WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Regeneron Pharmaceuticals, Inc. v. Gene Dawson
Case No. D2017-0329
1. The Parties
The Complainant is Regeneron Pharmaceuticals, Inc. of Tarrytown, New York, United States of America (“United States”), represented by Ohlandt, Greeley, Ruggiero & Perle, LLP, United States.
The Respondent is Gene Dawson of New Lexington, Ohio, United States.
2. The Domain Name and Registrar
The disputed domain name <regenerron.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2017. On February 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 21, 2017, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2017.
The Center appointed Angela Fox as the sole panelist in this matter on March 31, 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.
On April 2017 and May 2, 2017, in accordance with paragraph 10 of the Rules, the Panel has extended the due date for the decision to May 12, 2017.
4. Factual Background
The Complainant is a United States-based international pharmaceutical company. It has been trading under the name REGENERON since 1988 in connection with the research and development of pharmaceutical products and the manufacture and sale of pharmaceutical products.
The Complainant is the proprietor of numerous trademark registrations for REGENERON in various jurisdictions covering pharmaceutical products and related services in Classes 5, 6, 18, 31, 42, 44, 46, 51 and 52, including United States federal trademark registration nos.1654595, registered on August 20, 1991 in Class 42; 1933337, registered on November 7, 1995, in Classes 6, 18, 44, 46, 51 and 52; 4225793, registered on October 16, 2012, in Classes 5, 42 and 44; 4402743, registered on September 17, 2013, in Class 31; 4402744, registered on September 17, 2013, in Class 5; 5027241, registered on August 23, 2016, in Class 5. Details of all of these were exhibited to the Complaint, together with a schedule of registrations for REGENERON owned by the Complainant in numerous other jurisdictions.
The Complainant also owns the domain name <regeneron.com>, which has been registered since 1997 and has been used to promote the Complainant’s REGENERON products and activities since 2002. The Complainant says that since its foundation in 1988, millions of dollars have been spent in the registration, advertisement, and promotion of the REGENERON mark, which it says is widely advertised and known. The Complainant points to numerous awards it has received from well-known publications between 2009 and 2015 such as Fortune Magazine, Forbes, Science Magazine and The Scientist in support of this.
The disputed domain name was registered on November 19, 2016. It is not in use. A print-out of the page linked to the domain name was annexed to the Complaint, and displays the notice, “This Account has been suspended”.
On December 6, 2016, the Complainant’s legal representative wrote to the Respondent putting it on notice of the Complainant’s rights and asking that the domain name be transferred to the Complainant. No reply to this letter was received.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. It says, in particular, that the domain name is essentially a deliberate form of “typosquatting” designed to attract Internet users who make a mistake when typing the REGENERON trademark into a website search engine or browser bar.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant submits that the Respondent’s registration was intended either to divert Internet users or to use the disputed domain name in an email phishing scam, of a type that the Complainant says has been perpetrated against it in the past. The Complainant has not authorized or permitted the Respondent to use its trademark, nor is there anything to suggest that the Respondent is commonly known by a name corresponding to the disputed domain name. The Complainant notes that REGENERON is a coined word and that it is implausible that the Respondent could have registered it independently without knowledge of the Complainant. The Complainant further notes that the Respondent is making no legitimate or fair use of the disputed domain name because in fact it is making no use of it at all.
Finally, the Complainant contends that the disputed domain name was registered and has been used in bad faith. The Complainant points to the typosquatting nature of the disputed domain name, and argues that the Respondent must have registered the disputed domain name in the knowledge of, and because it knew of, the Complainant’s trademark, with the intention of capitalizing on the goodwill associated with it. The Complainant notes that the Respondent did not respond to the Complainant’s cease-and-desist letter, which it says also evidences bad faith. While the Complainant acknowledges that the disputed domain name is not in active use, it submits that the passive holding is in these circumstances sufficient to meet the test for bad faith use under the Policy.
The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical 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 the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant has shown that it has rights in the trademark REGENERON. The disputed domain name <regenerron.org> is almost identical to the Complainant’s trademark, differing only in the addition of an extra “r” in the middle of the trademark, and the non-distinctive Top-Level Domain “.org”.
These differences are so minor as almost to be imperceptible, and are not sufficient to distinguish the disputed domain name from the Complainant’s trademark. The Complainant succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent does not enjoy a right or legitimate interest in the disputed domain name, and the Respondent has made no effort to demonstrate that it does.
There is no evidence that the Respondent has been commonly known by a name corresponding to the domain name, nor any evidence of use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Nor does there appear to have been any legitimate noncommercial or fair use.
There is in short nothing on the facts of this case to suggest that the Respondent has a right or legitimate interest in the disputed domain name.
The Panel finds that the Complainant succeeds under the second element of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name is inherently confusingly similar to the Complainant’s trademark and indeed appears intended to prey upon Internet users who make a common and foreseeable typographical error when typing the Complainant’s name into a browser bar.
The Panel agrees that the Respondent’s registration of the disputed domain name appears to constitute “typosquatting,” namely the registration of domain names that consist of common or predictable misspellings of third-party trademarks in order to attract Internet traffic intended for a complainant (see, inter alia, Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150; Red Bull GmbH v. Grey Design, WIPO Case No. D2001-1035; Playboy Enterprises International Inc. v. SAND WebNames – For Sale, WIPO Case No. D2001-0094; and Telstra Corporation Ltd. v. Warren Bolton Consulting Pty. Ltd., WIPO Case No. D2000-1293).
Although the disputed domain name resolves to an inactive webpage, nonetheless passive holding of a domain name can constitute use in bad faith. As noted in Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003, “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”. In this case, the Panel considers it implausible that the Respondent registered the disputed domain name without knowing about the Complainant and its REGENERON mark, and takes into account that the disputed domain name, which is inherently confusingly similar to the Complainant’s trademark, appears to have been made with the intention of misleading Internet users. The Panel also takes account of the fact that the Respondent did not reply either to this Complaint or to the Complainant’s cease-and-desist letter sent prior to the Complaint being filed. Taken in the round, all of these circumstances suggest that the Respondent’s conduct in registering the disputed domain name was not in good faith, and its passive holding, therefore, is also not in good faith.
The Complainant therefore succeeds under the third element of the Policy.
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 <regenerron.org> be transferred to the Complainant.
Date: May 12, 2017