The Complainant is Genomatix Software GmbH of Munich, Germany, represented by Beetz & Partner, Germany.
The Respondent is Intrexon Corporation of Blacksburg, Virginia, United States of America (“USA”), represented by Nixon Peabody, LLP, USA.
The disputed domain name <genomatix.com> (the “Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2010, against Domains by Proxy Inc. for Mr Robert Beech.
The Center transmitted its request for registrar verification to the Registrar on May 17, 2010. The Registrar replied on May 18, 2010, stating that the Domain Name was registered with it, but that the registrant was Intrexon Corporation. The Registrar provided the full contact details held on its WhoIs database in respect of the Domain Name and confirmed that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied, that the Domain Name would expire on May 30, 2010, that it would remain locked during this proceeding subject to expiry, and that the registration agreement was in English. The Registrar also stated that it had not received a copy of the Complaint.
By email of May 18, 2010, the Center asked the Complainant (a) to confirm whether a copy of the Complaint had been sent to the Respondent (there being no such certification in the Complaint), (b) to resubmit the Complaint and Annexes complying with the email size limit of 10 MB specified by the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”), and (c) to amend the Complaint in the light of the information provided by the Registrar identifying the registrant as Intrexon Corporation. The Complainant submitted an Amended Complaint on May 19, 2010, which identified the Respondent as Domains by Proxy Inc. for Intrexon Corporation and confirmed that it had been sent to the Respondent and the Registrar.
By email of May 18, 2010, the Center asked the Registrar to confirm in accordance with paragraph 188.8.131.52 of ICANN's Expired Domain Deletion Policy that the Domain Name would remain under Registrar Lock after the expiry date until this proceeding has concluded and whether any action was required by the parties to keep the Domain Name under Registrar Lock. The Registrar replied on May 19, 2010, stating that its position was to make the Complainant bear the burden of ensuring that the Domain Name did not expire, but that it did take steps to ensure that it would remain in status quo during the proceeding. By email of May 19, 2010, the Complainant asked the Registrar to provide details of what it should do to avoid expiry of the Domain Name. The Registrar informed the parties that the renewal fee should be paid. By email of May 20, 2010, the Respondent offered to pay the renewal fee. By email of May 26, 2010, the Registrar confirmed that the renewal fee had been paid by the Respondent.
The Center verified that the Amended Complaint satisfied the formal requirements of the UDRP, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 19, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 8, 2010. The Response was filed with the Center on June 8, 2010.
The Center appointed Jonathan Turner as the sole panelist in this matter on June 16, 2010. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Having reviewed the file, the Panel is satisfied that the Amended Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
By a Procedural Order of June 21, 2010, the Panel invited the Complainant to submit a reply to the Respondent's allegation of reverse domain name hijacking by June 28, 2010. The Complainant submitted a response on that date which contained further submissions on whether the Respondent had a right or legitimate interest in respect of the Domain Name and whether the Domain Name had been registered and was being used in bad faith, but which did not specifically address the Respondent's allegation of reverse domain name hijacking. Although this submission did not comply with the Panel's Procedural Order, the Panel decided to admit it since it did not contain any material which altered the Panel's determination of the Complaint.
The Respondent submitted a response to this submission on June 30, 2010. Since the Complainant's submission did not contain any material which altered the Panel's determination, the Panel has disregarded the Respondent's further response.
The Complainant was registered as a company in Germany under its present name on June 6, 1997, and has promoted and supplied software since then under the name “Genomatix” to companies operating in the field of biotechnology.
A company called Genomatix Ltd was incorporated in Ohio, USA, on January 10, 1998. Genomatix Ltd registered the Domain Name on May 31, 1998, and subsequently operated a website at “www.genomatix.com” promoting products and services for use in biotechnology research.
