The Complainant is Regeneron Pharmaceuticals, Inc. of New York, United States of America (“United States”), represented by Ohlandt, Greeley, Ruggiero & Perle, LLP, United States.
The Respondent is Wang Hui Min of Taiyuan, Shanxi, China, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2017. On December 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 2017, 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 January 2, 2018, the Center transmitted an Email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. The Respondent requested that Chinese be the language of the proceeding on January 16 and 17, 2018.
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 in English and Chinese of the Complaint, and the proceedings commenced on January 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2018. The Respondent did not submit any formal response by the specified due date. The Center notified the Parties of the Commencement of Panel Appointment Process on February 1, 2018.
The Center appointed Jonathan Agmon as the sole panelist in this matter on February 19, 2018. 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
The Complainant, Regeneron Pharmaceuticals, Inc., is the owner of the REGENERON trademark, which has been in use since 1988 in connection with the research and development of pharmaceutical products and the manufacture and sale of pharmaceutical products.
Since the founding of Regeneron Pharmaceuticals, Inc. in 1988, millions of dollars have been spent in advertisement, and promotion of the REGENERON mark.
The Complainant is the owner of several trademark registrations in the United States and other jurisdictions for the REGENERON mark, including the following:
(i) Registration No. 1654595 REGENERON, filed on August 16, 1990 and registered on August 20, 1991 in Class 42;
(ii) Registration No. 1933337 REGENERON, filed on September 17, 1990 and registered on November 7, 1995, in Class 5;
(iii) Registration No. 4225793 REGENERON, filed on April 13, 2012 and registered on October 16, 2012, in Class 5, 42 and 44;
(iv) Registration No. 4402743 REGENERON, filed on November 9, 2012 and registered on September 17, 2013, in Class 31;
(v) Registration No. 4402744 REGENERON, filed on November 9, 2012 and registered on September 17, 2013, in Class 5;
(vi) Registration No. 5027241 REGENERON, filed on February 26, 2016, registered on August 23, 2016, in Class 5.
The Complainant is the owner of the domain name, which has been registered since 1997 and has been used to promote the Complainant’s REGENERON products and activities since 2002.
The disputed domain name was registered on February 25, 2017. The disputed domain name is currently not active. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s famous and registered mark REGENERON because it contains the Complainant’s mark in its entirety.
The Complainant argues that the Respondent started using the disputed domain name long after the Complainant began using its mark and did so due to the international reputation it has acquired in the mark REGENERON.
The Complainant further argues that the Respondent is not known under the disputed domain name and is not authorized by the Complainant to use the disputed domain name, which is associated with the Complainant. It is further alleged that the Respondent has never used and does not intend to use the mark REGENERON in connection with a bona fide offering of goods or in any other legitimate commercial or noncommercial way. Therefore, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant further argues that the disputed domain name was registered and used in bad faith. It is alleged that the Respondent registered the disputed domain name long after the Complainant registered the mark REGENERON, and that the Respondent requested compensation for using the disputed domain name without an exact price, which, according to the Complainant, also constitutes bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not file a substantive response to the Complaint. 6. Discussion and Findings 6.1. Language of the Proceeding
Paragraph 11 of the Rules provides that:
“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese. The Complainant requested that the language of the proceeding be English.
The Respondent requested Chinese to be the language of the proceeding.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) the disputed domain name consists of Latin letters, rather than Chinese characters;
(ii) the Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language;
(iii) the Respondent’s alleged domain name manager corresponded with the Complainant in English;
(iv) the website is inactive.
Upon considering the above, the Panel determines that English be the language of the proceeding. 6.2. Substantive Issues A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademark registrations for the REGENERON mark and has registered the first REGENERON mark in 1991.
The disputed domain name integrates the Complainant’s REGENERON trademark in its entirety. The disputed domain name and the Complainant’s trademark differ in the addition of the Top-Level Domain (“TLD”) “.online” to the disputed domain name.
The addition of the TLD “.online” is without significance in the present case. It has long been established that the use of TLD is technically required to operate a domain name and is irrelevant to the question of similarity between a trademark and a domain name (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests with respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests with respect to the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks or a variation thereof and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services and holds no trademark registration for the REGENERON mark.
The Respondent has not submitted a substantive response to the Complaint, nor did it provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. The Complainant owns a registration for the REGENERON trademark since 1991, while the Respondent owns the disputed domain name since February 25, 2017. In view of the evidence filed by the Complainant, and the widespread use of the REGENERON trademark, it is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name. (see Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735; Montblanc-Simplo G.m.b.H. v. zhulanxin / PrivacyP,WIPO Case No. D2013-0910; RRI Financial, Inc. v. Ray Chen,WIPO Case No. D2001-1242).
Furthermore, the disputed domain name includes the Complainant’s trademark in its entirety. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095).
The Complainant also sent the Respondent a cease-and-desist letter on June 21, 2017 and received an email reply on June 22, 2017 in which the Respondent’s alleged domain name manager requested that the Complainant provide “appropriate compensation” without stating a specific amount of its costs for registering the domain name. Such a request for compensation suggests bad faith which is imputed to the Respondent. (see America Online, Inc. v. Dot Stop,WIPO Case No. D2001-0760; Banca March, S.A. v. Mr. Thomas Zotzmann,WIPO Case No. D2000-1343).
The Panel notes that the website is inactive. The non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding.
Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant’s marks; the confusing similarity between the disputed domain name and the Complainant’s marks, and the fact that there is no conceivable good faith use that the Respondent can make of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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.
Jonathan Agmon
Sole Panelist
Date: March 1, 2018
Full & Egal Universal Law Academy