WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Regeneron Pharmaceuticals, Inc. v. Domain Admin, Whois Privacy Corp. / Aniket Bansode
Case No. D2019-0429
1. The Parties
The Complainant is Regeneron Pharmaceuticals, Inc. of Tarrytown, New York, United States of America (the “Unites States”), represented by Ohlandt, Greeley, Ruggiero & Perle, LLP, United States.
The Respondent is Domain Admin, Whois Privacy Corp. of New Providence, the Bahamas / Aniket Bansode, location unknown.
2. The Domain Name and Registrar
The disputed domain name <regeneron.asia> (“Domain Name”) is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2019. On February 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 27, 2019, 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 February 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2019. The Respondent sent an email communication to the Center on March 5, 2019. The Center sent the Commencement of Panel Appointment Process on March 21, 2019.
The Center appointed Nicholas Smith as the sole panelist in this matter on March 27, 2019. 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
Founded in 1988, the Complainant is a pharmaceutical company, based in the United States.
The Complainant holds, amongst other marks, a registered trade mark for the word “regeneron” (the “REGENERON Mark”) (Unites States registration number 1654595), registered from August 20, 1991 for “research and development of medicines and treatments for neurological diseases and psychiatric disorders” in class 42.
The Complainant also owns the domain name <regeneron.com> which has been used as the official website of the Complainant since 2002. The Complainant has spent millions of dollars promoting the REGENERON Mark and the Complainant is externally recognised as a leading pharmaceutical company.
The Domain Name <regeneron.asia> was registered on August 13, 2018 and redirects to a website (the “Respondent’s Website”) that offers sponsored listings (often referred to as pay-per-click advertisements) relating to jobs in the pharmaceutical industry. The Respondent’s Website also contains the phrase “Buy this domain The owner of regeneron.asia is offering it for sale for an asking price of 2500 EUR!”.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s REGENERON Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the REGENERON Mark having registered the REGENERON Mark in the United States and around the world. The Domain Name incorporates the REGENERON Mark in its entirety and is identical to the REGENERON Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the REGENERON Mark. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather the Respondent has repeatedly contacted the Complainant and offered to sell the Domain Name for large sums exceeding the cost of registration.
The Domain Name was registered and is being used in bad faith. The Domain Name is offered for sale for a price exceeding the costs of registration and is being used to attract and redirect web traffic to a parking page displaying sponsored links to third party websites for the Respondent’s own commercial benefit.
The Respondent did not provide a formal response to this proceeding however on March 5, 2019 sent an email to the Center stating …“I had no idea about the trademark of this keyword “regeneron”. I found this domain free to register, I registered. I didn’t intend to violate it.” The Respondent then offered to sell the Domain Name to the Complainant for EUR 499.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the REGENERON Mark, having registrations for the REGENERON Mark as a trade mark in the United States. Disregarding for the purposes of comparison the generic Top-Level Domain (“gTLD”) “.asia” (being a technical requirement for the registration of a domain name), the Domain Name is identical to the REGENERON Mark. Consequently the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the REGENERON Mark or a mark similar to the REGENERON Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate non-commercial fair use or a bona fide offering of goods and services; the use of the Domain Name for what appears to be a parking page with pay-per-click links and advertising the Domain Name for sale at a price well in excess of out-of-pocket costs, does not amount to use for a bona fide offering of goods and services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has failed to rebut that prima facie case and establish that it has rights or legitimate interests in the Domain Name under the Policy. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the REGENERON Mark at the time the Respondent registered the Domain Name. The REGENERON Mark is a coined word and the Respondent has provided no explanation, and none is immediately obvious, why an entity would register a domain name containing the REGENERON Mark and redirect it to a website containing links relating to pharmaceutical jobs, unless there was an awareness of and an intention to create a likelihood of confusion with the Complainant and its REGENERON Mark. In addition, on August 14, 2018, the day after registration, the Respondent sent an email to the Complainant offering to sell the Domain Name for 2500 Euros (as indicated in the Domain Name). In these circumstances, the Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights or legitimate interests of its own amounts to registration in bad faith.
The Respondent’s Website offers what appear to be pay-per-click links that refer to the Complainant’s industry. In these circumstances where the Respondent has offered plausible no explanation for the registration of the Domain Name, the Panel finds that that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the REGENERON Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. It is also apparent from the factual record that the Respondent registered the Domain Name for the purpose of selling it to the Complainant for a sum well in excess of any out of pocket costs. As such, the Panel finds that the Domain Name is being used in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) 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 Domain Name, <regeneron.asia> be transferred to the Complainant.
Date: April 3, 2019