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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Regeneron Pharmaceuticals, Inc. v. Michael Fitzgerald, MFR

Case No. D2020-1950

1. The Parties

The Complainant is Regeneron Pharmaceuticals, Inc., United States of America (“United States”), represented by Ohlandt, Greeley, Ruggiero & Perle, LLP, United States.

The Respondent is Michael Fitzgerald, MFR, Ireland.

2. The Domain Names and Registrar

The disputed domain names <irelandregeneron.com>, <myregeneron.com>, <regeneronlimerick.com>, <regeneronme.com>, and <theregeneron.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2020. On July 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 28, 2020, 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 August 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2020.

The Center appointed Tuukka Airaksinen as the sole panelist in this matter on September 25, 2020. 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

The Complainant has used the REGENERON trademark since 1988 in connection with the research and development of pharmaceutical products and the manufacture and sale of pharmaceutical products. The Complainant’s trademark has been registered in several jurisdictions, including in the United States under registration No. 1654595, registered on August 20, 1991. The Complainant is also the owner of the domain name <regeneron.com> and has operated it to promote the Complainant’s products and activities since 2002. The Complainant has also won several major awards in the fields of employment and innovation.

All of the disputed domain names were registered on October 10, 2019, and each redirects to the website at “www.biopharmafilm.com” which promotes a company specializing in, inter alia, biologics, biomedical, life science, and pharmaceutical process filming and animation.

5. Parties’ Contentions

A. Complainant

The disputed domain names all include the Complainant’s trademark in its entirety combined with descriptive elements. They do not adequately distinguish the disputed domain names from the Complainant’s trademark.

The Respondent is not affiliated with the Complainant and the Complainant has not given the Respondent permission, authorization, or license to use the Complainant’s trademark in any manner. The Respondent is not commonly known by the disputed domain names, and the Respondent is not making any legitimate noncommercial or fair use of the disputed domain names.

All of the disputed domain names are redirected to the website at “www.biopharmafilm.com”, which is purportedly offering medical devices. The Respondent’s goods and services are identical or highly related to the Complainant’s goods and services. This, and the fact that the Complainant has used its trademark since 1988, shows that the Respondent was aware of the Complainant when registering the disputed domain names.

The Respondent has registered and is using the disputed domain names to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint or not. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain names are identical or confusingly similar to this trademark.

The disputed domain names include the Complainant’s trademark in its entirety, combined with the terms “me”, “my”, “limerick”, “ireland”, and “the”. Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”

As the disputed domain names include the Complainant’s trademark in its entirety combined with additional terms, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark.

Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark and hence the first element of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests in the disputed domain names.

It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, and section 2.1 of the WIPO Overview 3.0.

The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register the disputed domain names, that the Respondent has no prior rights or legitimate interests in the disputed domain names, and that the Respondent has not made and is not making any legitimate noncommercial or fair use of the disputed domain names, and is not commonly known by the disputed domain names in accordance with paragraph 4(c)(ii) of the Policy.

Moreover, the Panel finds that the nature of the disputed domain names carries a risk of implied affiliation with the Complainant’s trademark. See section 2.5.1 of the WIPO Overview 3.0.

Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain names. Therefore, the Panel finds that the second element of the Policy is fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy provides that 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] 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 trademark 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 [the respondent’s] 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.”

The Complainant has used its REGENERON trademark since 1988. All of the disputed domain names are redirected to a website at “www.biopharmafilm.com”, purportedly offering goods and services that are similar and in competition with those of the Complainant. The document provided by the Complainant shows that the domain name <biopharmafilm.com>, to which the disputed domain names are redirected, was registered on October 2, 2019 with the Registrar by a “MFR” from Ireland. The Panel finds it is most likely that the Respondent registered this domain name. It follows that the Respondent must have been aware of the Complainant’s trademark when registering the disputed domain names.

Based on the above, the Panel finds that the Respondent has registered the disputed domain names to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark in accordance with paragraph 4(b)(iv) of the Policy. Accordingly, the disputed domain names have been registered and are being used in bad faith.

Therefore, the Panel finds that the third element of the Policy is fulfilled.

7. Decision

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 names <irelandregeneron.com>, <myregeneron.com>, <regeneronlimerick.com>, <regeneronme.com>, and <theregeneron.com> be transferred to the Complainant.

Tuukka Airaksinen
Sole Panelist
Date: October 8, 2020

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