Complainant is Regeneron Pharmaceuticals, Inc. of Tarrytown, New York, United States of America (“United States” or “US”), represented by Ohlandt, Greeley, Ruggiero & Perle, LLP, United States.
Respondent is Ron Smith of Key West, Florida, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2017. On February 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 7, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on February 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 7, 2017.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on March 8, 2017. 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
Since 1988, Complainant is engaged in the research and development, and manufacture and sale of pharmaceutical products.
Complainant is the owner of several US trademark registrations for REGENERON, first issued in 1991. It also owns 80 trademarks in other countries and the European Union, since 1993. Complainant also owns the domain name , which was registered in 1997 and has been used by Complainant to promote its REGENERON products since 2002.
Respondent registered the disputed domain name on September 1, 2016. The disputed domain name resolves to an inactive webpage with the message “the page isn’t “working”. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has rights in the REGENERON trademark. It contends that the disputed domain name is confusingly similar to Complainant’s mark because it consists of Complainant’s REGENERON mark in its entirety, and that the only difference between Complainant’s mark and the disputed domain name is the addition of the letter “r” (regenreron), thus engaging in typosquatting. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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. A. Identical or Confusingly Similar
To satisfy paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
As set forth above, Complainant owns various US and international trademark registrations for the REGENERON mark. The disputed domain name is confusingly similar to Complainant’s REGENERON mark. It contains Complainant’s REGENERON mark in its entirety. The only difference between Complainant’s mark and the disputed domain name is the addition of the letter “r” in the middle of Complainant’s mark – . A domain name which contains a common or obvious misspelling of a trademark is confusingly similar to the mark where the misspelled trademark remains the dominant or principal component of the domain name. Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775.
Accordingly, the Panel finds that Complainant has rights in the REGENERON mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant has exclusive rights in the REGENERON mark and has not authorized Respondent to register and use the disputed domain name . Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the REGENERON mark. Respondent is not known by the disputed domain name or under the mark. Respondent has made no showing that it has any legitimate interest in using the disputed domain name or a bona fide offering of goods or services under the mark. Indeed, the disputed domain name resolves to an inactive webpage. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that:
“for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Other factors may also be considered.
It is difficult to conceive that Respondent did not know of Complainant’s mark and products when Respondent registered the disputed domain name. As set forth above, the REGENERON products are protected by various US and international trademark registrations. Complainant uses the REGENERON mark for its REGENERON products. All of this occurred before Respondent registered on September 1, 2016. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant’s mark when Respondent registered the disputed domain name, and therefore registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574, in which the panel found it “inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant’s rights and interests”.
Additionally, under 15 USC § 1072, registration of the REGENERON mark constitutes constructive notice of the mark. Respondent therefore had legal, if not actual, notice of Complainant’s mark prior to registering the disputed domain name.
Further, the disputed domain name has been used in bad faith.
As set forth above, Respondent has engaged in typosquatting by adding an “r” to Complainant’s REGENERON mark to constitute the disputed domain name . Typosquatting may be considered “virtually per se registration and use in bad faith”. Go Daddy Software, Inc. v. Daniel Hadani,WIPO Case No. D2002-0568. See also S.A.C.I. Falabella v. Hector Ramirez,WIPO Case No. DCO2015-0012, and cases cited therein. This prevents Complainant’s potential customers from finding Complainant’s products, which has the effect of disrupting Complainant’s business under Paragraph 4(b)(iii) of the Policy. See, e.g., Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323.
Typosquatting also evidences Respondent’s attempt “to attract, for commercial gain, Internet users to [Respondent’s] web site… by creating a likelihood of confusion with the complainant’s mark as to the source sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on your web site or location”, under paragraph 4(b)(iv) of the Policy.
Respondent also supplied false contact information to the Registrar when it registered its domain name, which is further evidence of bad faith. See Telstra Corporation Ltd v Nuclear Marshmallows, WIPO Case No. D2000-0003. When Complainant tried to send a cease-and-desist letter to Respondent at the email address listed in the WhoIs database, Complainant received a return email stating “your message to [the listed email address] couldn’t be delivered. [Complainant] is not authorized to relay messages through the server that reported this error,” indicating that the email address was invalid or not functional. Supplying a false email address to the Registrar is further evidence of bad faith.
Finally, the disputed domain name resolves to an inactive webpage with the message that “the page isn’t working”. This constitutes passive holding, and violates the Policy. See Telstra Corporation Ltd v. Nuclear Marshmallows, supra.
The Panel finds that the disputed domain name was registered and is being used in bad faith, and thus Complainant meets the third criterion of paragraph 4(a) 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 Complainant.
Sandra A. Sellers
Sole Panelist
Date: March 22, 2017
Full & Egal Universal Law Academy