The Complainant is Regeneron Pharmaceuticals, Inc. of Tarrytown, New York, United States of America (“United States”) (“Complainant”), represented by Ohlandt, Greeley, Ruggiero & Perle, LLP, United States.
The Respondent is Whois Privacy Protection Service, Inc. of Kirkland, Washington (“Respondent”), United States / Name Redacted. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2015. On April 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. The same day, the Registrar 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 Complainant on April 27, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on April 27, 2015.
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 Respondent of the Complaint, and the proceedings commenced on April 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 19, 2015.
The Center appointed M. Scott Donahey as the sole panelist in this matter on May 27, 2015. 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 is a company involved in the research and development of pharmaceutical products. Complainant was founded in 1988 and has used the REGENERON mark in commerce since that time. Complainant owns several REGENERON trademarks issued by the United States Patent and Trademark Office (“USPTO”), which registrations date back to as early as August 1991. Complainant has advertised the REGENERON marks extensively for years. The actual identity of Respondent is unknown to Complainant, as Respondent employed a privacy service. The underlying registrant as disclosed by the Registrar lists one of Complainant’s employees as the registrant of record of the disputed domain name, and shows an address reflecting Complainant’s contact information. According to Complainant; however, the named employee is not the actual registrant of the disputed domain name, and states in this regard that the information displayed in the publicly available WhoIs is falsified. Complainant has never authorized Respondent to act for it or to use its mark in any way. On November 5, 2014, Complainant sent Respondent a cease and desist letter by email which was automatically forwarded by the privacy service to the email address the registrant gave to the privacy service. The email was returned with the statement, “Delivery has failed to these recipients or groups.” The email was thereafter resent with the same result.
Respondent registered the disputed domain name on October 18, 2014. The disputed domain name consists of the coined word “regeneron” which corresponds exactly to Complainant’s trademark and the coined word “pharmcareer.” The disputed domain name resolves to a web page that gives the message: “404. That’s an error. The requested URL / was not found on this server. That’s all we know.” 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to its REGENERON trademark, that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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 directs that the complainant must prove each of the following:
(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
(2) that the respondent has no rights or legitimate interests in respect of the domain name; and,
(3) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name consists of Complainant’s coined trademark REGENERON to which the coined term “pharmcareer” has been appended. The coined term suggests careers in the pharmaceutical field. The combination suggests that the web site was created for the purpose of recruiting prospective employees in the pharmaceutical field for jobs with Complainant. It is well established that the addition of such a descriptive term to an established trademark to form a domain name results in a domain name that is confusingly similar to the mark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s registered trademark. B. Rights or Legitimate Interests
The consensus view of WIPO URDP panelists concerning the burden of establishing no rights or legitimate interests in respect of a domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of 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.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), Section 2.1.
In the present case Complainant alleges and has made out a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
The disputed domain name resolves to a web site at which it is stated in pertinent part: “The requested URL / was not found on this server. That’s all we know.” Respondent has registered the disputed domain name under the shield of a privacy service. The disputed domain name includes the coined term “regeneron” which corresponds to Complainant’s REGENERON trademark, which had been in use and had been registered with the USPTO for more than twenty-five years before the disputed domain name was registered. To this it appends a coined term that suggests it is an employment office affiliated with or seeking employees for Complainant. Moreover, there is no conceivable legitimate use of the coined term “regeneron” which is now Complainant’s registered trademark REGENERON, other than by or under the authority of Complainant, as in the case of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Accordingly, the Panel finds that Respondent has engaged in bad faith registration and use of the disputed domain name. 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 Complainant.
M. Scott Donahey
Sole Panelist
Date: May 28, 2015
Full & Egal Universal Law Academy