The Complainant is Regeneron Pharmaceuticals, Inc. of Tarrytown, New York, United States of America (“US”), represented by Ohlandt, Greeley, Ruggiero & Perle, LLP, US.
The Respondent is Cameron David Jackson of Kingston, Norfolk Island, New South Wales, Australia. 2. The Domain Names and Registrars
The disputed domain names and are registered with Instra Corporation Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2016. On September 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 23, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On September 27, 2016, the Center sent to the Registrar a request for confirmation that a Lock of the disputed domain names had been applied. The Registrar confirmed by email on the same day that a Lock had been placed on both disputed domain names.
The Center verified that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2016.
The Center appointed Clive Duncan Thorne as the sole panellist in this matter on November 2, 2016. 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, at paragraph 7. 4. Factual Background
The Complainant Regeneron Pharmaceuticals, Inc is the owner of the trademark REGENERON which it has used since 1988 in connection with the research and development of pharmaceutical products and the manufacture and sale of pharmaceutical products.
In particular the Complainant is the owner of several US trademark registrations for the mark REGENERON including the following:
(a) Registration no. 1654595 for REGENERON dated August 20, 1991 covering “Research and development of medicines and treatments for neurological diseases and psychiatric disorders” in Class 42;
(b) Registration no. 1933337 for REGENERON dated November 7, 1995 covering “Pharmaceuticals for treatment of diseases in humans and/or animals…” in Class 5;
(c) Registration no. 4225793 for REGENERON dated October 16, 2012 covering “Pharmaceutical preparations for the treatment of ophthalmic diseases and conditions and for the treatment of inflammation and inflammatory diseases and disorders” in Class 5;
(d) Registration no. 4402743 for REGENERON dated September 17, 2013, covering “Live genetically altered animals” in Class 31;
(e) Registration no. 4402744 for REGENERON dated September 17, 2013 covering “Pharmaceutical products for the treatment of cancer” in Class 5; and
(f) Registration no. 5027241 dated August 23, 2016 covering “Pharmaceutical preparations for use in the treatment of lipid metabolism disorders and hypercholesterolemia” in Class 5.
The Complainant has also owned several trademark registrations in other jurisdictions since 1993. Copies of the Complainant's trademark registrations are set out in Annex 3 to the Complaint.
The Complainant is also the owner of the domain name which has been registered since 1997. Evidence of this is set out at Annex 4 to the Complaint.
Since the founding of the Complainant in 1988 millions of dollars have been spent on the registration, advertisement and promotion of the mark REGENERON. The mark REGENERON has been widely advertised. The Complainant has won several major awards over the past years set out at Annex 5 to the Complaint.
The disputed domain name was registered on April 2, 2016 and the disputed domain name was registered on June 22, 2016. The disputed domain names both point to a parked website.
No response has been filed by the Respondent and therefore the Panel proceeds on the basis of the evidence of the Complainant only. The Panel finds the evidence adduced by the Complainant to be true. 5. Parties’ Contentions A. Complainant
The Complainant submits:
1. The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. The Respondent has no rights or legitimate interests in respect of the disputed domain names in particular the Respondent cannot demonstrate or establish any rights or legitimate interests;
3. The disputed domain names were registered and are being used in bad faith in particular the Complainant relies upon evidence that the Respondent has engaged in cybersquatting by registering the disputed domain names and offering to transfer the disputed domain name to the Complainant for an exorbitant amount. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
As set out above there is considerable evidence of the Complainant as the owner of trademarks incorporating REGENERON which precede the date of registration of the disputed domain names.
The two disputed domain names incorporate the Complainant's mark REGENERON in its entirety so as to establish confusing similarity. The disputed domain names utilise the generic words “pharmaceuticals” and “research” both of which are related to the activities of the Complainant. Accordingly, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant relies upon the following:
1. There is no evidence of a relationship between the Complainant and the Respondent giving rise to any licence or permission or other rights entitling the Respondent to register or use domain names incorporating the Complainant's mark REGENERON.
2. The Complainant relies upon a response to a Cease and Desist letter sent on its behalf on May 13, 2016 in relation to the disputed domain name . The Respondent replied by email dated May 13, 2016 that he would transfer the domain name to the Complainant for USD 525. The Complainant submits that this demonstrates that the Respondent's only interest was that of a cybersquatter seeking to sell the disputed domain name knowingly containing the Complainant's mark for an exorbitant amount. Copies of this exchange of correspondence are set out in Annex 6 to the Complaint.
3. The Respondent then subsequently registered the second disputed domain name on June 22, 2016.
According to the Complainant it follows that the Respondent cannot have registered these domain names in dispute for any legitimate purpose.
In the absence of a Response the Panel accepts the Complainant's submissions and finds that the Respondent has no rights or legitimate interest in respect of the disputed domain names. C. Registered and Used in Bad Faith
The Complainant alleges that the Respondent's bad faith is clearly demonstrated by the evidence of cybersquatting referred to in Section 6.B. above and the response to the Cease and Desist letter of May 13, 2016 which resulted in an offer by the Respondent to transfer one of the disputed domain names to the Complainant for an exorbitant amount.
The Complainant relies upon the fact that there is a pattern of the Respondent acting in bad faith in registering and using the trademarks of other parties on several prior occasions such as to establish a pattern of behaviour by the Respondent that creates a presumption of bad faith in registering the disputed domain names in the present case.
The Complainant also relies upon evidence that the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain names. In particular the Respondent had prior notice of the Complainant's rights in the trademark REGENERON in the US. Moreover the trademark REGENERON is a coined word with no other known identification except the Complainant. In the Complainant's view this clearly demonstrates the Respondent's awareness of the Complainant's name and business and is evidence of the Respondent capitalising on the goodwill associated with the trademark REGENERON. The disputed domain names both point to a parked website.
In the absence of submissions or evidence to the contrary the Panel finds that the disputed domain names were registered and are being used in bad faith by the Respondent. 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 names and be transferred to the Complainant.
Clive Duncan Thorne
Sole Panelist
Date: November 11, 2016
Full & Egal Universal Law Academy