PROFECTUS BIOSCIENCES, INC. The Domain Name incorporates the PROFECTUS mark in its entirety and is nearly identical to the PROFECTUS BIOSCIENCES, INC. mark, lacking only the space that cannot be included in a DNS domain name and the abbreviation for “incorporated”. Hence, the Panel finds that this Domain Name is confusingly similar to the Complainant’s relevant marks for purposes of the first element of the Complaint.
The Complainant argues that its arbitrary or fanciful REL-MD mark, while unregistered, is both distinctive and well known among “the targeted audience of cancer and HIV research professionals”. This claim is supported by references in biotech research journals, presentations at scientific conferences, posters displayed at scientific meetings, and the use of the mark for the Domain Name , which was used for the Complainant’s website from May 2011 to March 2014. The Panel finds that the Complainant has established rights in REL-MD as a common law service mark for purposes of the first element of the Complaint. The Panel also finds that the Domain Names and are confusingly similar, lacking only the hyphen found in the mark.
The Panel concludes that the first element of the Complaint has been established with respect to all three Domain Names. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Because the respondent in a UDRP proceeding is in the best position to assert its rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1. The Complainant in this proceeding has made a prima facie case, demonstrating that the Domain Names are confusingly similar to its arbitrary or fanciful marks, of which the Respondent had actual knowledge as a long-time computer services consultant to the Complainant, and pointing out that there is no evidence that the Respondent was known by a corresponding name or made preparations to use the Domain Names for a legitimate commercial or noncommercial purpose. The Respondent has not come forward with evidence or arguments establishing rights or legitimate interests in any of the Domain Names.
Accordingly, the Panel concludes that the second element of the Complaint has been established with respect to all three Domain Names. C. Registered and Used in Bad Faith
The Policy’s non-exhaustive list of circumstances that shall be considered evidence of bad faith registration and use (paragraph 4(b)) includes the following:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant argues simply that the Respondent, a former consultant to the Complainant, had actual knowledge of the Complainant’s marks and no legitimate reason for retaining control of the first two Domain Names and then registering the third promptly after the Complainant registered an alternative domain name.
The Respondent was not only a consultant to the Complainant for more than nine years but was the person who registered the first two Domain Names and maintained those registrations and related technical support. Hence, the Panel finds that the Respondent had actual knowledge of the corresponding marks used in the Complainant’s business.
The Panel also finds, on the available record and in the absence of a Response, that the Respondent’s recent “use” of the Domain Names has been in bad faith within the meaning of the Policy. It appears from the record that the Complainant paid for the registration of the first two Domain Names, compensated the Respondent for his related services, and actually used those Domain Names for its websites and email addresses. The Respondent, apparently unhappy with the circumstances of his termination by the Complainant, maintained control over those two Domain Names after his termination in March 2014 and disrupted the Complainant’s business by denying the Complainant access to its website and emails. The Panel considers this a “use” in bad faith. See WIPO Overview 2.0, paragraph 3.2 (“passive holding” of a domain name may indicate bad faith in all the circumstances of a case).
The Respondent registered the third Domain Name, , just days after his termination and the Complainant’s registration of an alternative domain name. As the Respondent has no demonstrated legitimate interests in a domain name based on the Complainant’s arbitrary or fanciful REL-MD mark, registering this Domain Name immediately after the Complainant registered an alternative domain name appears to be motivated only by an intention to deny the Complainant the use of similar domain names and to increase the pressure on the Complainant to settle the Respondent’s unrelated payment demands. The Respondent has allowed that Domain Name to be used since for unrelated PPC advertising, which may also be viewed in these circumstances as a sign of bad faith (see WIPO Overview 2.0, paragraph 3.8).
However, none of this is sufficient to establish bad faith at the time of the registration of the first two Domain Names, and . The Policy, paragraph 4(a)(iii), requires a demonstration that “the disputed domain name has been registered and is being used in bad faith.” The conjunctive “and” indicates that bad faith must be shown both at the time of registration and in the subsequent use of the Domain Names. See Index of WIPO UDRP Panel Decisions, paragraph II.C.2.b. (furnishing examples of decisions denying UDRP complaints when there was evidence of bad faith use but not of bad faith at the time of registration). By the Complainant’s own account, those two Domain Names were registered by the Respondent as a consultant acting on the Complainant’s behalf, and the Complainant used them, as intended, for the Complainant’s websites and email addresses. The Panel could find bad faith on the part of the Respondent at the time these Domain Names were registered (in 2004 and 2011, respectively) only if the evidence pointed to a long-dormant scheme eventually to hold the Domain Names hostage. The record does not establish the probability of such a scheme at the times the Respondent registered the Domain Names and .
The Panel concludes, therefore, that the third element of the Complaint has been established for the Domain Name but not for the Domain Names and . This decision is, of course, without prejudice to any other legal remedies that the Complainant may seek concerning the Respondent’s refusal to transfer ownership or control of those two Domain Names. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that (1) the disputed Domain Name be transferred to the Complainant and (2) the Complaint is denied with regard to the disputed Domain Names and .
W. Scott Blackmer
Sole Panelist
Date: August 21, 2014
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