WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Regeneron Pharmaceuticals, Inc. v. Lee Seyoung
Case No. D2021-3003
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 Lee Seyoung, Republic of Korea.
2. The Domain Names and Registrar
The disputed domain names <regeneronbiotech.com> and <regenerontech.com> are registered with Gabia, 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 to the Registrar a request for registrar verification in connection with the disputed domain names. On September 14, 2021, the Registrar transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On October 8, 2021, the Center notified the Parties, in both English and Korean, that the Complaint was submitted in English, and that according to the Registrar, the language of the registration agreement for the disputed domain names is Korean. In the same notification, the Center requested the Complainant to provide, by October 11, 2021:
“1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or
2) … the Complaint translated into Korean; or …
3) … a request for English to be the language of the administrative proceedings.”
To the Respondent, the Center stated that “if the Respondent is intending to participate in these proceedings, and/or has any comments on the Complainant’s submission replying to this notification, the Respondent is requested to submit these to the Center by October 13, 2021.” The Center also advised the Respondent:
“Specifically in the case of the Complainant submitting (or indicating that it will submit) a request for the language of proceedings to be English, and the Respondent objects to such request, the Respondent is invited to indicate that objection for the record, and to submit any arguments/supporting materials … as to why the proceedings should not be conducted in English.
Please note that if we do not hear from you by [October 13, 2021], we will proceed on the basis that you have no objection to the Complainant’s request that English be the language of proceedings.”
On October 8, 2021, the Complainant responded to the Center, reiterating its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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, again both in English and Korean, formally notified the Respondent of the Complaint, and the proceeding commenced on November 2, 2021. In accordance with the Rules, paragraph 5, the due date for the Response was November 22, 2021.
On November 17, 2021, the Center received an email from someone using “regenerontech.com” in its email address, stating:
“I am writing this email representative of Regenerontech.
We do not use three domains which are regeneronbiotech@[...], … [...]@regeneronbiotech.com.
Also, other domain which is […]@regenerontech.com will not be used soon.
If the complainant wants to use above domains, we are willing to sell them in proper price.”
The Center acknowledged receipt, and responded that “the Respondent … Lee Seyoung may reply to this email to clarify her/his relationship (if any) with the sender of the below email in the context of the current proceedings.” The Center also requested the sender of the email “to identify herself or himself, clarifying her/his relationship (if any) to the Respondent Lee Seyoung, and to provide information sufficient to verify such relationship.” The Center did not receive any further correspondence from the sender of the email.
The Respondent did not submit any response. Accordingly, on December 17, 2021, the Center notified the Respondent’s default.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on December 28, 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 states that it has used the REGENERON mark since 1988 “in connection with the research and development of pharmaceutical products and the manufacture and sale of pharmaceutical products.” The Complainant has obtained registrations of various marks for REGENERON in several countries, including the United States (among others, registration no. 1654595 for REGENERON, registered on August 20, 1991), and the Republic of Korea (among others, registration no. 4002942330000 for REGENERON, registered on September 20, 2004). The Complainant is also the owner of the domain name <regeneron.com>, which was registered on July 10, 1997.
The Respondent registered the disputed domain name <regneronbiotech.com> on October 22, 2020, and the disputed domain name <regenerontech.com> on October 31, 2020.
5. Parties’ Contentions
The Complainant contends principally that: (i) the disputed domain names are identical or confusingly similar to a mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. In addition, the Complaint states, inter alia:
“Since the founding of Regeneron Pharmaceuticals, Inc. in 1988, millions of dollars have been spent in the registration, advertisement, and promotion of the REGENERON mark.”
“Complainant and the REGENERON name and mark are widely advertised and known. Such widespread recognition is evidenced by the fact that Complainant has won several major awards over the past several years ….”
“There is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain names incorporating a variation of Complainant’s REGENERON trademark.”
“Complainant’s REGENERON trademark is a coined word with no other known identification except Complainant. The fact that Respondent chose to register Domain Names including this coined trademark clearly demonstrates Respondent’s awareness of Complainant’s name and business and desire to capitalize on the goodwill associated with the REGENERON trademark.”
“Complainant South Korean counsel sent a cease and desist letter to Respondent …. Respondent never responded to said cease and desist letter, which is also evidence of bad faith.”
The Respondent did not reply to the Complainant’s contentions. Under paragraphs 5(f) and 14(a) of the Rules, the Panel may decide the dispute based on the Complaint. Paragraph 14(b) allows the Panel to draw appropriate inferences from the Respondent’s default.
6. Discussion and Findings
Initially, the Panel must address the language of the proceeding.
Paragraph 11(a) of the Rules provides that the language of the registration agreement is the language of the administrative proceeding, unless otherwise agreed by the parties or specified in the registration agreement. This provision also states that the determination of the proper language is “subject to the authority of the Panel …, having regard to the circumstances of the administrative proceeding.” Here, the language of the registration agreement is Korean; nevertheless, the Complainant requests that English be the language of the proceeding.
After receiving the Complaint in English, the Center notified the Parties, in both English and Korean, of the Center’s procedural rules regarding the language of the proceeding. In requesting that English be the language of the proceeding, the Complainant states, in part, that the “Respondent could only be aware of Complainant’s coined trademark by reviewing and understanding the Complainant’s business information/documentation and product advertisements, which are in English.” The Center informed the Respondent that it may object timely to a proceeding conducted in English. The Respondent did not respond to the Center’s notification, and has defaulted. Under these circumstances, the Panel decides that English is the language of this proceeding.
Turning to the merits, in order to prevail, the Complainant must satisfy each of the three elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain names <regeneronbiotech.com> and <regenerontech.com> are identical or confusingly similar to a mark in which the Complainant has rights (REGENERON), under paragraph 4(a)(i) of the Policy. The Complainant’s mark appears prominently in each disputed domain name. The addition of the “biotech” or “tech” term does not prevent confusing similarity. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
The first element is demonstrated.
B. Rights or Legitimate Interests
The Complainant states that it has not authorized the Respondent to use the REGENERON trademark, and has met its initial burden of making a prima facie showing that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The burden shifts to the Respondent to demonstrate any such rights or legitimate interests. Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that may demonstrate the Respondent’s rights or legitimate interests in the disputed domain names.
The Respondent has declined to submit any response. Ultimately, the Panel is unable to ascertain any evidence that would demonstrate the Respondent’s rights or legitimate interests in the disputed domain names, as described in the Policy, or otherwise.
The second element is also demonstrated.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must show that each disputed domain name “has been registered and is being used in bad faith.” Paragraph 4(b) provides a non-exhaustive list of circumstances that can satisfy this element.
The disputed domain name <regeneronbiotech.com> resolves to a parked website with Korean text, containing links related to the Registrar’s domain names operations. The disputed domain name <regenerontech.com> resolves to an inactive site. The Respondent’s passive holding of the disputed domain names does not preclude a finding of bad faith. WIPO Overview 3.0, section 3.3.
The Panel determines that the requisite bad faith element is present here. Reviewing the case record in its entirety, the Panel is left with the inevitable conclusion that the Respondent selected the disputed domain names in order to capitalize on the Complainant’s distinctive mark. The Respondent could have offered evidence of good faith registration and use, but declined to participate in the proceeding. These are relevant factors in the analysis.
The third element is also satisfied.
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 <regeneronbiotech.com> and <regenerontech.com> be transferred to the Complainant.
Date: January 11, 2022