The Complainant is Regeneron Pharmaceuticals of Tarrytown, New York, United States of America (“United States”), represented by Ohlandt, Greeley, Ruggiero & Perle, LLP, United States.
The Respondent is Kai Chit Luk of Sai Wan, Hong Kong, China, self-represented.
The disputed domain name <regeneron.app> (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 October 16, 2018. On October 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 18, 2018, 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 October 29, 2018. In accordance with the Rules, paragraph 5, the extended due date for Response was November 22, 2018. The Response was filed with the Center on November 22, 2018.
The Center appointed John Swinson as the sole panelist in this matter on November 29, 2018. 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 Regeneron Pharmaceuticals Inc., a company incorporated in the United States. According to the Complaint, the Complainant is in the business of research, development, manufacture, and sale of pharmaceutical products.
The Complainant owns a number of registered trade marks for REGENERON, the earliest of which is United States registered trade mark number 1654595 registered on August 20, 1991 (the “Trade Mark”). The Complainant registered a domain name which incorporates the Trade Mark, being <regeneron.com>, in 1997.
The Respondent is Kai Chit Luk, an individual who resides in Hong Kong, China. The Respondent registered the Disputed Domain Name on May 9, 2018. According to the Response, the Respondent planned to use the Disputed Domain Name for his event registration company. The Disputed Domain Name resolves to a website offering the Disputed Domain Name for sale.
The Complainant makes the following submissions:
Identical or Confusingly Similar
The Complainant owns six registered trade marks for REGENERON. The Complainant is well-known and recognized in the field of pharmaceuticals. The Disputed Domain Name is identical to the Trade Mark which is incorporated in the Disputed Domain Name in its entirety.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:
- The Disputed Domain Name currently resolves to a website advertising the Disputed Domain Name for sale. Upon receipt of a cease and desist letter from the Complainant’s attorney, the Respondent inquired if the Complainant was interested in purchasing the Disputed Domain Name. The purchase price was initially listed on the website at the Disputed Domain Name as being USD 6,000. Following receipt of the cease and desist letter, the purchase price was subsequently raised to USD 280,000.
- The Trade Mark is a coined term associated only with the Complainant.
- There is no relationship between the Complainant and the Respondent that would establish any licence, permission, or other right by which the Respondent could own or use any domain name incorporating a variation of the Trade Mark.
- The Disputed Domain Name is not, and could not be, a name or nickname of the Respondent, nor does it relate to any rights or legitimate interests of the Respondent.
Registered and Used in Bad Faith
The Respondent registered the Disputed Domain Name in 2018, almost 25 years after the Complainant began using the Trade Mark. The Complainant registered its <regeneron.com> domain name in 1997 and has been using the website at that domain name to promote the Complainant’s products and activities since 2002. Since the Complainant’s founding in 1988, the registration, advertisement and promotion of the Trade Mark have been heavily financed. As a result of its extensive use, the Respondent would have had prior actual or constructive notice of the Complainant’s Trade Mark.
The Respondent is using the Disputed Domain Name in bad faith. This is demonstrated by the Respondent’s attempt to sell the Disputed Domain Name, first for USD 6,000 and subsequently for USD 280,000. The Respondent’s contentions that the Complainant failed to register the Disputed Domain Name in the “.APP” sunrise period is irrelevant to the Complaint, even if true.
The Respondent makes the following submissions:
Identical or Confusingly Similar
The Complainant has not provided any evidence that demonstrates that the Respondent was or could have been aware of the Complainant’s Trade Mark at the time the Respondent registered the Disputed Domain Name.
Rights or Legitimate Interests
The Respondent intends to use the Disputed Domain Name for the purposes of an event registration company. The Respondent spent HKD 2,250 to register the company, named Regeneron Company, in Hong Kong. “Reg” is the prefix of the word “registration” and “app” is the prefix for “application”. The Respondent paid USD 10,000 for design and programming work for the application.
The Respondent was notified by Google that the new generic Top Level Domain (“gTLD”) “.app” was available for pre-registration from May 1, 2018 to May 8, 2018 following the sunrise period for trade mark holders. On May 3, 2018, the Respondent was informed by GoDaddy that a trade mark claim check was to be conducted and that any relevant potential domain names registered with a trade mark owners’ mark that was in the Trade mark Clearinghouse (“TMCH”) would in turn be notified to that trade mark owner. On May 9, 2018, the Respondent received confirmation of successful domain registration from GoDaddy.