The word mark GENOMATIX and a logo containing the word “GENOMATIX” were registered as service marks in class 42 on the principal register of the US Patent and Trade Mark Office on January 15, 2002 and December 25, 2001 respectively, pursuant to applications by Genomatix Ltd of September 20, 2000. These registrations were subsequently cancelled on October 17, 2008 and September 26, 2008 respectively.
Substantially all of the assets of Genomatix Ltd were purchased by the Respondent, then called Genomatix Corporation, on May 13, 2004, in return for the issue of shares in the Respondent to Genomatix Ltd. The Respondent changed its name to its present name on August 8, 2005, but retained “Genomatix” as the name of an ancillary division.
On October 2, 2006, the Chief Business Officer of the Complainant wrote to the Respondent in the following terms: “Dear Colleagues, our 10k offer is still standing. Any interest?”. The Chief Executive of the Respondent replied on October 19, 2006: “Dear Dr May, With regard for saving future time on this matter, please be advised that Intrexon will maintain a perpetual lack of interest at any amount that is not substantially above the $10k level”.
As at March 4, 2010, the Domain Name was registered in the name of a privacy service and pointed to a website at “www.quadbio.com” which displayed sponsored listings relating to biosciences.
The Complainant contends that it has rights in the mark GENOMATIX by virtue of its promotion and sales under this name. It submits that the Domain Name is effectively identical to this mark.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the Domain Name, referring to the fact that it was directed to a parking site as at March 4, 2010.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant draws attention to the Respondent's email of October 19, 2006, which it characterises as advising that the Respondent was willing to transfer the Domain Name for a payment substantially above USD 10,000. According to the Complainant, this is clear evidence of bad faith as it shows that the Respondent's only interest in registration of the Domain Name was to sell it for a substantial payment in excess of its out-of-pocket costs of registering it.
The Complainant also contends that the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant's prior rights as to the source, sponsorship, affiliation or endorsement of its website.
The Complainant requests a decision that the Domain Name be transferred to the Complainant.
In its further response following the Panel's Procedural Order, the Complainant emphasises that it has prior rights to the “Genomatrix” name, that it has remained active since its foundation in both Europe and the USA, and that (in contrast) the Respondent's use of the “Genomatrix” name in its business ceased a long time ago. The Complainant notes that the Respondent's registered trademarks for “Genomatrix” in the USA had been cancelled. The Complainant also repeats a number of points already made in its Complaint.
The Respondent points out that the Domain Name is not identical to the Complainant's full name.
The Respondent emphasises that GENOMATIX was used in connection with bona fide offerings of goods and services and registered as a mark in the USA by its predecessor long before notice of this dispute.
With regard to the direction of the Domain Name to a parking web page on March 4, 2010, the Respondent explains that it has sought at all times since it changed its name to its present name to direct the Domain Name to a website at one of its other domain names. It states that the domain name <quadbio.com> was used by Quadrant Biosystems, a research tools division of the Respondent, and is currently directed to the Respondent's principal website at “www.dna.com”. According to the Respondent, even if the Domain Name was at some point directed to a parking site, this would be insufficient to show that the Respondent had no rights or legitimate interests in respect of the Domain Name.
The Respondent denies that the Domain Name was registered in bad faith and maintains that, on the contrary, it was registered for the purpose of a bona fide offering of goods and services. The Respondent further maintains that the Domain Name was used for bona fide offerings of goods and services until the Respondent changed its name, and that since then it has been directed legitimately to websites at other domain names of the Respondent. The Respondent submits that it continues to have a legitimate interest in the Domain Name since it reflects the name of one of its divisions and a legal entity affiliated with it.
The Respondent states that its email of October 19, 2006, did not in fact offer to sell the Domain Name for a price in excess of USD 10,000, but merely said that it would not be interested in any offer which was not substantially in excess of this sum. The Respondent submits that it cannot be inferred from this that the Domain Name was registered for the purpose of sale to the Complainant given the longstanding use of the Domain Name and the corresponding mark by its predecessor for its commercial business.
