The Complainant is Regeneron Pharmaceuticals, Inc. of Tarrytown, New York, United States of America, represented by Ohlandt, Greeley, Ruggiero & Perle, LLP of Stamford, Connecticut, United States of America.
The Respondent is Whois Privacy Protection Service, Inc./ Neuroregeneron, shann lin of Bellevue, Washington and Pottsville, Pennsylvania, United States, respectively. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2012, naming as the Respondent “Whois Privacy Protection Service, Inc.”. On March 2, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On March 2, 2012, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 8, 2012 providing the registrant and contact information disclosed by the Registrar, namely, “Neurogeneron, shann lin”, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 8, 2012.
The Center verified that the Complaint together with the amended 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 March 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2012.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on April 23, 2012. 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
Complainant states that it is involved in the research and development of pharmaceutical products and that it also manufactures and sells pharmaceutical products, including a drug for the treatment of a rare, inherited, inflammatory condition under the trademark ARCALYST. Complainant further states, and has provided evidence to support, that “[t]he REGENERON® mark appears on ARCALYST® product packaging and packaging and labels for drug clinical trials.”. Complainant furthers states that it is the owner of numerous trademark registrations worldwide for the mark REGENERON, including U.S. Reg. No. 1,654,595 (registered on August 20, 1991) for use in connection with “research and development of medicines and treatments for neurological diseases and psychiatric disorders”; and U.S. Reg. No. 1,933,337 (registered on November 7, 1995) for use in connection with “pharmaceuticals for treatment of diseases in humans and/or animals; namely, diseases and/or injuries of the central and peripheral nervous systems; diseases and/or injuries to muscles; diseases and/or injuries to internal organs; and dermal cancers derived from embryonic ectodermal and mesodermal layers”. These marks are referred to hereafter collectively as the “REGENERON Trademark.” Complainant further states that it is the registrant of the domain name , which “has been registered since 1997 and has been used to promote Complainant’s REGENERON® products and activities since 2002.”
Complainant states, and has provided evidence to support, that the Disputed Domain Name is being used in connection with a “Google partner page” that “contains a Google search engine and posts news stories from other sources, such as R and CNNM.”. Complainant further states that it sent a demand letter to Respondent regarding the Disputed Domain Name on September 28, 2011, that it resent the letter on October 26, 2011, and that it has received no response.
The Disputed Domain Name was created on April 16, 2008. 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is “almost identical” to the REGENERON Trademark because the Disputed Domain Name includes the REGENERON Trademark in its entirety plus the word “neuro,” which is “simply a generic / descriptive term and cannot be said to sufficiently distinguish the domain name from” the REGENERON Trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “[t]here is no relationship between Complainant and Respondents giving rise to any license, permission, or other right by which Respondents could own or use any domain names incorporating” the REGENERON Trademark; the Disputed Domain Name “is not, nor could it be contended to be, a name or nickname of the Respondents”; the REGENERON Trademark “is a coined word and as such is not one that other parties, including Respondents, would choose unless seeking to create an association with Complainant”; and, by using the Disputed Domain Name in connection with a “Google partner page” , Respondents are “capitalizing on the goodwill and recognition associated with” the REGENERON Trademark.
- The Disputed Domain Name was registered and is being used in bad faith because, by choosing to register a domain name that contains the “coined word” ”regeneron”, Respondents are aware of Complainant and “desire to capitalize on the goodwill” associated with this trademark; and by associating the Disputed Domain Name with a “Google partner page,” Respondents “ have never developed a site” and are “engaged in… passive holding” of the Disputed Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in the REGENERON Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the REGENERON Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “neuroregeneron”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
The addition of certain words, as here (that is, “neuro”), can “exacerbate[] the confusing similarity between the [Complainant’s] trademark and the Domain Name and increase[] the risk of confusion between the Domain Name and the… trademarks.” Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill,WIPO Case No. D2010-2124 (citing Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561 (citing Yellow Corporation v. MIC,WIPO Case No. D2003-0748 (“when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”)).
