Complainant is Regeneron Pharmaceuticals, Inc., United States of America, represented by Ohlandt, Greeley, Ruggiero & Perle, LLP, United States of America.
Respondent is Julia Lepsky, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2019. On May 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 4, 2019, 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 May 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2019. Respondent sent an email communication to the Center on May 8, 2019. Respondent did not submit a formal response. Accordingly, the Center notified the Parties about the commencement of panel appointment process on May 28, 2019.
The Center appointed Mark Partridge as the sole panelist in this matter on June 4, 2019. 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
In 1988, Complainant began using the REGENERON mark. Complainant has used and continues to use the REGENERON trademarks for, among other goods or services, the research and development of pharmaceutical products and the manufacture and sale of pharmaceutical products. Complainant is the owner of several U.S. trademark registrations for the REGENERON mark, particularly, U.S Reg. No. 1654595, registered on August 20, 1991. Complainant also owns REGENERON trademark registrations in other jurisdictions throughout the world since 1993.
Additionally, Complainant owns and operates . Complainant’s domain name was registered in 1997 and has been used to promote Complainant’s REGENERON products and activities since 2002.
The disputed domain name, , was registered by Respondent on April 27, 2019, and the disputed domain name was resolving to a webpage displaying the names REGENERON and Regeneron Pharmaceuticals and logo, mimicking Complainant’s website. 5. Parties’ Contentions A. Complainant
In requesting that the disputed domain name be transferred to it, Complainant contends the following:
First, Complainant argues that Respondent’s registration of the disputed domain name, , is identical or confusingly similar to its REGENERON trademarks. Complainant contends that the disputed domain name, , is nearly identical to the REGENERON trademarks because it includes Complainant’s identical trademark REGENERON and the word “social”. Complainant argues that the word “social” is a neutral or generic word that does not distinguish the disputed domain name from Complainant’s mark. Furthermore, Complainant alleges that the disputed domain name is intentionally similar and misleading to deceive Internet users regarding the authenticity of Respondent’s website.
Second, Complainant contends that Respondent has no rights or legitimate interests in the domain name . Complainant also contends that it has not consented to or otherwise authorized Respondent’s use of the REGENERON trademark. Complainant argues that Respondent has made no legitimate or fair use of Complainant’s trademarks and copyrighted materials, indicating that Respondent has no rights or legitimate interests in the disputed domain name other than to impersonate Complainant and deceive Internet users. According to Complainant, the website associated with the disputed domain name impersonates Complainant and Respondent is attempting to deceive Internet users into believing that it is Complainant’s website. Furthermore, Complainant asserts that due to its extensive use, advertising, and promotion of the REGENERON trademark on a wide-spread basis and for a significant amount of time before Respondent’s registration, the REGENERON trademark is well-known. Moreover, Complainant contends that the REGENERON trademark is a coined word by Complainant and as such it is not one that other parties, including Respondent, would choose unless to create an association with Complainant.
Third, Complainant asserts that the disputed domain name was registered and is being used in bad faith by Respondent. Complainant argues that bad faith is indicated by Respondent’s impersonation of Complainant and fraudulent promotion of a non-existent social media campaign, which seeks to take advantage of the goodwill built up in the REGENERON mark and business. Complainant also asserts that Respondent had prior notice of Complainant’s rights in the REGENERON mark based on its extensive use and trademark registrations. Complainant asserts that, since REGENERON mark consists of a coined term, Respondent’s registration of the disputed domain name shows awareness of Complainant’s name and a desire to capitalize on the goodwill associated with the REGENERON trademark. B. Respondent
On May 8, 2019, Respondent responded by email to the Notification of Complaint and Commencement of Administrative Proceedings, authorizing the transfer or cancellation of the disputed domain name. Respondent also stated that it does not hold any rights to the disputed domain name and does not intend to hold any rights in the future. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove the following three elements:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
To satisfy the first element, a complainant must establish that the disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights. The generic Top‑Level Domain (“gTLD”) “.com” in the disputed domain name is disregarded. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 1.11; see also Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698; America Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM,WIPO Case No. D2001-0918.
