WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Regeneron Pharmaceuticals, Inc. v. Registration Private, Domains By Proxy, LLC / Regeneron Careers
Case No. D2017-0013
1. The Parties
Complainant is Regeneron Pharmaceuticals, Inc. of Tarrytown, New York, United States of America (“United States”), represented by Ohlandt, Greeley, Ruggiero & Perle, LLP, United States.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Regeneron Careers of Tarrytown, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <regeneroncareers.org> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2017. On January 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 Complainant on January 10, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed a first amended Complaint on January 11, 2017 and a second amended Complaint on January 12, 2017.
The Center verified that the Complaint together with the amended Complaints 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 January 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 5, 2017. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2017.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on February 10, 2017. 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
Complainant Regeneron Pharmaceuticals, Inc. has manufactured and sold pharmaceutical products under the REGENERON trademark since 1988. The REGENERON trademark is the subject of a number of United States trademark registrations, including United States trademark REGENERON number 1,654,595, registered on August 20, 1991, and has also been registered in other countries throughout the world. Complainant also owns the domain name <regeneron.com>.
Since the founding of Regeneron Pharmaceuticals in 1988, Complainant has spent millions of United States dollars in advertising and promoting its products under the REGENERON trademark. Complainant has won several awards over the past few years, including listing in Forbes Magazine as one of the “100 Best Companies to Work For” in 2015 and Scrip Intelligence’s “Biotechnology Company of the Year” in 2012.
The disputed domain name <regeneroncareers.org> was registered on November 15, 2016. The disputed domain name resolves to an inactive website with the message “404. That’s an error. The requested URL / was not found on this server. That’s all we know.” Complainant’s counsel sent a “cease and desist” letter to Respondent on December 7, 2016. Respondent has not replied to such letter.
5. Parties’ Contentions
Complainant alleges that the disputed domain name is almost identical to its REGENERON trademark. It notes that the disputed domain name incorporates the mark in its entirety and contends that the additional word “careers” incorporated in the disputed domain name “cannot be said to sufficiently distinguish the Domain Name from Complainant’s REGENERON trademark”.
Complainant further asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant maintains that there is clearly no relationship between the Parties giving rise to any license, permission, or other right by which Respondent could own or use any domain names incorporating the REGENERON trademark. Complainant also indicates that the disputed domain name is not a name or nickname of Respondent and that Respondent is not making any legitimate or fair use of the disputed domain name.
With respect to the issue of “bad faith” registration and use, Complainant contends that the following factors support such a determination: (1) that Respondent impersonates Complainant as the registrant of the disputed domain name; (2) that Respondent used false contact information when it registered the disputed domain name; (3) that given that REGENERON is a coined word with no other known identification except Complainant, Respondent was aware of Complainant’s name and business and clearly attempted to capitalize on the goodwill associated with the REGENERON trademark; (4) that Respondent used Domains By Proxy, LLC to conceal his/her true identity; (5) that Respondent had both actual and constructive notice of Complainant’s rights in the REGENERON trademark; (6) that Respondent failed to reply to Complainant’s counsel’s “cease and desist” letter; and (7) that Respondent is engaged in passive holding of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <regeneroncareers.org> is confusingly similar to the REGENERON trademark. As noted by Complainant, the disputed domain name incorporates the mark in its entirety. The addition of the descriptive term “careers” does not sufficiently distinguish the disputed domain name from the REGENERON trademark.
The Panel further finds that the evidence establishes that Complainant has rights in the REGENERON trademark. Such evidence includes use of such mark since 1988, as well as numerous registrations for the mark in the United States and elsewhere.
B. Rights or Legitimate Interests
The Panel concludes that Complainant has sustained its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. As noted above, the disputed domain name resolves to an inactive website. Thus, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or in a noncommercial manner. There also is no evidence that Respondent is commonly known by the disputed domain name.
C. Registered and Used in Bad Faith
The Panel determines that the evidence supports a determination that the disputed domain was registered and is being used in bad faith. Such evidence includes the fact that the WhoIs database identifies Respondent as “Regeneron Careers” and includes Complainant’s street address as that of Respondent. Moreover, given that “regeneron” is a coined term and has been used in the United States since 1988, it is reasonable to conclude that Respondent was aware of such mark at the time the disputed domain name was registered and that, through such registration, Respondent sought to capitalize in the goodwill associated with the REGENERON trademark. Respondent’s failure to respond to Complainant’s “cease and desist” letter is further evidence of the requisite bad faith.
Finally, the evidence establishes that Respondent is engaged in passive holding of the disputed domain name and that such “use” supports a finding of bad faith registration and use. As noted by Complainant, “[t]he concept of a domain name being used in bad faith is not limited to positive action; inaction is within the concept.” See Cho Yong Pil v. Kee Dooseok, WIPO Case No. D2000-0754.
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 <regeneroncareers.org> be transferred to Complainant.
Jeffrey M. Samuels
Date: February 16, 2017