WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Regeneron Pharmaceuticals, Inc. v. Augustine Sherman

Case No. D2020-3448

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 Augustine Sherman, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <regeneronmedicals.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2020. On December 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 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 January 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2021.

The Center appointed Steven A. Maier as the sole panelist in this matter on February 16, 2021. 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 is a pharmaceutical company headquartered in New York, United States. It is concerned in the research, development, manufacture and sale of pharmaceutical products.

The Complainant is the proprietor of trademark registrations for the mark REGENERON including, for example, United States trademark number 1654595 for the word mark REGENERON, registered on August 20,1991 for “research and development of medicines and treatments for neurological diseases and psychiatric disorders” in International Class 42. The Complainant is the owner of numerous other registrations for the mark REGENERON in the United States and elsewhere throughout the world.

The Complainant operates a website at “www.regeneron.com”.

The disputed domain name was registered on December 6, 2020.

According to evidence submitted by the Complainant, the disputed domain name has resolved to a website at “www.regeneronmedicals.com”. The website effectively reproduced all or a substantial part of the Complainant’s website at “www.regeneron.com”.

5. Parties’ Contentions

A. Complainant

The Complainant states that it was founded in 1988 and that it has spent millions of dollars in advertising and promoting its REGENERON mark since that date. It states that it has operated its website at “www.regeneron.com” since 2002 and that its trademark is widely known, as reflected by numerous industry awards that it has won over the years. The Complainant provides evidence of such awards granted by scientific and other publications.

The Complainant submits that the disputed domain name is confusingly similar to its REGENERON trademark. It states that REGENERON is a coined term and that the disputed domain name includes that mark in its entirety together with the non-distinctive addition “medicals”.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has never authorized the Respondent to use its REGENERON trademark, that the Respondent has not commonly been known by that name, and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name. On the contrary, the Complainant alleges that the Respondent has used the disputed domain name for the purpose of a fraudulent “pagejacking” website as explained further below.

The Complainant contends that the disputed domain name was registered and has been used in bad faith. The Complainant submits that the Respondent has replicated the Complainant’s website for the purpose of “pagejacking” scheme, having appropriated not only the REGENERON mark but also all text, images and other content from the Complainant’s website. The Complainant states that the Respondent is therefore impersonating the Complainant and that it has used the disputed domain name to create a likelihood of confusion with the Complainant's REGENERON mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The Complainant adds that the Respondent ignored a “cease and desist” letter from it dated December 11, 2020 and also submits evidence that the Respondent has provided a false contact address.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the owner of trademark registrations for the mark REGENERON. The disputed domain name comprises the Complainant’s trademark together with the term “medicals”. The addition is a plural form of a dictionary word and does not prevent the Complainant’s trademark from being recognisable in the disputed domain name. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. There being no other evidence before the Panel of any such rights or legitimate interests, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Panel finds that the disputed domain name is inherently misleading, comprising the Complainant’s distinctive trademark REGENERON together with the term “medicals” which is broadly descriptive of the Complainant’s activities.

The Panel further accepts the Complainant’s evidence, which the Respondent has not disputed, that the Respondent has replicated the whole or a substantial part of the Complainant’s own website for the purpose of its own fraudulent website which impersonates the Complainant. The Panel infers that the Respondent’s purpose in so doing is to misdirect Internet users to its own website for financial gain. It is clear from its use of the disputed domain name that the Respondent was aware of the Complainant’s trademark at the time of registration of the disputed domain name and the Panel finds that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).

The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.

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 name, <regeneronmedicals.com>, be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: February 23, 2021