VitriVax, Inc. v. Alexander Segal
Claim Number: FA2108001959542
Complainant is VitriVax, Inc. (“Complainant”), represented by Laila S. Wolfgram of Polsinelli P.C., Missouri, USA. Respondent is Alexander Segal (“Respondent”), represented by Cy Bates, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vitrivax.com>, registered with GoDaddy.com, LLC.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 13, 2021; the Forum received payment on August 13, 2021.
On August 16, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <vitrivax.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 August 19, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 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@vitrivax.com. Also on August 19, 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 August 30, 2021.
On September 7, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
On September 9, 2021, Complainant’s unsolicited Additional Submission was received.
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.
A. Complainant
i) Complainant is a technology company specializing in storage and delivery of vaccines. Complainant has rights in the VITRIVAX mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. 6,445,912, registered Aug. 10, 2021). Complainant has publicly and continuously used its VITRIVAX trademark beginning in 2014 and has persistently promoted its business and earned notoriety for its efforts. Therefore, Complainant owns common law rights in VITRIVAX. The disputed domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its VITRIVAX mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead hosts parked, pay-per-click links on the disputed domain name’s resolving website.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent offered the disputed domain name for sale to Complainant for a price far beyond what it paid for the name. Respondent disrupts Complainant’s business for commercial gain by hosting parked, pay-per-click links on the disputed domain name’s resolving website. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the VITRIVAX mark.
B. Respondent
i) Respondent has been, since 2014, the vice president of a technology company that develops thermostable powders, including vaccines. Respondent has used the VITRILIFE mark in its business and has registered multiple websites with variations of the mark since that time. Respondent’s company Universal Stabilization Technologies Inc. has a proprietary platform called VitriLife® which involves custom formulation and drying of biological materials into thermostable powders, which includes, inter alia, vaccines. Respondent had legitimate interests to register additional domain names embodying a vitri-formative mark and which would be related to the VitriLife® technology platform. Respondent uses the disputed domain name for a bona fide offering of goods or services, as it registered the domain name to prepare to promote vaccine materials while it awaits FDA approval, thus evidencing a use commensurate with the domain name. Respondent is preparing to use the disputed domain name, but is currently parking it while it awaits FDA approval of its product.
ii) Complainant asserts that it has “publicly and continuously used its VITRIVAX trademark beginning in 2014.” However, Complainant provided no evidence of such use in 2014 and instead only included evidence beginning in 2017. A Google search backdated to 2014 returns no meaningful results. The only discoverable use of VitriVax Inc. in 2014 was for a business formation in October 2014 from the state of Delaware. However, merely forming a corporation containing the name is not considered “use in commerce”. See TMEP §901.01(2) (“a mark shall be deemed in use in commerce on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce”).
iii) Respondent did not register and does not use the disputed domain name in bad faith. Respondent’s offer reflects the value it holds for Respondent’s business, and Respondent was unaware of Complainant at the time of registering the disputed domain name, so it could not have had the intent to sell it at the time of registration. Respondent has not exhibited a pattern of bad faith registration and use. Respondent’s use of the disputed domain name’s resolving website, along with its lack of knowledge of Complainant at the time of registration and the lack of any content that implies a false relationship with Complainant on the resolving website all demonstrate that Respondent did not register and does not use the disputed domain name for bad faith disruption for commercial gain.
C. Complainant’s Additional Submission
i) Complainant has clearly established common law rights in the VitriVax trademark and in the VitriVax name as required by Section 4(a)(i) of the UDRP. Respondent is fixated on Complainant’s use of its trademark between 2014 and 2017. Although Complainant did not have a website until September of 2018, Complainant was continually developing rights in the VitriVax name from the time it was formed in 2014. Complainant openly and prominently uses its VitriVax trademark to identify both the company and its services. In addition to the article and presentation submitted in its complaint, Complainant submits a second article dated November 7, 2016 which clearly links Complainant’s trademark to its vaccine research being performed at that time.
ii) Respondent has made absolutely no use of the disputed domain name other than as a parked site. Respondent failed to submit any support for its actual use of VitriVax. Respondent’s unsupported statements fail to establish that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services, making a noncommercial fair use of the disputed domain name, or is known by or referred to as “VitriVax.”
iii) Respondent’s statements regarding its denial of bad faith are actually counter-to its position. Respondent admits that once it receives all the necessary regulatory authorizations, it intends to use the disputed domain name to sell its products. Complainant has rights in the trademark, VitriVax, established prior to registration of the disputed domain name. However, Respondent asserts that it will use a domain name comprised of the federally registered trademark, VitriVax, as part of its business that is in the same industry in which Complainant operates, which will cause confusion. Respondent makes unsubstantiated claims regarding the value of the disputed domain name and offers no proof or accounting that justifies the $10,000.00 amount.
