The Complainant is Regeneron Pharmaceuticals, Inc. of New York, United States of America, represented by Ohlandt, Greeley, Ruggiero & Perle, LLP of United States of America.
The Respondent is Ho Nim of Shanghai, the People's Republic of China.
The disputed domain name <regeneronjobs.com> is registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2010. On April 12, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 14, 2010, Above.com, Inc. transmitted by email to the Center its verification response confirming that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 6, 2010.
The Center appointed Ian Blackshaw as the sole panelist in this matter on May 12, 2010. 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.
The Complainant is a United States corporation that is involved in the research and development of pharmaceutical products. The Complainant also manufactures and sells pharmaceutical products.
Specifically, the Complainant manufactures and sells a drug for the treatment of a rare, inherited, inflammatory condition under the ARCALYST mark. Since April 2009, sales of Arcalyst products have been in the tens of millions of dollars. The REGENERON mark appears on Arcalyst product packaging and labels for drug clinical trials. A sample of the Complainant's use of the REGENERON mark on product packaging has been provided to the Panel. The Complainant also has eight investigational product candidates in various stages of development and human clinical trials for a diverse set of serious diseases, including cancer, eye diseases, and inflammatory diseases.
The Complainant is the registered proprietor of several trademarks which identify these products as mentioned below.
Since the Complainant was founded in 1988, millions of dollars have been spent in the registration, advertisement, and promotion of the REGENERON mark. The Complainant and the REGENERON mark are widely advertised. A copy of a sample patient brochure issued by the Complainant has been provided to the Panel.
The Complainant makes the following contentions:
(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))
The Complainant is the owner of the REGENERON trademark, which has been in use for more than 20 years.
The Complainant is also the owner of United States Trademark Registration No. 1654595 for the REGENERON trademark covering “research and development of medicines and treatments for neurological diseases and psychiatric disorders” in International Class 42. This registration was issued on August 20, 1991 long prior to the registration of the disputed domain name.
The Complainant is also the owner of United States Trademark Registration No. 1933337 for the REGENERON trademark covering “pharmaceuticals for treatment of diseases in humans and/or animals; namely, diseases and/or injuries of the central and peripheral nervous systems; diseases and/or injuries to muscles; diseases and/or injuries to internal organs; and dermal cancers derived from embryonic ectodermal and mesodermal layers” in International Class 5. This registration was issued on November 7, 1995, also long prior to the registration of the disputed domain name.
The Complainant also owns trademark registrations for the REGENERON mark in several other countries, including Registration No. 773376 in China for pharmaceutical services in International Class 42. Copies of the Complainant's trademark registration certificates in the United States, Australia, China, Republic of Korea, Japan, New Zealand, Russian Federation, and South Africa have been provided to the Panel.
The Complainant is also the owner of the <regeneron.com> domain name, which has been registered since 1997 and has been used to promote the Complainant's products promoted and sold under the registered trademark REGENERON and its business activities since 2002, a copy of which has also been provided to the Panel.
The disputed domain name is almost identical to the Complainant's REGENERON trademark. The Complainant's REGENERON trademark is incorporated in the disputed domain name in its entirety. The additional word “jobs” is simply a generic / descriptive and cannot be said to sufficiently distinguish the domain name from the Complainant's REGENERON trademark. Upon seeing the disputed domain name, consumers will reasonably believe that it is related to the Complainant. See, e.g., CSX lA, Inc. v. Registrant [190789]:International Domain Names Inc/Registrant [342920}, Moniker Privacy Services, WIPO Case No. D2007-0610.
(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))
Since the Complainant's adoption and extensive use of the REGENERON trademark for over 20 years predates the first use of the disputed domain name, the burden should properly rest with the Respondent to establish its rights or legitimate interests in the domain name. However, for the reasons stated the Respondent cannot demonstrate or establish any such rights or legitimate interests.
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 the Complainant's REGENERON trademark.
