Akero Therapeutics, Inc. v. Robert Seeman
Claim Number: FA2101001930407
Complainant is Akero Therapeutics, Inc. (“Complainant”), represented by Tiffany D. Gehrke of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is Robert Seeman (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <efruxifermin.com>, registered with NameSilo, 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.
Dr. Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 29, 2021; the Forum received payment on January 29, 2021.
On January 30, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <efruxifermin.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 February 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2021 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@efruxifermin.com. Also on February 4, 2021, 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 February 9, 2021.
On February 13, 2021 both the Complainant and the Respondent have submitted additional submissions in compliance to Supplemental Rule 7.
On February 15, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Beatrice Onica Jarka 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. Therefore, the Panel issues its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that:
- Complainant is a pharmaceutical manufacturer and has created a drug called Efruxifermin to treat non-alcoholic steratohepatitis, which is the most severe form of nonalcoholic fatty liver disease.
- Complainant has rights to the EFRUXIFERMIN mark as it is the name of Complainant’s patented drug that is currently in trial for US Food and Drug Administration (FDA) approval.
- At the request of the Complainant, the United States Adopted Names (USAN) council approved the Efruxifermin name as an USAN on May 27, 2020 and noted that it would publish Akero’s new name on its website after August 1, 2020.
- Respondent’s <efruxifermin.com> domain name is identical or confusingly similar to Complainant’s mark, as it fully incorporates to mark and only adds the “.com” generic top-level domain (“gTLD”).
- Respondent has no rights or legitimate interests in the <efruxifermin.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is diverting Internet users to his website. Respondent also intends to sell the domain name for a large sum.
- Respondent registered and uses the <efruxifermin.com> domain name in bad faith. Specifically, Respondent is attempting to sell the disputed domain name in excess of the out-of-pocket registration costs. Furthermore, Respondent is attempting to disrupt Complainant’s business and attract Internet users for commercial gain by diverting Internet users to Respondent’s website. Finally, Respondent had actual knowledge of Complainant’s EFRUXIFERMIN mark at the time of registration.
B. Respondent
By its timely Response, the Respondent asserts that:
- The term that Complainant is asserting common law trademark rights in is the non-proprietary name of the drug Complainant seeks to manufacture and is therefore generic.
- Complainant makes a number of misrepresentations of the law governing domain names created from the generic name of pharmaceuticals under the UDRP.
- Respondent has rights and legitimate interests in the disputed domain name as it is based on a generic and non-proprietary term. Respondent did not offer to sell the domain name to Complainant, but instead was contacted by Complainant.
- Respondent did not register or use the <efruxifermin.com> domain name in bad faith. Respondent discovered the term by searching for non-proprietary names, not by researching Complainant. Respondent did not know of Complainant before this dispute. Complainant contacted Respondent with interest in the disputed domain name.
C. Additional Submissions
By their additional submissions,
the Complainant further contends that:
- Respondent relies heavily on Teva Pharmaceutical Industries Limited v. BLTC Research, WIPO Case No. D2005-0113, which is not legally binding on the Panel in this case and is not factually analogous to this case, as in this case the disputed domain name had not been yet adopted by USAN and made public,
- Respondent does not provide any information related to the efruxifermin drug or any other drug” and its website “has nothing to do with drugs.”,
- Respondent uses the disputed domain to generate additional business and website traffic to its marketing and branding company, use which cannot be considered as a “legitimate” use under the UDRP,
- Respondent fails to appreciate the special rules around drug names and market exclusivity to use drug names. FDA and equivalent agencies around the world have specialized rules for how and when a drug name – whether proprietary or non-proprietary – can be used because it is of the utmost importance to prevent consumer confusion of pharmaceuticals. Pursuant to FDA rules, if approved, the Complainant will be the only entity that can legally use the term efruxifermin with its pharmaceuticals at least because Complainant is the only party currently undergoing FDA clinical trials for the efruxifermin compound. That alone would give Complainant unique market position that no other entity has,
- Complainant has even more exclusivity because it owns exclusive patent rights for at least the next 10 years in the only compound that can be referred to as efruxifermin,
- Complainant also has exclusive rights in the efruxifermin compound in various jurisdictions around the world, including in Canada. Such rights extend through at least May 2030.
