Regeneron Pharmaceuticals, Inc. v Name Redacted

WIPO Case No. D2023-3162

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Regeneron Pharmaceuticals, Inc. v. Name Redacted

Case No. D2023-3162

1. The Parties

Complainant is Regeneron Pharmaceuticals, Inc., United States of America (“U.S.A.”), represented by

Ruggiero McAllister & McMahon LLC, U.S.A.

Respondent is Name Redacted.0F1

2. The Domain Name and Registrar

The disputed domain name <regeneronhr.com> (the “Domain Name”) is registered with Gandi SAS

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2023. On July 24, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. That same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to Complainant on July 25, 2023 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 1, 2023.

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”).

1 Respondent appears to have used the name of a Complainant’s employee when registering the Domain Name. In light of the
potential identity theft, the Panel has redacted Respondent’s name from this decision. However, the Panel has attached as Annex 1 to
this decision an instruction to the Registrar regarding transfer of the Domain Name, which includes the name of Respondent. The Panel
has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this
decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn.
Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 8, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 31, 2023.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on September 14, 2023.
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

Complainant Regeneron Pharmaceuticals, Inc. uses “REGENERON” in connection with the research and
development of pharmaceutical products and the manufacture and sale of pharmaceutical products. It owns
registrations in the U.S.A. and worldwide for the REGENERON Mark including the following United States
trademark registrations: Registration No. 1,654,595 (issued August 20, 1991; first use April 15, 1988);
Registration No. 1,933,337 (issued November 7, 1995; first use May 22, 1995) and Registration No.
4,225,793 (registered October 16, 2012; first use March 2008, April 15, 1988, and December 2011)
(collectively the “REGENERON Mark” or the “Mark”).

Since July 1997, Complainant has owned the <regeneron.com> domain name to host its website, which has been used to promote Complainant’s REGENERON products and activities since 2002.

Complainant and the REGENERON Mark have been widely advertised and Complainant has won awards over the past several years, for example: (in 2018) No.1 in Science Magazine’s Top Employer; (in 2017) MIT Technology Review: Top 10 Smartest Companies; (in 2016) No.3 Forbes Most Innovative Company; (in 2015) Fortune Magazine’s Best Companies to Work For; (in 2014) No.5 Forbes Most Innovative

Company; (in 2103) Scrip Award for Clinical Advance of the Year; (in 2012) Scrip Intelligence’s
“Biotechnology Company of the Year”; (in 2011) Scientist’s Best Places to Work in Industry; (in 2010)
Deloitte LLP’s Fastest Growing Technology Companies in North America Award; (in 2009) Business
Review’s Best Places to Work Award; (in 2008) The Scientist’s Best Places to Work in Industry.

The Domain Name was registered on May 27, 2023. Respondent has been using it to send phishing emails impersonating Complainant’s HR department (<[…]@regeneronhr.com>) as well as Complainant’s Senior Vice-President / Associate General Counsel. The emails ask unsuspecting job applicants to arrange a screening interview for a particular job, undoubtedly for the illegitimate purpose of collecting personal information for purposes of identity theft. On June 20, 2023, Complainant’s attorney reported this activity to the Registrar of the Domain Name, demanding it to: (1) immediately disable this domain name so that your customer no longer has any control of the domain name whatsoever and no further emails can be sent and (2) transfer the domain name to our client to ensure that this domain name is not used again for such activity. On June 21, 2023, the Registrar replied that it had conducted an internal investigation and suspended the Domain Name.

5. Parties’ Contentions

A. Complainant

The Domain Name is confusingly similar to the Mark as it incorporates the REGENERON Mark in its entirety and adds the non-distinctive term – “hr” – a well-known acronym for the term “human resources”.

The REGENERON Mark is a coined word and as such is not one that other parties, including Respondent, would choose unless seeking to create an association with Complainant. There is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent

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could own or use any domain names incorporating a variation of Complainant’s REGENERON Mark. related to any rights or legitimate interests of Respondent. Respondent is not making any legitimate or fair use of the Domain Name as described above.