The disputed domain name is not, nor could it be contended to be, a name or nickname of the Respondent, nor is it in any other way identified with or related to any rights or legitimate interests of the Respondent.
The Respondent is not making any legitimate non-commercial or fair use of the disputed domain name. Rather, the Respondent is using the domain name to commercially profit from and trade upon the goodwill and recognition associated with the Complainant's REGENERON trademark by engaging in pay-per-click advertising by posting sponsored links to third party websites that purportedly offer job listings.
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
The Respondent's bad faith is established by its use of the Complainant's trademark in the disputed domain name to attract and redirect web traffic to commercial websites for its own commercial benefit. See, e.g., Sanofi-Aventis and Merrell Pharmaceuticals Inc. v. Smart Med Pharmacy, WIPO Case No. D2006-1113. Specifically, the disputed domain name hosts a website in which the Respondent is engaged in pay-per-click advertising by posting sponsored links to third party websites that purportedly offer job listings. A printout of the disputed domain name has been provided to the Panel. As such, the Respondent registered and is using the disputed domain name in bad faith to commercially profit from and trade upon the goodwill and recognition associated with the Complainant's REGENERON trademark.
On February 2, 2010 (letter dated February 1 ,2010), the Complainant sent the Respondent a letter via e-mail and FedEx advising the Respondent of the Complainant's rights in the REGENERON mark; advising the Respondent that its use of the Complainant's REGENERON mark was unauthorized; and requesting a transfer of the disputed domain name to the Complainant. The Respondent did not reply to the Complainant's letter and the Complainant re-sent the letter to the Respondent via e-mail on February 25, 2010. Copies of the Complainant's letter of February 2, 2010 and follow-up e-mail of February 25, 2010 have been provided to the Panel. To date, the Complainant has not received a reply from the Respondent.
The Complainant in no way owns, sponsors, endorses, supports, or is affiliated with the Respondent or any of the third party links displayed on the disputed domain name website.
The Respondent's bad faith is also established by the fact that 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; the Complainant's registration of the REGENERON mark in the United States in 1991; and the registration of the REGENERON mark in China since 1994. The Respondent did not register the disputed domain name until 2009. Therefore, it cannot be said that the Respondent was unaware of the more than 20 years of the Complainant's prior use of the REGENERON mark in commerce, as well as the registration of the REGENERON mark in the United States for nearly 20 years and in China for 15 years prior to the Respondent's registration of the disputed domain name.
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant's contentions or take any part in them.
To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(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 domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the respondent failed to file a response, the panel's decisions were based upon the complainant's assertions and evidence, as well as inferences drawn from the respondent's failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.
Nevertheless, the panel must not decide in the complainant's favor solely based on the respondent's default. See Cortefiel S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. The panel must decide whether the complainant has introduced elements of proof, which allow the panel to conclude that its allegations are true.
It is well established in previous UDRP cases that, where a disputed domain name incorporates a complainant's registered mark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
In the present case, the disputed domain name incorporates in its entirety the Complainant's well-established trademark REGENERON. The Panel agrees with the Complainant's contention that the addition of the word “jobs” is purely descriptive and does not serve to distinguish, the disputed domain name from the Complainant's registered trademark REGENERON. See Harrods Limited v. Simon Harkin Travel, WIPO Case No. D2004-0546 in which the panel held that: “Although the Domain Name consists of the word “harrods” and the word “travel,” it is well settled that a domain name suffix, such as the word “travel” in the present case, is merely descriptive and does not add any distinctiveness to the word “harrods,” which is the quintessential and distinctive part of the Domain Name”. See Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162, where the panel held that “any use of the name Harrods in conjunction with a description… would suggest a false sense of origin…for any associated goods or services.” See also Harrods Limited v. Brad Shaw, WIPO Case No. D2004-0411, where the panel held that “The Domain Name consists of the word HARRODS plus a hyphen and the generic term “poker.” The latter is not a distinguishing feature and does not lessen the likelihood of confusion with the trademark.” Again, in Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456, it was stated that, consistent with previous decisions “….common nouns are rarely distinguishing elements. Where…. the common noun selected coincides with and in fact connotes if not denotes precisely the goods or services in respect of which the other element of the domain name is registered as a trademark, confusing similarity is inevitable.” See further on this point, the cases of United States Olympic Committee v. MIC, WIPO Case No. D2000-0189; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a, For Sale, WIPO Case No. D2000-0662; and Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219”.
