The Complainant is Regeneron Pharmaceuticals, Inc., United States of America (“United States” or “US”), represented by Ohlandt, Greeley, Ruggiero & Perle, LLP, United States.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland/ ucy kay, Nigeria.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2021. On July 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 19, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 20, 2021.
The Center verified that the Complaint together with the amended 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 July 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2021.
The Center appointed Mihaela Maravela as the sole panelist in this matter on September 7, 2021. 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 BackgroundThe Complainant is a pharmaceutical company headquartered in New York, United States. The Complainant was founded in 1988 and it carries activities under the trademark REGENERON in the field of research and development of pharmaceutical products and the manufacture and sale of pharmaceutical products.
The Complainant is the exclusive owner of a number of registered trademarks consisting of REGENERON, including the US trademark registration No. 1654595 for REGENERON registered on August 20, 1991. The Complainant is the owner of numerous other registrations for the trademark REGENERON in the United States and elsewhere throughout the world. The Complainant owns since 1997 the domain name
The disputed domain name was registered on December 8, 2020, and does not resolve to an active website.
5. Parties’ Contentions A. ComplainantThe Complainant argues that the disputed domain name incorporates the Complainant’s REGENERON trademark in its entirety, accordingly the disputed domain name is confusingly similar with the Complainant’s trademark.
As regards the second element, the Complainant argues that 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 name incorporating a variation of the Complainant’s REGENERON trademark. The Complainant also argues that the Respondent is not making any legitimate or fair use of the disputed domain name; rather, the disputed domain name was previously automatically redirecting to the Complainant’s website and currently leads to an inactive page.
On the third element, the Complainant argues that its REGENERON trademark is a coined term that has been used for more than 30 years before the registration of the disputed domain name, and the Respondent must have been aware of it at the registration of the disputed domain name. The Complainant also argues that the disputed domain name was used in bad faith as it automatically redirected to the Complainant’s official website. The fact that the disputed domain name currently resolves to an inactive page is further evidence of bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsNo communication has been received from the Respondent in this case. However, given that the Complaint was sent to the relevant address disclosed by the Registrar, the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it can proceed to determine the Complaint based on the statements and documents submitted by the Complainant as per paragraph 15(a) of the Rules and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., ALSTOM v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Danica Kobpoew, ruletwoww,WIPO Case No. D2021-1465).
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has proved its rights over the REGENERON trademark.
The disputed domain name consists of the REGENERON trademark, in addition to the generic Top-Level Domain (“gTLD”) “.email”. The gTLD is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark, as they are required for technical reasons. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). It is also well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” WIPO Overview 3.0, section 1.7.
This Panel concludes that the disputed domain name is identical or confusingly similar to the Complainant’s trademark REGENERON, and, therefore, finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsUnder paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:
(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it 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.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In the present case, the Complainant has established a prima facie case that it holds rights over the trademark REGENERON and claims that it has not granted the Respondent any authorisation to use the disputed domain name.
There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Also, there is no evidence that the Respondent is commonly known by the disputed domain name.
By not replying to the Complainant’s contentions, the Respondent has failed to invoke any circumstances, which could demonstrate any rights or legitimate interests in the disputed domain name. Accordingly, the Panel gives prevalence to the Complainant’s affirmation that it has not granted the Respondent any license to use the disputed domain name.
Furthermore, the nature of the disputed domain name carries a high risk of implied affiliation and cannot constitute a fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.
With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad FaithTo fulfil the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
The disputed domain name was registered many years after the Complainant has obtained registration of its REGENERON trademark. The disputed domain name incorporates the Complainant’s trademark REGENERON in its entirety, with no additional element except the gTLD suffix, which is a technical requirement of registration. The Complainant’s trademark REGENERON is a coined term with no other meaning. Under these circumstances, and in the absence of any explanation from the Respondent, it is most likely that the Respondent was aware of the Complainant’s trademark at the registration of the disputed domain name. The Panel finds that the Respondent registered the disputed domain name in bad faith.
As regards the use of the disputed domain name, the Panel accepts the Complainant’s evidence, which the Respondent has not disputed, that the Respondent used the disputed domain name to redirect to the Complainant’s official website, without authorization. Such use is likely to mislead Internet users looking for the Complainant’s products or services. Similarly, panels have found that a respondent redirecting a domain to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection, thus creating a real or implied ongoing threat to the complainant. See section 3.1.4 of the WIPO Overview 3.0. Accordingly, the Panel finds that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).
The fact that the website at which the disputed domain name resolves is currently inactive does not preclude a finding of bad faith, nor does it detract from the Respondent’s bad faith. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” (section 3.3 of the WIPO Overview 3.0).
The following factors were considered by the Panel as indicative of bad faith registration and use of the disputed domain name: (i) the Respondent’s failure to respond to the Complaint, even though awarded a possibility to do so; (ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name as per paragraph 4(b) of the Policy; (iii) the well-known character of the REGENERON trademarks. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. Also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. The Respondent provided no explanations for which it registered the disputed domain name.
In these circumstances, the Panel considers that the Respondent has registered and is using the disputed domain name in bad faith and that the Complainant has also established the third element of paragraph 4(a) of the Policy.
7. DecisionFor 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,
Mihaela Maravela
Sole Panelist
Date: September 21, 2021