1. The disputed domain name was registered on February 8, 2018.
2. Complainant has rights in the VITRIVAX mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. 6,445,912, registered August 10, 2021).
3. The date of first use of Complainant’s mark in commerce is October 31, 2018.
4. Complainant has failed to establish common law rights in Complainant’s mark ‘VitriVax’ prior to the registration of the disputed domain name.
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.
Complainant claims rights in the VITRIVAX mark through its registration with the USPTO (Reg. 6,445,912, registered August 10, 2021). Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Synovus Financial Corp. v. Elizabeth Fagin / Wells & Wadw, FA 1601001655021 (Forum Feb. 5, 2016) (finding that Complainant had demonstrated its rights in the SYNOVUS mark through its registration with the USPTO). Therefore, the Panel finds Complainant has established rights in the mark under Policy ¶ 4(a)(i).
Complainant claims common law rights in the VITRIVAX mark. Under Policy ¶ 4(a)(i), common law rights in a mark may suffice in lieu of a registered trademark. See Plain Green, LLC v. Andy Tang, FA 1722962 (Forum May 22, 2017) (finding that complainant had established that its rights in the PLAIN GREEN mark predated respondent’s registration of the disputed domain name, despite the fact that complainant’s trademark application was filed two months after respondent registered the name). Additionally, under Policy ¶ 4(a)(i), secondary meaning is generally considered evidence of common law rights, and may be demonstrated through numerous factors, including longstanding use and advertising of the mark, media recognition, and more. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”).
Section 1.3 of the WIPO Overview 3.0 addresses the question of what needs to be shown for a complainant to successfully assert common law trademark rights and provides the following consensus view:
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. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning.
Complainant contends that it was continually developing rights in the VitriVax name from the time it was formed in 2014. Complainant openly and prominently uses its VitriVax trademark to identify both the company and its services. In addition to the article and presentation submitted in its complaint, Complainant submits a second article dated November 7, 2016 which links Complainant’s trademark to its vaccine research being performed at that time. Complainant provides screenshots, including a presentation by the company using the mark from 2017, and a screenshot of Complainant’s website.
Respondent argues that Complainant provided no evidence of such use in 2014 and instead only included evidence beginning in 2017. A Google search backdated to 2014 returns no meaningful results. The only discoverable use of VitriVax Inc. in 2014 was for a business formation in October 2014 from the state of Delaware. However, merely forming a corporation containing the name is not considered “use in commerce”.
Complainant argues that the disputed domain name is identical or confusingly similar to Complainant’s VITRIVAX mark as it incorporates the mark in its entirety and adds the “.com” gTLD to the end of the mark. Adding a gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). The disputed domain name incorporates Complainant’s mark and adds the “.com” gTLD to the end of the mark. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark registered at the USPTO (Reg. 6,445,912, registered August 10, 2021), and thus it finds Complainant has satisfied Policy ¶ 4(a)(i).
As the Panel finds Complainant failed to satisfy Policy ¶ 4(a)(iii) (Registration and Use in Bad Faith), the Panel declines to analyze Policy ¶ 4(a)(ii). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
The Panel notes that Respondent’s registration of the disputed domain name predates Complainant’s first claimed rights in the VITRIVAX mark (filed on November 5, 2020 and proceeded to registration on August 10, 2021). Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum June 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).
As noted above, the certificate of trademark registration number 6,445,912 of USPTO for Complainant’s mark VITRIVAX shows the first use in commerce being October 31, 2018. The Panel is of the view that that a mere showing of the first use of the name ‘VitriVax’ in 2014 as referred to in one of the press articles which Complainant has produced, coupled with the additional material from the Complainant’s website is insufficient to infer Respondent’s awareness of Complainant’s common law rights in VitriVax mark at the time of registering the disputed domain name. Therefore, the Panel concludes that Complainant has failed to establish that Respondent registered the disputed domain name in bad faith. The Panel finds Complainant failed to satisfy 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 <vitrivax.com> domain name REMAIN WITH Respondent.
Ho-Hyun Nahm, Esq., Panelist
Dated: September 10, 2021
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