Here, because the word “neuro” is associated with the services with which the REGENERON Trademark is used, this word increases the confusing similarity between the Disputed Domain Name and Complainant’s trademark. See, e.g., Gateway Inc. v. Domaincar,WIPO Case No. D2006-0604 (finding the domain name confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY Marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”); and Guccio Gucci S.p.A. v. Hainei Zhou,WIPO Case No. D2011-1017.
Specifically, the Panel’s review of the Merriam-Webster online dictionary reveals that the prefix “neur-” is defined as “nerve” or “neural.”1 This is clearly a term that is associated with the REGENERON Trademark, as shown in the description of goods listed above, which include references to “neurological diseases and psychiatric disorders” and “diseases and/or injuries of the central and peripheral nervous systems”.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that, inter alia, Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “[t]here is no relationship between Complainant and Respondents giving rise to any license, permission, or other right by which Respondents could own or use any domain names incorporating” the REGENERON Trademark; the Disputed Domain Name “is not, nor could it be contended to be, a name or nickname of the Respondents”; the REGENERON Trademark “is a coined word and as such is not one that other parties, including Respondents, would choose unless seeking to create an association with Complainant”; and, by using the Disputed Domain Name in connection with a “Google partner page,” Respondents are “capitalizing on the goodwill and recognition associated with” the REGENERON Trademark.
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” See WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of Complainants’ allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, Complainant argues that bad faith exists pursuant to paragraph 4(b)(iii). However, Complainant does not explain how Respondent is a “competitor.” Accordingly, the Panel does not make a judgment in this respect.
The Respondents’ use of the Disputed Domain Name in this case, and Complainant’s arguments regarding bad faith, are essentially the same as in a previous UDRP decision, Sanofi-aventis v. Gerard Scarretta,WIPO Case No. D2009-0229. There, the panel wrote:
“The Complainant's case regarding use in bad faith is that the Respondent is effectively engaged in ‘passive holding’ of the disputed domain name within the terms originally established by Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The concept of ‘passive holding’ typically implies complete inaction on the part of the Respondent characterised by a failure to direct the domain name under dispute to any active website. At first sight that does not appear to be the situation in the present case, where the Respondent has apparently made an active choice to direct the disputed domain name to a Google ‘partner page’. The Complainant's submission, however, is that this may be assimilated with ‘passive holding’ because the website is no more than a temporary parking place for the disputed domain name and in reality constitutes a reservation for some unidentified future use. The Panel accepts this submission on the basis that the website with which the Respondent has associated the disputed domain name is clearly a third party service which subsists entirely independently of the configuration of the disputed domain name. It could not in any sense be described as an active site provided by the Respondent himself.”
This Panel agrees with the conclusion reached in Sanofi-aventis v. Gerard Scarretta, supra, and, therefore, evaluation of the Telstra factors is considered appropriate. In Telstra, the panel considered the following factors applicable in assessing bad faith when passive holding exists: whether the Complainant’s trademark has a strong reputation and is widely known; whether the Respondent has provided evidence of any actual or contemplated good faith use by it of the domain name; whether the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name; whether the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement; and “taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”
While not all of the Telstra factors are applicable here, it appears that the REGENERON Trademark enjoys a strong reputation and is well-known, based upon its long history and numerous registrations worldwide; Respondent has not provided evidence of any actual or contemplated good faith use by it of the Disputed Domain Name; and, in this Panel’s view, it is at least difficult to conceive of any plausible actual or contemplated active use of the Disputed Domain Name by the Respondent that would not be illegitimate. Further, Respondents’ failure to respond to Complainant’s demand letter is additional evidence of bad faith. Encyclopedia Britannica v. Zucarini,WIPO Case No. D2000-0330; and RRI Financial, Inc., v. Ray Chen,WIPO Case No. D2001-1242.
Accordingly, the Panel is satisfied that Complainant has proven the third element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
Douglas M. Isenberg
Sole Panelist
Dated: May 4, 2012
1 (visited May 4, 2012)
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