- In addition, if approved, Complainant’s efruxifermin compound is subject to 8 years of market exclusivity.
- To Complainant’s knowledge, no other entity is developing a compound that can be referred to as efruxifermin anywhere in the world that abides by INN naming conventions.
- Respondent also backpedals on his pre-UDRP statement that “The domain will be valuable when the drug goes off-patent,” now stating that he “did not know if there was a patent.”
- Respondent is attempting to change his narrative in order to avoid a finding of bad faith, but the evidence shows that Respondent was aware of the investigational drug and its patent protections and registered the domain name in order to sell it.
- Moreover, even Respondent’s purported “future” use is not legitimate and could be harmful to consumers. Respondent alleges that he “registered the Domain to advertise all versions of the drug, when it became generic, on fair, reasonable and non-discriminatory terms.” However, there are no other drugs about which information could be provided until efruxifermin is approved in one or more jurisdictions. The only current lawful purpose of efruxifermin is development such as clinical trials.
- Complainant tested and confirmed that a Google search performed now pulls back uses of “efruxifermin” showing a Google search “date” before January 9, 2019, including a hit to Complainant’s own website with a search date of May 24, 2019. See Exhibit K. However, a copy of the same page as captured by the Wayback machine at archive.org captured April 7, 2020 shows that the page did not contain such a term at that time. See Exhibit L. For at least all of these reasons the search date Respondent references is not meaningful for the context of this UDRP.
- Respondent specifically admits he was not searching for the term “efruxifermin” before registering the domain because “At the time of this search, the Respondent did not know of the name, or search for, “efruxifermin.”
- Complainant used the efruxifermin name in such a way that it would be considered use “in the ordinary course of trade” such that Complainant has rights in the name for the purposes of the UDRP policy 4(a)(i). See Elan Corporation, P.L.C. & Elan Pharma., Inc. v. Kumar Bhatt, FA 97376 (Forum July 9, 2001) (finding that Complainant had rights in the term frovatriptan, a non-proprietary pharmaceutical name, for the purposes of UDRP Policy ¶ 4(a)(i)); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000).
and the Respondent further asserts that:
- The term “efruxifermin” is a non-proprietary name of a pharmaceutical drug. A non-proprietary drug name is the same as a generic drug name and is a party of the International Non Propriety Name System (INN).
- The legal issue in this matter has already been decided in detail in by the URDP panel in Teva Pharmaceutical Industries Limited v. BLTC Research, Case No. D2005-0113 on April 22, 2005<https://www.wipo.int/amc/en/domains/decisions/html/2005/d2005-0113.html>[“Teva”].
- The Complaint asserts rights in the disputed domain name in part due to a patent respecting the drug product.
- A patent gives no trademark rights and is completely irrelevant. Nevertheless, even assuming that it is relevant, the Complaint does not assert patents rights in every country in the world; it only asserts a patent in the USA, which only applies to the country that issues a patent. There is no such thing as a “global patent”.
- The Complainant wishes to use the disputed domain name or their company’s exclusive use, presumably only for their version of the drug at all times and in all countries,
- The Respondent registered the to use the disputed domain name to advertise all versions of the drug, when it became generic, on fair, reasonable and non-discriminatory terms.
- Until receiving the Complaint, the Respondent knew nothing about the Complainant and only knew that the name was a generic name for a drug.
The Respondent registered the <efruxifermin.com> domain name on January 9, 2020, before the Complainant obtained the approval of the name EFRUXIFERMIN from USAN and initiated the process for obtaining FDA approval for manufacturing and selling a drug called EFRUXIFERMIN to treat non-alcoholic steratohepatitis. The Respondent has not provided any evidence on how he found out about the name EFRUXIFERMIN and no explanation of his intent to capitalize on this name at the time of the disputed domain name registration, when the said name was not public. Although at the time of this Complaint, EFRUXIFERMIN is an USAN and a name for a panted drug under FDA approval, there was no indication at the time of registration of the disputed domain name that this was the intended use of this name by the Complainant. It is the Panel view, that the Complainant use the EFRUXIFERMIN name would be considered use “in the ordinary course of trade” and that Complainant has rights in the name for the purposes of the UDRP policy 4(a)(i).
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.
