WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Regeneron Pharmaceuticals, Inc. v. Privacy service provided by Withheld for Privacy ehf / Aribi Oussema, Tunisia Hosting
Case No. D2021-3002
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 Privacy service provided by Withheld for Privacy ehf, Iceland /Aribi Oussema, Tunisia Hosting, Tunisia.
2. The Domain Name and Registrar
The disputed domain name <regeneron.life> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2021. On September 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 2021, 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 the Complainant on September 15, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 16, 2021. The Respondent sent two email communications to the Center on September 16, 2021, the first email containing questions about the formal proceedings and the second email stating that it was the first registrant of the disputed domain name and did not intend to give the disputed domain name to someone else because it was the name of the Respondent’s blog.
The Center verified that the Complaint together with the amended 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 September 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2021. The Respondent did not submit any response. Accordingly, the Center sent to the Parties the Commencement of Panel Appointment Process email on October 27, 2021.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on November 10, 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 the owner of the REGENERON trademark, which has been in use since 1988 in connection with the research, development, manufacture and sale of pharmaceutical products.
The Complainant owns trademark registrations in various jurisdictions, including the United States trademark REGENERON (Reg. No. 1654595, registered on August 20, 1991) and the United States trademark REGENERON (Reg. No. 1933337, registered on November 7, 1995).
The Complainant further holds the domain name <regeneron.com> under which the official website of the Complainant is available. The Complainant advertises and sells its services through its <regeneron.com> domain name.
The disputed domain name was registered on October 8, 2020 and resolves to an inactive page.
5. Parties’ Contentions
The Complainant alleges that it has satisfied all elements of the Policy, paragraph 4.
The Respondent did not submit a formal Response.
In its two email communications of September 16, 2021, the Respondent mainly said that it was the first registrant of the disputed domain name and did not intend to give the disputed domain name to someone else because it was the name of the Respondent’s blog.
In line with the Panel’s authority pursuant to the Rules, paragraph 10, the Panel has considered the Respondent’s unsupported assertions, and notes that the Respondent’s submissions do not alter the outcome of the case.
6. Discussion and Findings
Based on the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows:
A. Identical or Confusingly Similar
The Complainant has submitted evidence to demonstrate its registered rights in the REGENERON trademark.
The REGENERON trademark is wholly reproduced in the disputed domain name. It has become a consensus view among UDRP panels that the applicable Top-Level Domain (“TLD”) in a domain name is a standard registration requirement and as such may be disregarded when assessing confusing similarity under the first element of the Policy. This practice also applies with regard to new TLDs such as “.life” (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.11.1 and 1.11.2).
Therefore, the Panel concludes that the disputed domain name is identical to the Complainant’s REGENERON trademark.
The Complainant has thus fulfilled the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name. The Panel notes that the term “regeneron” does not appear to have any dictionary meaning to justify the Respondent’s selection of the disputed domain name, but is a coined term. In any event, the disputed domain name is being passively held, as discussed further below under section C. See also section 2.10 of the WIPO Overview 3.0.
Based on the Complainant’s credible submissions, the Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Panelists have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. The totality of the circumstances in each case will be examined, and factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing of its identity or use of false contact details, and (iv) the implausibility of any good faith use to which the domain name may be put (see WIPO Overview 3.0, section 3.3).
Under the circumstances of this case, including the composition of the disputed domain name and reputation of the Complainant’s trademark, the Panel finds that the Respondent was most likely aware of the Complainant’s trademark when registering the disputed domain name. The Panel sees no plausible good faith use to which the disputed domain name may be put. Hence, the Panel finds it more likely than not that the Respondent was targeting the Complainant and the goodwill it has obtained to its trademark REGENERON. The Panel notes that screening of trademark registrations is readily available through online databases (or by a mere Internet search) to avoid the registration of a trademark-abusive domain name.
In the totality of circumstances of this case, the Panel finds that the Respondent has therefore registered and is using the disputed domain name in bad faith.
Accordingly, the Complainant has also fulfilled 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 disputed domain name <regeneron.life> be transferred to the Complainant.
Date: November 22, 2021