The Respondent alleges that reasonable inquiry by the Complainant would have revealed the weakness of its Complaint. The Respondent therefore seeks a rejection of the Complaint and a finding of reverse domain name hijacking.
In accordance with paragraph 4(a) of the UDRP, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.
It is clear from the terms of the UDRP and confirmed by numerous decisions under it that these are cumulative requirements. The Panel will consider them in turn.
The Panel finds that the Complainant has unregistered rights in the mark GENOMATIX by virtue of its substantial use of this name.
The Domain Name is effectively identical to this mark, the generic top level domain suffix being discounted for the purpose of the comparison required by this element of the UDRP.
The first requirement of the UDRP is satisfied.
The Panel finds on the evidence that before any notice to the Respondent of the dispute, the Respondent and its predecessor in business had used the Domain Name and the corresponding mark GENOMATIX in connection with a bona fide offering of goods or services.
There is no evidence that the commercial use of the Domain Name and corresponding mark by the Respondent and its predecessor was in bad faith to take unfair advantage of the Complainant's rights. Furthermore the absence of any evidence of any objection by the Complainant to the registration of the Domain Name in May 1998 or to its commercial use at any time between then and the filing of this Complaint nearly 12 years later in May 2010 suggests that this use was not regarded as infringing whatever rights the Complainant may have had.
In accordance with paragraph 4(c)(i) of the UDRP the use of the Domain Name and corresponding mark in connection with a bona fide offering of goods or services prior to notice of the dispute demonstrates that the Respondent has rights or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) of the UDRP.
The second requirement of the UDRP is not satisfied.
The Panel finds on the evidence that the Domain Name was registered by the Respondent's predecessor in business Genomatix Ltd for the purpose of bona fide use in connection with a bona fide business carried on under the mark GENOMATIX and the name Genomatix Ltd. The Panel also finds that the transfer of the Domain Name to the Respondent, at that time called Genomatix Corporation, was made in good faith.
These findings cannot be negated by any subsequent willingness of the Respondent to sell the Domain Name for a substantial price. Where several years and a corporate reorganisation and rebranding elapse between the registration of a domain name and a discussion of its possible sale, it cannot be inferred that it was registered at the outset for the purpose of sale to the Complainant or a competitor of the Complainant. Moreover, even if such an inference could be drawn, it is displaced in this case by the clear evidence of bona fide commercial use of the Domain Name and corresponding mark and name by the Respondent and its predecessor in business.
The Panel is also not satisfied that the Domain Name is being used in bad faith. On the evidence, the Panel is not able to reject the Respondent's explanation of its intended use of the Domain Name following its change of corporate name, even though the use on March 4, 2010, as recorded in the Complaint, does not appear to accord with that intention. In any event, this point is moot, since it is clear from the wording of the UDRP and confirmed by decisions under it that the two elements of the third requirement - registration and use in bad faith - are cumulative. Both must be established for the requirement to be satisfied.
The Panel concludes that the third requirement of the UDRP is not satisfied.
In accordance with paragraph 15(e) of the Rules, 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.
Reverse domain name hijacking is defined in paragraph 1 of the Rules as using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name. Previous panels have found this to include recklessness or knowing disregard of a respondent's right or legitimate interest or of the evident absence of bad faith registration. See e.g. Editions Milan v. Secureplus, Inc., WIPO Case No. D2010-0606 and Donvand Limited trading as Gullivers Travel Associates v. Gullivers Travel/Gulliver's Travel Services, Gullivers Travel Agency and Metin Altun/GTA, WIPO Case No. D2004-0741.
The Panel finds that the Complaint in this case was made with a reckless disregard for the possibility that the Domain Name was registered in good faith. The Complaint does not contain any evidence to support the allegation that the Domain Name was registered in bad faith. Nor does the Complainant's submission following the Panel's Procedural Order.
In all the circumstances, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
For all the foregoing reasons, the Complaint is denied and the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Dated: July 8, 2010