In order to establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Here, Complainant does not specifically argue common law rights, but claims to have created the EFRUXIFERMIN mark as the name of a drug they aspire to have exclusive rights to manufacture, distribute, and market in the United States and provides evidence that the term is associated with Complainant with screenshots of Complainant’s website describing the drug and Internet searches that result in articles about Complainant and Complainant’s products. See Compl. Ex. B and D.
Respondent claims that Complainant has no trademark rights in the EFRUXIFERMIN mark. Respondent argues that Complainant has only patent rights in the drug, which protects the manufacture and use of the product, but not the use of the name.
The Panel acknowledges that the rights held by the Complainant are formally limited to patent registration of the product name EFRUXIFERMIN which provides for exclusive manufacture and use of the Product and to the rights to exclusive distribution of the product under the name EFRUXIFERMIN immediately the FDA approval the distribution of the drug shall be obtained. However, as it was the Complainant who came up with this unique name, nonexistent in English language and initiated the use of this name in connection with the drug manufactured by it with a clear purpose to acquire exclusive rights to manufacture, distribute and market in the United States, it is this Panel opinion that the Complainant’s use of the EFRUXIFERMIN name would be considered use “in the ordinary course of trade” and that Complainant has rights in the name for the purposes of the UDRP policy 4(a)(i), which for the said purpose acquired secondary meaning in relationship with the Complainant’s pharmaceutical product.
Although, in the WIPO case, Teva Pharmaceutical Industries Limited v. BLTC Research, No. D2005-0113, an UDRP Panel held that INNs fall outside the present UDRP, this Panel decides not to apply the same conclusion, s in this case the registration of the disputed domain name took place before EFRUXIFERMIN had been adopted as USAN, at a moment when the Complainant’s use of the EFRUXIFERMIN name would have be considered use “in the ordinary course of trade” with the purpose of acquiring exclusive rights to manufacture, distribute and market in the United States the EFRUXIFERMIN drug to treat non-alcoholic steratohepatitis.
This Panel finds that Complainant does hold common law rights in the EFRUXIFERMIN mark for the purposes of Policy ¶ 4(a)(i).
Further, Complainant argues Respondent’s <efruxifermin.com> domain name is identical or confusingly similar to Complainant’s mark, as it fully incorporates to mark and only adds the “.com” gTLD. Adding a gTLD to a complainant’s mark may not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”).
While Respondent contends that the <efruxifermin.com> domain name is comprised of a non-proprietary and generic term and as such cannot be found to be identical or confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Therefore, the Panel find Respondent’s <efruxifermin.com> domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) and the first element under of paragraph 4(a) of the Policy is therefore established.
Under the Policy, the Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <efruxifermin.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. The Panel notes that the WHOIS of record identifies the Respondent as “Robert Seeman” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. See Amend. Compl. Ex. E. In this regard, the Panel finds that Respondent has no rights or legitimate interests in the <efruxifermin.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <efruxifermin.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is diverting Internet users to Respondent’s website. Using a disputed domain name to divert Internet users seeking a complainant’s goods or services to a domain name owned by a respondent may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant provides copies of the <efruxifermin.com> domain name’s resolving webpage, which Complainant alleges directs Internet users of Respondent website <rore.com>, which sells branding services and consulting. See Amend. Compl. Ex. E. Therefore, also in this regards the Panel finds that Respondent fails to use the <efruxifermin.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii)
Additionally, Complainant argues Respondent lacks rights and legitimate interest in the disputed domain name because Respondent intends to sell the domain name for a large sum. Selling a disputed domain name for an amount that exceeds the out-of-pocket costs of registering the domain name may show a lack of rights and legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Here, Complainant provides an affidavit for Daniel Greenburg, who states that his company reached out to Respondent on Complainant’s behalf, in which Respondent initially gave a price of $50,000, and then declined to sell the domain name due to its future value when Complainant’s patents expire. See Amend. Compl. Ex. F. Furthermore, the Panel recalls the Complainant’s screenshots of Respondent’s webpage, which lists a large number of domain names for sale. See Amend. Compl. Ex. E. Therefore, the Panel finds Respondent lacks rights and legitimate interest in the <efruxifermin.com> domain name under Policy ¶ 4(a)(ii).
