The Complainant is Regeneron Pharmaceuticals, Inc. of Tarrytown, New York, United States of America (“United States”), represented by Ohlandt, Greeley, Ruggiero & Perle, LLP, United States.
The Respondent is Gao Jing of China. 2. The Domain Names and Registrar
The disputed domain names , and are registered with EJEE Group Holdings Limited (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2018. On February 22, 2018, the Center transmitted by email to the Registrar a request for verification in connection with the disputed domain names. On February 23, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of all the disputed domain names and providing the contact details.
On February 27, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. On February 28, 2018, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 March 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2018.
The Center appointed Matthew Kennedy as the sole panelist in this matter on April 18, 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 is a research-based pharmaceutical company that has used the trademark REGENERON in connection with pharmaceutical products and services since 1988. The Complainant has won several major awards in recent years. The Complainant owns multiple trademark registrations in multiple jurisdictions including United States trademark registrations numbers 1654595 and 1933337, both for REGENERON, registered on August 20, 1991 and November 7, 1995, respectively, specifying “research and development of medicines and treatments for neurological diseases and psychiatric disorders” in class 42, and “pharmaceuticals for treatment of diseases in humans, namely, diseases and / or injuries to internal organs” in class 5, respectively. The Complainant also owns Chinese trademark registrations numbers 11594237, 11594238 and 11594239, all registered from March 14, 2014. Those trademark registrations all remain current. The Complainant registered the domain name in 1997, which it has used since 2002 in connection with its official website that provides information about its products and its activities.
The Respondent is an individual ostensibly resident in China and the current registrant of all three disputed domain names. The Respondent’s contact address in the Registrar’s WhoIs database is manifestly false as it is a merely a combination of the names of two different districts in the city of Beijing.
The disputed domain names were created on March 8, 2017. They were previously registered in the name of “Pan Jing” with an incomplete contract address that could be translated as “Greater Beijing”. The idiosyncratic user name in that registrant’s contact email address is the same as the user name in the contact email address for the current registrant. The disputed domain names do not resolve to any active website but are passively held. 5. Parties’ Contentions A. Complainant
The disputed domain names are identical or confusingly similar to the Complainant’s REGENERON trademark. The disputed domain names consist of that trademark in its entirety.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. There is no relationship between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain names incorporating a variation of the Complainant’s REGENERON trademark. The disputed domain names are not, nor could they be contended to be, a name or nickname of the Respondent, nor are they in any other way identified with or related to any rights or legitimate interests of the Respondent. The Respondent is not making any legitimate or fair use of the disputed domain names. Rather, the disputed domain names resolve to inactive web pages.
The disputed domain names were registered and are being used in bad faith. The Complainant’s REGENERON trademark is a coined word with no other known identification except the Complainant. The Respondent had prior notice of the Complainant’s rights in the REGENERON trademark by virtue of the Complainant’s use of the REGENERON mark in commerce in the United States since 1988 and registration of the trademark since 1991, long before the Respondent registered the disputed domain names in 2017. The Complainant sent a cease and desist letter on April 28, 2017 to the original named registrant of the disputed domain names, who never responded. That named registrant has previously been held to be a bad faith registrant in prior UDRP cases. The disputed domain names were later “transferred” to the Respondent, who appears to be the same person. This phony “transfer” and fraudulent change in WhoIs registrant information is further evidence of bad faith. Even if the Respondent is a different individual, the Respondent’s bad faith is not diminished in any way, since “registration” extends to subsequent acts of acquisition. Passive holding of the disputed domain names can amount to use in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides that “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 Registrar confirmed that the Registration Agreements for the disputed domain names are in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain names consist of English characters, rather than Chinese characters; the Respondent could only be aware of the Complainant’s coined trademark by reviewing and understanding the Complainant’s product advertisements, which are in English; and requiring the Complainant to translate the Complaint into Chinese would result in significant delay and cost to the Complainant.
The Respondent did not comment on the language of the proceeding.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that in this proceeding the Complaint was filed in English. The Respondent did not indicate any wish to reply to the Complaint or otherwise to participate in this proceeding. In these circumstances, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the REGENERON trademark.
The disputed domain names wholly incorporate the REGENERON trademark, with no additional element besides a generic Top-Level Domain (“gTLD”) suffix, either “.site”, “.store” or “.website”. A gTLD suffix is generally incapable of dispelling confusing similarity between a domain name and a trademark for the purposes of the Policy.
Therefore, the Panel finds that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As regards the first and third circumstances, the disputed domain names do not resolve to any active website. This shows that the Respondent’s use of the disputed domain names is not in connection with a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
As regards the second circumstance, the Registrar’s WhoIs database indicates that the Respondent’s name is “Gao Jing”. The Complainant alleges that this individual is the same as the previous registrant, who was named “Pan Jing”. In any case, neither of these names resembles “regeneron” and there is no evidence indicating that the Respondent has been commonly known by any of the disputed domain names.
In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent did not rebut that prima facie case because he did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.
With respect to registration, the Panel observes that the disputed domain names incorporate the Complainant’s REGENERON trademark in its entirety, with no additional element in each case besides a gTLD suffix, which is a technical requirement of registration. The Respondent registered the disputed domain names many years after the Complainant registered its trademark, including in China where the Respondent is ostensibly resident. The Complainant’s REGENERON trademark is a coined word with no other meaning. The Respondent gives no explanation for his choice of the disputed domain names. Therefore, the Panel considers it likely that the Respondent was aware of the Complainant and its trademark at the time that he registered the disputed domain names. The Panel finds that the Respondent registered the Complainant’s trademark in the disputed domain names in bad faith.
With respect to use, the Respondent makes only passive use of the disputed domain names but this does not preclude a finding of use in bad faith. See Telstra Corporation Ltd v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the present dispute, the Complainant has a considerable reputation in its REGENERON trademark in the pharmaceutical industry due to its use of that trademark in connection with its products and services, including through its official website. The Panel notes that the Respondent has provided manifestly false contact information in the Registrar’s WhoIs database, indicating an attempt to conceal his identity. The Respondent gives no explanation of any proposed use of the disputed domain names. Given these circumstances, the Panel finds that the Complainant has discharged its burden of demonstrating that the disputed domain names are being used in bad faith.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in 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 names , and be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: April 22, 2018
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