Here, Complainant has introduced evidence, establishing that it has sufficient rights in the REGENERON trademark. Complainant has created, used, and registered several trademarks both in the United States and in other jurisdictions throughout the world since the 1990s. Based on the evidence discussed here and in the annexes attached to the Complaint, the Panel finds that Complainant has rights in the REGENERON trademark.
As for the issue of similarity, the disputed domain name contains the entirety of Complainant’s REGENERON trademark, differing only by the addition of the word “social” and a hyphen.
In Playboy Enterprises, Inc., Playboy Enterprises International, Inc. v. FS1 a/k/a Carlton Crider,WIPO Case No. D2012-0181, a panel found that the word “social” was a neutral or generic term that did not effectively distinguish a domain name from the complainant’s trademark. The panel thus determined that the disputed domain name was confusingly similar to the PLAYBOY mark.
Here, the disputed domain name merely adds the descriptive term “social” and a hyphen to the entirety of Complainant’s mark. Like in Playboy Enterprises, Inc., Playboy Enterprises International, Inc. v. FS1 a/k/a Carlton Crider, supra, the Panel recognizes that “social” is a neutral term incapable of distinguishing from Complainant’s REGENERON mark. Moreover, the addition of the hyphen plus a descriptive term to Complainant’s mark does not sufficiently distinguish the two from being confusingly similar.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s REGENERON trademark. B. Rights or Legitimate Interests
To satisfy the second element, a complainant must make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once the complainant satisfies its initial burden, the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the disputed domain name. AB Electrolux v. Mostafa Faheem,WIPO Case No. D2017-2233; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by the Panel, shall demonstrate that respondent has rights or legitimate interests in a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy.
As discussed above, Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that it has not consented to or otherwise authorized Respondent’s use of the REGENERON trademark. Complainant asserts that it has no relationship with Respondent that could give rise to any license, permission, or other right for Respondent to use the mark in the domain name. For these reasons, the Panel concludes that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in .
As a result, the burden shifts to Respondent. As noted above, Respondent stated that it holds no rights in the use of the REGENERON trademark nor seeks to hold rights in the future.
For the reasons above, the Panel concludes that the second element, paragraph 4(a)(ii) of the Policy, is satisfied. C. Registered and Used in Bad Faith
Lastly, Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy offers a non-exhaustive list of circumstances that indicate bad-faith use and registration of a domain name. Particularly, paragraph 4(b)(iv) provides that bad faith may be evidenced by circumstances indicating that the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by seeking to create a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website.
The Panel finds that the disputed domain name was registered and used in bad faith, particularly within the terms of paragraph 4(b)(iv) of the Policy. Since 1991, Complainant has maintained several registrations for REGENERON. Along with Complainant’s substantial promotion of the mark and the mark consisting of a coined term, it makes it likely that Respondent knew of Complainant’s rights when Respondent registered the disputed domain name. The Panel finds that Complainant established bad-faith registration.
Complainant argues that Respondent’s registration of the disputed domain name indicates bad faith through “Respondent’s impersonation of Complainant and fraudulent promotion of a non-existent social media campaign […]” which was “undoubtedly for the purpose of taking advantage of the goodwill built up in the REGENERON name and business […]”. Complainant provides evidence of impersonation, showing that Respondent’s website displays the names REGENERON and REGENERON PHARMACEUTICALS as well as a replica of the REGENERON logo. Furthermore, Complainant contends that specific content appearing on Respondent’s website are copied from Complainant’s materials, including those that are copyrighted. Bad faith is further evidenced by the fact that, as discussed above, Respondent has confirmed a lack of rights in the disputed domain name. Thus, the Panel concludes that Respondent registered and is using the disputed domain name in attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement. See paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel concludes that Complainant has sufficiently shown that Respondent has registered and used the disputed domain name in bad faith, thereby satisfying the third element. 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.
Mark Partridge
Sole Panelist
Date: June 18, 2019
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