On the other side, the Respondent argues that the term of the <efruxifermin.com> domain name is non-proprietary and generic, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet. The Panel, considers that at the time of registration of the disputed domain name, January 9, 2020, the term of the <efruxifermin.com> name was not yet adopted by USAN and therefore, was not yet a non-proprietary and generic name. The EFRUXIFERMIN was at the time of the disputed domain name registration a unique name coined by the Complainant with the purpose to acquire exclusive rights to manufacture, distribute and market in the United States.
It is the opinion of this Panel that the rights or legitimate interest in the disputed domain name should exist for the purpose of Policy ¶ 4(a)(ii) at the time of the registration of the disputed domain name by the Respondent, which the Respondent failed to prove.
Therefore, in the opinion of this Panel, the Complainant has fully demonstrated that the Respondent lacks any rights or legitimate interests in the disputed domain name and consequently, the second element of paragraph 4(a) of the Policy is therefore established.
Complainant argues Respondent registered and uses the <efruxifermin.com> domain name in bad faith. Specifically, Respondent is attempting to sell the disputed domain name in excess of the out-of-pocket registration costs. Registering a disputed domain name for the purpose of selling it for an amount that exceeds the registration costs of the domain name may be evidence of bad faith under Policy ¶ 4(b)(i). See Deutsche Lufthansa AG v. Kenechukwu Okoli, FA 1821759 (Forum Jan. 13, 2019) (“The domain name’s website listed the domain name for sale for $9,150. Respondent also contacted Complainant directly to offer the domain name for sale. Doing so suggests bad faith registration and use of the <lufthansamiles.com> domain name pursuant to Policy ¶ 4(b)(i).”). In this sense the Panel considers relevant the Complainant’s affadavit and screenshots of the Respondent’s website, which show Respondent sells domain names and has intentions of selling the disputed domain name for a large sum to Complainant. See Amend. Compl. Ex. E and F. Therefore, the Panel finds Respondent registered and uses the <efruxifermin.com> domain name in bad faith under Policy ¶ 4(b)(i)
Furthermore, Complainant argues Respondent is attempting to disrupt Complainant’s business and attract Internet users for commercial gain by diverting Internet users to Respondent’s website, which is indicative of bad faith. Registering a disputed domain name so to disrupt a complainant’s business and attract Internet users for commercial gain by diverting the users seeking the complainant’s goods or services may be evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also CMG Worldwide, Inc. v. Lombardi, FA 95966 (Forum Jan. 12, 2001) (finding that the respondent’s use of the complainant’s VINCE LOMBARDI mark to divert Internet users to its commercial website located at the <vincelombardi.com> domain name constituted bad faith use and registration of the disputed domain name). In this sense the Panel considers relevant the Respondent’s website that the disputed domain name resolves to, which feature Respondent’s brand consulting services as well as a list of for sale domain names. See Amend. Compl. Ex. E. Therefore, the Panel finds that the Respondent registered and uses the <efruxifermin.com> domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Finally, Respondent had actual knowledge of Complainant’s EFRUXIFERMIN mark at the time of registration. Complainant argues that Respondent had knowledge of Complainant’s rights in the EFRUXIFERMIN mark at the time of registering the <efruxifermin.com> domain name. The Panel chooses to determine whether Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to the fact that the drug which shares its name with the mark is currently in testing and that Complainant derived the word; Respondent must have had prior knowledge of the marks connection with Complainant. As such, the Panel determines that Respondent did have actual knowledge of Complainant’s right in its mark, which would support a finding of bad faith under Policy ¶ 4(a)(iii).
The Panel acknowledges the Respondent’s contentions that the <efruxifermin.com> domain name is comprised entirely of a non-proprietary term, but as indicated above cannot ignore the fact that at the time of the registration of the disputed domain name by the Respondent, EFRUXIFERMIN was not yet adopted by USAN, but it was only an unique name, coined by the Complainant with the purpose to acquire exclusive rights to manufacture, distribute and market its drug under EFRUXIFERMIN. Bad faith in registration and use should also be considered for the purpose of Policy ¶ 4(a)(iii) at the time of the registration of the disputed domain name by the Respondent.
Considering the contentions of both Complainant and Respondent, the Panel holds that the disputed domain name was registered and used in bad faith and the third element of paragraph 4(a) of the Policy is therefore established
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <efruxifermin.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Beatrice Onica Jarka Panelist
Dated: March 1, 2021
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