Registered and Used in Bad Faith
The Respondent registered the Disputed Domain Name for the purpose of conducting his company and selling his product. The Complainant failed to prove who established the webpage which offered the Disputed Domain Name for sale. The Complainant provided captures of “https://undeveloped.com/buy-domain/regeneron.app” rather than the Disputed Domain Name.
As the Complainant failed to demonstrate that the Respondent was responsible for the relevant page, the Complainant failed to draw the conclusion that the Respondent was selling the Disputed Domain Name in bad faith for USD 6,000 and USD 280,000. The Respondent never made an offer to sell the Disputed Domain Name to the Complainant. The Respondent rejects that he violated any trade mark infringement and all domain acquisition was conducted by an outsourcing firm. The Respondent did not gain any monetary benefits from the Disputed Domain Name.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
On November 29, 2018 the Complainant submitted a supplemental filing responding to particular issues raised by the Respondent in the Response. On December 3, 2018 the Respondent submitted a supplemental filing in response to the Complainant’s supplemental filing. The Rules and the Supplemental Rules do not expressly provide for additional filings. In this case, the Panel has reviewed the supplemental filings submitted by both parties, however they do not add any significant material and therefore the Panel has not considered the submissions.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
It is not relevant to this element whether the Respondent was aware of the Complainant or the Trade Mark when he registered the Disputed Domain Name.
The Disputed Domain Name incorporates the Trade Mark in its entirety, and no additional words have been added.
The use of a new gTLD can, in some circumstances, play a role in determining identity or confusing similarity. However, in this case, the new gTLD “.app” does not serve such a purpose. It is a generic term which connotes an application on the Internet. As such, the Panel considers “.app” can be ignored for the purpose of testing confusing similarity, in the same way that “.com” is generally ignored (see e.g., Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Boehringer Ingelheim Pharma GmbH & Co. KG v. Andrey G Ladner, Private Person, WIPO Case No. D2015-1581).
The Disputed Domain Name is identical to the Trade Mark. The Complainant succeeds on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. At the time the Complaint was filed, the website at the Disputed Domain Name diverted to a website offering the Disputed Domain Name for sale. At present the Disputed Domain name does not resolve to any website.
- The Panel accepts the Complainant’s submission that the Complainant has not authorized or otherwise given the Respondent permission to use the Disputed Domain Name.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name. Whilst the Respondent registered the “Regeneron Company” as a business name in Hong Kong on April 10, 2018, the Respondent has not demonstrated that he is commonly known (as opposed to merely incidentally being known) by the name Regeneron. In order to determine whether a respondent is commonly known by a domain name, UDRP panels will look to materials including websites or blogs, news articles and correspondence with independent third parties. In this case, the Respondent has not provided any evidence that he trades under, or is otherwise using or known by, this name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Complainant has provided evidence that, at the time the Complaint was filed, the Disputed Domain Name resolved to a website which offered it for sale for USD 280,000. This is not a noncommercial or fair use of the Disputed Domain Name.
The Respondent submits that he plans to use the Disputed Domain Name to host an event registration website. However, the Respondent has provided little evidence in support of this assertion. The Respondent has provided an invoice which he says relates to design work for his event registration website. However, the invoice does not identify the name of the Respondent’s business or the Disputed Domain Name. The Respondent has provided no business plans or other documents which might support his assertions. Therefore, the Panel does not have a sufficient basis on which to find that the Respondent has made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Respondent has not provided sufficient evidence to rebut the prima facie case established by the Complainant. In light of the above, the Complainant succeeds on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Respondent registered the Disputed Domain Name on May 9, 2018, which is approximately 27 years after the Complainant began operating and using the Trade Mark. As stated above, the Complainant is well-known and has developed a strong reputation in the pharmaceutical industry.
The Panel notes that the Respondent may have been confused by GoDaddy’s “Early notice: Pending trademark claim” to the effect that the Respondent wrongly thought that this would give him an “all clear” to register the disputed domain name.
