ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Sarepta Therapeutics, Inc. v. Alice Collier Case No. DCO2024-0031 1. The Parties The Complainant is Sarepta Therapeutics, Inc., United States of America (“United States” and/or “U.S.”), represented by Arnold & Porter Kaye Scholer LLP, United States. The Respondent is Alice Collier, United States. 2. The Domain Name and Registrar The disputed domain name is registered with Dynadot Inc (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2024. On April 24, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 2024, 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 (REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 25, 2024 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 April 27, 2024. 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 May 1, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2024.
page 2 The Center appointed Kathryn Lee as the sole panelist in this matter on June 7, 2024. 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 biotechnology company that conducts medical research, develops gene therapy medicines, and produces and sells precision genetic medicines. The Complainant has used the SAREPTA mark since around 2012, and owns a number of trademark registrations for the mark SAREPTA and SAREPTA THERAPEUTICS, including the following: SAREPTA – U.S. Trademark Registration Number 4,724,239 registered on April 21, 2015, U.S. Trademark Registration No. 4,653,264 registered on December 9, 2014, and U.S. Trademark Registration No. 6,342,349, registered on May 4, 2021; and SAREPTA THERAPEUTICS –U.S. Trademark Registration No. 4,724,240 registered on April 21, 2015 and U.S. Trademark Registration No. 4,653,265 registered on December 9, 2014. The Respondent appears to be an individual with an address in the United States. The disputed domain name was registered on March 5, 2024, and as of the date of filing of the Complaint, resolved to a website displaying pay-per-click links to terms such as “Pharmaceutical Company”, “Trial Company Nearby”, and “Stock Market Investment”, as well as an offer to sell the disputed domain name for USD 9,500. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name is identical to the SAREPTA THERAPEUTICS trademark in which the Complainant has rights. The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name and confirms that it has not authorized or licensed rights to the Respondent in any respect. The Complainant contends that the Respondent’s use of the disputed domain name to display pay-per-clicks and does not represent a bona fide offering of goods or services. Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant contends that given the fame of the Complainant’s marks, it is highly unlikely for the Respondent to have registered the disputed domain name without knowledge of the Complainant or its marks. The Complainant also contends that the offer for sale of the disputed domain name for USD 9,500 demonstrates the Respondent’s bad faith intent to sell the disputed domain name for valuable consideration in excess of the Respondent’s documented out-of-pocket costs. In addition, the Complainant contends that the Respondent’s use of a privacy shield to mask its identity and the registration of a domain name identical to the Complainant’s marks shows bad faith on the part of the Respondent. B. Respondent The Respondent did not reply to the Complainant’s contentions.
page 3 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark SAREPTA THERAPEUTICS is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Further, the Respondent’s use of the disputed domain name for a domain parking page with pay-per-click links does not in the circumstances represent a bona fide offering of goods or services given that the disputed domain name is identical to the Complainant’s trademark and such use trades on the reputation and goodwill associated with the mark. See WIPO Overview 3.0, section 2.9. Not only that, the disputed domain name is identical to the Complainant’s trademark, thus carrying a high risk of implied affiliation to the Complainant. See WIPO Overview 3.0, section 2.5.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
page 4 In the present case, the Panel first notes that the registration of the disputed domain name, which is identical to the Complainant’s SAREPTA THERAPEUTICS mark, by the Respondent, who is unaffiliated with the Complainant, creates a presumption of bad faith. WIPO Overview 3.0, section 3.1.4. Also, by linking the disputed domain name with a parking page displaying pay-per-click links, the Respondent has created a likelihood of confusion and benefited commercially from the confusion of Internet users that visit the site by mistake as per paragraph 4(b)(iv) of the Policy. Further, the Respondent has not provided any explanation for having registered the disputed domain name, and with no response to claim otherwise, the Panel finds it unlikely that the Respondent could put such identical disputed domain name to any good faith use that would not infringe or cause confusion with the Complainant’s SAREPTA THERAPEUTICS mark. Not only that, the Panel takes note of the two prior UDRP decisions rendered against the Respondent that indicates a pattern of bad faith conduct on part of the Respondent as described under paragraph 4(b)(ii) of the Policy, e.g., Bayerische Motoren Werke AG (BMW) v. Alice Collier, Ye Genrong, Azura Abendroth, Wang Liqun, WIPO Case No. D2015-1781; and Cosmo Gaming Company LTD v. Alice Collier, WIPO Case No. DME2017-0002. The Panel finds that the Complainant has established the third element 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. /Kathryn Lee/ Kathryn Lee Sole Panelist Date: June 21, 2024
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