The Complainant is Regeneron Pharmaceuticals, Inc. of Tarrytown, New York, United States of America ("United States"), represented by Ohlandt, Greeley, Ruggiero & Perle, LLP, United States.
The Respondent is Patrick Miller of Amherst, New Hampshire, United States.
The disputed domain name <regeneroninc.com> (the "Disputed Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 31, 2016. On April 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 4, 2016, 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 April 11, 2016, 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 April 13, 2016.
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 April 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 9, 2016.
The Center appointed Lynda M. Braun as the sole panelist in this matter on May 20, 2016. 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.
The Complainant is a global biopharmaceutical company that was founded in 1988. The Complainant owns several United States trademark registrations for REGENERON, including Registration No. 1654595, registered on August 20, 1991, which have been in use in commerce since 1988 in connection with the research, development, manufacture, and sale of pharmaceutical products, as well as genetic engineering services and the production of biological materials. The Complainant also owns numerous trademark registrations for REGENERON in other jurisdictions throughout the world (collectively, the "REGENERON Mark").
The Complainant has spent millions of dollars in the registration, advertisement, and promotion of the REGENERON Mark. As a result of the Complainant's significant monetary investment in and continuous use of the REGENERON Mark, it has developed extensive goodwill and consumer recognition.
The Complainant is the owner of the <regeneron.com> domain name, which has been registered since 1997 and has been used to promote the Complainant's products and activities since 2002.
The Respondent registered the Disputed Domain Name on December 13, 2015. The Disputed Domain Name resolves to a registrar parking page that displays sponsored links to third-party websites.
The Complainant recently became aware that the Respondent posted a fraudulent job advertisement on the website "www.bostonjobs.com" and sent emails to job applicants in which the Respondent claims to be an employment recruiter from the Complainant's Recruiting Department. The email, which uses email addresses associated with the Disputed Domain Name, references the Complainant's company name and website.
The following are the Complainant's contentions:
- The Disputed Domain Name is confusingly similar to the Complainant's trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Respondent is using the Disputed Domain Name as part of a fraudulent recruitment scheme to deceive job-seekers into believing that the Complainant's Recruiting Department is inviting them to apply for a job.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the REGENERON Mark based on both longstanding use and its numerous trademark registrations in the United States and abroad. The Disputed Domain Name consists of the REGENERON Mark appended by the generic abbreviation "inc", followed by the generic Top-Level Domain ("gTLD") ".com".
Numerous UDRP panels have reiterated that the addition of a descriptive or generic word or abbreviation to a trademark is insufficient to avoid confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Occidental Chemical Corporation v. Contact Privacy Inc. Customer 0126942866 and Paolo Martin, Oxychem Corporation, WIPO Case No. D2015-1208.
Moreover, the addition of a gTLD such as ".com" in a domain name may be technically required. Thus, it is well established that such element may be generally disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its REGENERON Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name.
The Respondent has been using the Disputed Domain Name as part of a fraudulent recruiting or phishing scheme. In this scheme, the Respondent sends emails to job applicants using the Disputed Domain Name as an email suffix to create the impression that the emails are being sent by the Complainant's Recruiting Department in order to fraudulently induce applicants to provide personal information when applying for a job. Such a scheme cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Name. See CMA CGM v. Diana Smith, WIPO Case No. D2015-1774.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant's prima facie case.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy.
First, the Respondent's fraudulent scheme to email job-seeking individuals fraudulent job offers purporting to come from the Complainant, and to collect the personal information of such individuals, evidences a clear intent to disrupt the Complainant's business, deceive individuals, and trade off the Complainant's goodwill by creating an unauthorized association between the Respondent and the Complainant's REGENERON Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent's bad faith registration and use of the Disputed Domain Name. See Petróleo Brasileiro S.A. - Petrobras v. AK Bright, WIPO Case No. D2013-2063 (considering the reputation of the complainant and the emails sent by the respondent using the complainant's trademark, the respondent is held to have registered and used the disputed domain name in bad faith).
Numerous UDRP panels have found that email-based schemes that use a complainant's trademark in the disputed domain name are evidence of bad faith. See, e.g., DeLaval Holding AB v. Registration Private, Domains By Proxy LLL / Craig Kennedy, WIPO Case No. D2015-2135; CMA CGM v. Diana Smith, WIPO Case No. D2015-1774; Terex Corporation v. Williams Sid, Partners Associate, WIPO Case No. D2014-1742.
Second, bad faith may be found where the Respondent knew or should have known of the registration and use of the REGENERON Mark prior to registering the Disputed Domain Name. Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name long after the Complainant obtained its trademark registrations for the REGENERON Mark. The longstanding and public use of the REGENERON Mark makes it disingenuous for the Respondent to claim that he was unaware of the Complainant's trademark rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137. The Respondent cannot deny that he had knowledge of the Complainant's REGENERON Mark when registering the Disputed Domain Name in view of the fact that the Respondent impersonated the Complainant in the fraudulent recruitment scheme discussed above.
Third, the registration of a domain name that is confusingly similar to a well-known registered trademark by an entity that has no relationship to that mark may be sufficient evidence of bad faith registration and use. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the Complainant's REGENERON Mark.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <regeneroninc.com> be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Date: May 22, 2016