The Trade Mark is not a common or generic term, but a fanciful name. The Respondent states that he chose to register the Disputed Domain Name for an event registration company. According to the Response, “reg” is the prefix for “registration”, and the gTLD “.app” is the prefix for application. The Panel finds this to be an entirely unconvincing explanation as to why the Respondent selected this particular domain name for his event registration company, particularly in light of the reputation of the Trade Mark and in particular as to the “eneron” part of the disputed domain name. Instead, the Panel considers it likely that the Respondent had knowledge of both the Complainant and the Trade Mark at the time the Disputed Domain Name was registered.
In further support of the Respondent’s prior knowledge of the Trade Mark is first the fact that the Complainant registered the TMCH and second that the Registry Operator for the “.app” gTLD has on its own initiative extended the “Claims Notice” period indefinitely. The TMCH is a repository of verified trade mark information. If a party attempts to register a domain name in a new gTLD which exactly matches a trade mark registered in the TMCH, that party is alerted to the relevant trade mark rights and must acknowledge those rights before continuing with the registration (for clarity, in other new TLDs this typically only occurs for the 90 day period). If the registration proceeds, the trade mark owner is alerted.
Here, the second level domain in the Disputed Domain Name identical to the Trade Mark. The Respondent himself has provided evidence that he was advised of the Complainant’s rights in the Trade Mark prior to his registration of the Disputed Domain Name. The Respondent was required to expressly acknowledge those rights before he could proceed with the registration. The Respondent has registered the Disputed Domain Name despite being specifically made aware of the Trade Mark at the time of registration. When considered together with the Respondent’s unconvincing explanation as to why he chose the Disputed Domain Name, the Panel considers that this is a clear indicator of bad faith registration.
Further, at the time the Complaint was filed, the Disputed Domain Name diverted to a website which displayed a notice that the Disputed Domain Name was for sale. The Complainant sent the Respondent a cease and desist letter on August 14, 2018. The Respondent replied in an email dated August 20, 2018 asking the Complainant if it was interested in purchasing the Disputed Domain Name. At this time, the Disputed Domain Name was being advertised for sale for USD 6,000. By October 27, 2018 the Disputed Domain Name was being advertised for sale for USD 280,000.
Registering or acquiring a domain name for the purpose of selling, renting or otherwise transferring the domain name registration to a trade mark owner for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name is an indication of registration and use of the relevant domain name in bad faith (see paragraph 4(b)(i) of the Policy). Out-of-pocket costs include the costs of obtaining, registering, and maintaining a domain name. This issue of “excessive” out-of-pocket costs is considered on a case-by-case basis.
In this Panel’s experience, both amounts for which the Disputed Domain Name was advertised for sale, being USD 6,000 and USD 280,000, would greatly exceed the Respondent’s out-of-pocket costs directly associated with the Disputed Domain Name (roughly USD 300). The Panel finds that the Respondent’s offer to sell the Disputed Domain Name for an amount in excess of his out-of-pocket costs is evidence of registration and use of the Disputed Domain Name in bad faith in accordance with paragraph 4(b)(i) of the Policy.
The Respondent claims that the Complainant failed to demonstrate that the Respondent was responsible for the website which advertised the Disputed Domain Name for sale. However, Panels have consistently held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (see section 3.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0)).
As set out in SAP SE v. Domains by Proxy, LLC / Kamal Karmakar WIPO Case No. D2016-2497:
“Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an “automatically” generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trade marks.”
Therefore, even if the Disputed Domain Name diverted to a third party website which offered the Disputed Domain Name for sale, the Respondent remains responsible for this content. The Respondent produced no evidence that he made good faith attempts to remove the content at the website advertising the Disputed Domain Name for sale.
In light of the above, the Panel is satisfied that the Respondent has registered and is usingthe Disputed Domain Name in bad faith. The Complainant succeeds on the third element of the Policy.
The Respondent has asked that a finding of RDNH be made against the Complainant. For the reasons above, the Panel is not prepared to find that its Complaint was unjustified. The Complainant succeeded on all elements and the Panel finds that the Complaint was not brought in bad faith. Consequently, there is no basis for finding the Complainant has engaged in RDNH.
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.app> be transferred to the Complainant.
John Swinson
Sole Panelist
Date: December 13, 2018