Likewise, the addition of a generic top-level domain (gTLD) “.com” to the disputed domain name does not constitute an element in the domain name so as to avoid confusing similarity. See Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015; Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In view of the above, the Panel finds that the disputed domain name registered by the Respondent is identical or confusingly similar to the Complainant's trademark, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established rights and extensive commercial use of the same. The first element of the Policy has, therefore, been met.
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
(i) whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;
(iii) whether the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint. See 1-800-Flowers.com, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc. v. G Design, WIPO Case No. D2006-0977.
Neither is there any evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant's well-established trademark REGENERON. Indeed, in the view of the Panel, the adoption by the Respondent of a domain name identical or confusingly similar to the Complainant's trademark REGENERON inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its activities and services (see further on this point below) and the consequential tarnishing of the Complainant's trademark REGENERON and also the goodwill that the Complainant has established in this trademark through its extensive commercial use of the same, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute evidence of bad faith registration and use. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent's] web site or location or of a product or service on its web site or location.”
Based on the record in the case file, the Panel agrees with the Complainant's contention that the Respondent, by registering the disputed domain name, is trading on the Complainant's valuable goodwill established in its well-established trademark.
Again, by registering and using the disputed domain name incorporating the Complainant's well-established registered trademark REGENERON, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent's activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file, is, in fact, the situation. Such misleading consequences, in the view of the Panel, constitute bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.
Furthermore, the fact that the disputed domain name includes the trademark REGENERON of the Complainant, held and used in commerce by the Complainant for many years prior to the date the Respondent became the registrant of the disputed domain name, the Respondent must have known and been aware of the Complainant's well-established rights in this mark, particularly in China (as mentioned by the Complainant above), at the time the Respondent registered the disputed domain name which includes the Complainant's mark, is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman, WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. For in general a domain name would typically be used in good faith only by the owner of the respective right or by a licensee, neither of which is the situation in the present case.
As regards bad faith use of the disputed domain name, the links on the resolving website as mentioned above is also an indication of bad faith, as the Respondent is unfairly gaining a benefit at the expense of the Complainant through the “click-through” income generated as a result of these links. See Intel Corporation v. the Pentium Group, WIPO Case No. D2009-0273. See also Compart AG v. Compart.com/Vertical Axis, Inc., WIPO Case No. D2009-0462, in which case the panel held that: “The Respondent is deriving a financial benefit from web traffic diverted through the Domain Name to linked websites on the domain parking page. The Panel therefore also accepts that the Respondent has intentionally attracted Internet users to its websites or other on-line locations for commercial gains through confusion as to the source, affiliation or endorsement of the website or location. This amounts to evidence of bad faith use under paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that the Domain Name was registered in bad faith and is being used in bad faith.” Furthermore, see also Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493 in which it was stated that “…consumers expect to find a company on the Internet at a domain name address comprised of the company's name or trademark.” As this is not, in fact, the situation in the present case, the use by the Respondent of the disputed domain name is confusing and misleading and, in the view of the Panel, is a further indication that the disputed domain name was registered and is being used in bad faith.
Also, even though not conclusive, the failure of the Respondent to reply to the Letter and reminder sent by the Complainant on February 2 and 25, 2010 respectively, copies of which have been provided to the Panel, in the view of the Panel, is a further indication of bad faith on the part of the Respondent.
Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings are, again in the view of the Panel, further indications of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Therefore, taking all these particular facts and circumstances into account and for all the above-mentioned reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <regeneronjobs.com> be transferred to the Complainant.
Ian Blackshaw
Sole Panelist
Dated: May 26, 2010