That Respondent chose to register the Domain Name consisting of a coined trademark clearly demonstrates Respondent’s awareness of Complainant’s name and business and desire to capitalize on the goodwill associated with the REGENERON Mark. Respondent had prior notice of Complainant’s rights in the REGENERON Mark by virtue of Complainant’s use of the REGENERON Mark commerce in the U.S.A. since 1988 and Complainant’s registration of the REGENERON Mark in the U.S.A. in 1991. Respondent did not register the Domain Name until May 27, 2023. Therefore, it cannot be said that Respondent was unaware of more than 30 years of Complainant’s prior use of the REGENERON Mark. Respondent registered and is using the Domain Name in bad faith because it has been using the Domain Name to send phishing emails impersonating Complainant’s HR department, as well as Complainant’s Senior Vice-President / Associate General Counsel. Using the emails to arrange job interviews undoubtedly for the purpose of collecting personal information for purposes of identity theft, certainly constitutes bad faith. The Registrar’s suspension of the Domain Name also serves to confirm Respondent’s bad faith. The fact that Respondent committed identity theft by submitting false information regarding his/her identity to the Registrar and fraudulently impersonated and listed Complainant and Complainant’s Senior Vice-President / Associate General Counsel as the registrant of the Domain Name is also further evidence of bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the REGENERON Mark by virtue of its U.S.A. trademark registrations cited above.

The Domain Name is confusingly similar to Complainant’s REGENERON Mark because: Complainant’s Mark is clearly recognizable within the Domain Name; the Top-Level Domain is generally not determinative in establishing whether the Domain Name is confusingly similar to a complainant’s mark; and adding “hr” to the end of the Mark does not prevent a finding of confusing similarity with Complainant’s Mark. See, Hi-Tec Sports International Holdings B.V. v. Domain Administrator, PrivacyGuardian.org / Frank Jaeger, WIPO Case No. D2022-2956 (“The Panel notes that the disputed domain name incorporates the HI-TEC trademark in its entirety. The omission of the hyphen and the addition of the term ‘Australia’ do not prevent a finding of confusing similarity under Policy, paragraph 4(a)(i).”); See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”).

For the foregoing reasons, the Panel concludes that Complainant has satisfied paragraph 4(a)(i) of the

Policy.

B. Rights or Legitimate Interests

Complainant maintains that the REGENERON Mark is a coined word and as such is not one that other parties, including Respondent, would choose unless seeking to create an association with Complainant. Complainant also represents that it has no relationship with Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain names incorporating a

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variation of its REGENERON Mark. Further, Complainant argues that the Domain Name is not the name or
nickname of Respondent, nor is it in any other way identified with or related to any rights or legitimate

interests of Respondent.

Furthermore, Complainant submits that Respondent’s use of the Domain Name to send phishing emails
impersonating Complainant’s HR department as well as Complainant’s Senior Vice-President / Associate
General Counsel is not a bona fide, legitimate noncommercial or fair use of the Domain Name under the

Policy. See WIPO Overview 3.0, section 2.13.

Where, as here, Complainant has raised a prima facie case of Respondent’s lack of any rights or legitimate
interests in the Domain Name, and Respondent has failed to rebut that case, the Panel is satisfied that
Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the

Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

At the time Respondent registered the Domain Name on May 27, 2023, Complainant had been using the REGENERON Mark since 1988 in conjunction with its business activities. Over the years, Complainant has garnered a world-wide reputation in the pharmaceutical field. Having no rights or legitimate interests in the Domain Name, Respondent registered a Domain Name that is confusingly similar to Complainant’s registered Mark – a coined trademark. Respondent merely added “hr” to the end of the Mark, a shorthand the public could assume is a designator for “human resources”. In fact, as discussed above, Respondent has been using the Domain Name to send phishing emails impersonating Complainant’s HR department (<[…]@regeneronhr.com>). Given these facts, it is highly likely Respondent was aware of Complainant and its REGENERON Mark when registering the Domain Name.

Given that the use of a domain name for per se illegitimate activity such as phishing can never confer rights or legitimate interests on a respondent, and such behavior is manifestly considered evidence of bad faith. See WIPO Overview 3.0, Section 3.1.4; see also BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364 (“[T]he use of an email address associated with the disputed domain name, to send a phishing email for the purposes of dishonest activity is in itself evidence that the disputed domain name was registered and is being used in bad faith.”); Kimley-Horn and Associates, Inc. v. Abrahim Hashim, WIPO Case No. DCO2019-0017 (“registration of a domain name in furtherance of phishing scams supports a finding of bad faith registration and use”). Respondent’s registration of the Domain Name and use of it to send phishing emails impersonating Complainant’s HR department and Complainant’s Senior Vice-President / Associate General Counsel to arrange fictitious job screening interviews constitutes bad faith use under the Policy. Furthermore, the Registrar’s suspension of the Domain Name serves to confirm Respondent’s bad faith use of the Domain Name.

For the foregoing reasons, the Panel concludes that Complainant has satisfied paragraph 4(a)(iii) of the

Policy.

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 Domain Name <regeneronhr.com> be transferred to Complainant.

/Harrie R. Samaras/
Harrie R. Samaras
Sole Panelist
Date: September 26, 2023