The Complainant is Regeneron Pharmaceuticals, Inc., United States of America (“United States”), represented Ohlandt, Greeley, Ruggiero & Perle, LLP, United States.
The Respondent is Adonis Ferreira, asdasd, Brazil.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2021. On September 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 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 October 26, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on October 28, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO 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 November 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2021. The Respondent sent an informal communication to the Center on November 8, 2021 to which the Center acknowledged receipt. This is discussed below. The Respondent did not submit any formal response. Accordingly, the Center started the Commencement of Panel Appointment Process on December 9, 2021.
The Center appointed Nick J. Gardner as the sole panelist in this matter on December 23, 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 relevant facts are straightforward and can be summarized very briefly as follows.
The Complainant is a United States based pharmaceutical company which has been in business since about 1988.
The Complainant is the owner of a number of national and international trademark registrations worldwide for the term REGENERON, including for example United States Registration No. 1654595 filed August 16, 1990 and issued August 20, 1991. These trademarks are referred to in this decision as the “REGENERON trademark”.
The Complainant is the owner of the domain name
The Complainant has received numerous awards – for example in 2018 it was no. 1 in Science Magazine’s Top Employer listing, no. 16 in Forbes list of Most Innovative Companies and was recognised in Fortune Magazine’s list of Best Companies to Work For.
The Disputed Domain Name was registered on April 21, 2021. It has been linked to a webpage offering it for sale for USD 5,000.
5. Parties’ Contentions A. ComplainantThe Complainant’s contentions are straightforward and can be summarized as follows:
The Disputed Domain Name is identical or confusingly similar to the REGENERON trademark in which it clearly has rights.
The Respondent has no rights or legitimate interests in the term “regeneron”. There is no other meaning associated with “regeneron” other than in relation to the Complainant.
The Disputed Domain Name was registered and is being used in bad faith. The website to which it is linked offers it for sale at a price clearly higher than the Respondent paid to acquire it which is clear evidence of bad faith.
B. RespondentNo formal response has been filed. The Panel will exercise its discretion to treat the Respondent’s informal email of November 8, 2021 as his Response. It reads as follows:
“Hi,
I was notified with the email and letter about the domain regeneron.io
This domain was registered as a current project of my company, it is not being used for purposes that may confuse the public with other registered brands and products.
If the other party wants to acquire the domain, it can be negotiated for 50,000 USD and the other fees with the process must be paid by them.
The sales device has been installed on the domain, where they can make the purchase directly via: regeneron.io
Thank you, Adonis”.
So far as the .IO Policy is concerned, the Panel notes that it is substantially similar to (though not identical to) the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) as adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”). The Panel will where appropriate apply principles that have been established in relation to the UDRP in determining this dispute.
Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 or is being used in bad faith.
The Panel finds that the Complainant has rights in the REGENERON trademark.
The Disputed Domain Name is identical to the REGENERON trademark. It is well established that the country code Top-Level Domain (“ccTLD”), in this case “.io”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Government Employees Insurance Company (“Geico”) v. Privacy.cc / Bulent Tekmen, WIPO Case No. DIO2020-0003.
Accordingly, the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the Disputed Domain Dame 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 domain name, even if the Respondent has acquired no trade mark 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the REGENERON trademark.
The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. He has made a conclusory statement that it “was registered as a current project of my company” but has not produced any evidence confirming that claim, which the Panel finds inherently implausible, given that the term “Regeneron” is a coined term with no meaning save in relation to the Complainant. The Panel declines to accept that explanation. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered or Used in Bad Faith“Regeneron” has no other meaning so far as the Panel is aware save in relation to the Complainant. The Panel does not consider it likely that the Respondent chose to include it in the Disputed Domain for any other reason apart from its connection to the Complainant.
Under the Policy, evidence of registration or use in bad faith is established by, amongst other factors, circumstances which indicate that “you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”. The Panel concludes that is exactly what the Respondent intended. He originally offered the Disputed Domain Name for sale at USD 5,000. The only likely purchaser would be the Complainant given the term “Regeneron” has no meaning save in relation to the Complainant. Faced with the present Complaint the Respondent has increased the price he is demanding to USD 50,000. That conduct falls squarely within the type of circumstances to which the Policy refers.
Further, the Respondent has been given an opportunity to provide any legitimate explanation he may have to counter this assertion. The Panel finds that the Respondent has failed to produce any evidence to establish a good faith use of the Disputed Domain Name. The Panel infers none exists.
As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
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
Nick J. Gardner
Sole Panelist
Date: January 6, 2022