The Complainant is Regeneron Pharmaceuticals, Inc. of Tarrytown, New York, United States of America (“United States” or “U.S.”), represented by Ohlandt, Greeley, Ruggiero & Perle, LLP, United States.
The Respondent is Wang Xing of Hangzhou, Zhejiang, China / Shanghai, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2017. On October 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 17, 2017, 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.
On October 19, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On October 19, 2017, the Complainant confirmed its request that English be the language of the proceeding. On October 22, 2017, the Respondent insisted that Chinese be 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 formally notified the Respondent of the Complaint in English and Chinese, and the proceedings commenced on October 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2017. The Respondent did not submit any response save for its email communication on October 22, 2017. Accordingly, the Center notified the Parties that it would proceed to Panel Appointment on November 20, 2017.
The Center appointed Francine Tan as the sole panelist in this matter on November 24, 2017. 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 EYLEA trade mark which it has used since 2011 in connection with pharmaceutical preparations for the treatment of ophthalmic diseases and conditions. The EYLEA trade mark is registered in the United States (U.S. registration No. 4088223, registered on January 17, 2012) in Class 5. The Complainant also owns the domain names and , which it uses to promote its products. The former was registered in 2010 and the latter, in 2008.
The disputed domain names were both registered on January 15, 2017 and resolve to inactive webpages.
A cease-and-desist letter was sent to the Respondent on April 28, 2017. The Complainant did not receive any reply. 5. Parties’ Contentions A. Complainant
(i) The disputed domain names are identical to the Complainant’s EYLEA trade mark.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant’s use and registration of the EYLEA trade mark predates the registration of the disputed domain names. There is no relationship between the Complainant and the Respondent which gives rise to any license, permission or other right to own or use domain names incorporating the Complainant’s EYLEA trade mark. The Respondent is not identified by the name “Eylea”. The Respondent is not making any legitimate or fair use of the disputed domain names.
(iii) The disputed domain names were registered and are being used in bad faith. The EYLEA trade mark is a coined word without meaning or significance other than being a trade mark of the Complainant. The fact that the Respondent chose to register domain names consisting of this coined word demonstrates its awareness of the Complainant and its business, and the desire to capitalize on the Complainant’s business goodwill. The Respondent’s failure to respond to the Complainant’s cease-and-desist letter is an additional indication of bad faith. The passive holding of the disputed domain names does not mean that there is no bad faith registration and use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issue – Language of the Proceeding
The Registration Agreement is in Chinese, but the Complainant requested that English be treated as the language of the proceeding. The reasons given were that (i) the disputed domain names are not in Chinese characters but adopts English-language characters; and (ii) neither the Complainant nor its legal representatives have knowledge of the Chinese language. Requiring the Complainant to translate the Complaint into Chinese would result in significant delay and costs to the Complainant.
The Respondent requested that Chinese be the language of the proceeding.
Paragraph 11(a) of the Rules provides that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Taking into account the circumstances of this case including the interests of the parties, namely to ensure that they are treated with equality and given a fair opportunity to present their case (per paragraph 10(b) of the Rules), and that the administrative proceeding takes place with due expedition (per paragraph 10(c) of the Rules), the Panel determines that it would be appropriate for English to be the language of the proceeding.
The fact that the Respondent chose to register non-Chinese language terms in the “.mobi” and “.asia” domain name space indicates that the Respondent has a level of understanding of the English language. The Respondent did not claim that it does not understand English. In any event, the Respondent has been notified in the Chinese language by the Center of the nature of the proceedings and relevant deadlines for responding to the Complaint. It could, if it wanted to, continue to correspond with the Center and participate in the proceedings by filing a Response to the Complainant’s assertions in the Chinese language.
On a balance, the Panel determines that the Respondent would not be prejudiced if English were the language of the proceeding. Requiring the Complainant to translate the Complaint and supporting documents into Chinese would be contrary to the Policy aim of ensuring that the administrative proceeding take place with due expedition. A significant delay would be caused by such a requirement, which does not appear to be merited in the circumstances of this case.
The Panel therefore determines that English shall be the language of the proceeding. 6.2. Substantive Issues A. Identical or Confusingly Similar
The Complainant has trade mark rights in EYLEA. The disputed domain names comprise the word EYLEA in its entirety. The Panel therefore concludes that the disputed domain names are identical to the EYLEA trade mark in which the Complainant has rights.
The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy indicates how a respondent can demonstrate his rights or legitimate interests to the disputed domain name, namely by establishing any of the following circumstances (which list is not exhaustive):
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Although a complainant is required under the Policy to establish all three elements of paragraph 4(a) of the Policy, the general consensus view of UDRP panelists is that complainants are only required, in relation to paragraph 4(a)(ii) of the Policy, to establish a prima facie case in support. Thereafter, the burden moves to the respondent to produce, with evidence, showing that it has rights or legitimate interests in the domain name in dispute.
The Panel finds that the Complainant has satisfied its burden of establishing a prima facie case. There is no evidence of any relationship between the Complainant and the Respondent, nor of the Respondent being commonly known by the name “Eylea”.
The Respondent chose not to file a response to demonstrate its rights or legitimate interests in the disputed domain name. In the circumstances and in the absence of contrary evidence, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which, if established, point to bad faith registration and use on the part of the Respondent:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel finds that the circumstances of this case fall within paragraph 4(b)(iv) of the Policy. The incorporation of the entire trade mark EYLEA in the disputed domain names, without any differentiation whatsoever, gives rise to a strong presumption that the Respondent had registered the disputed domain names for the specific intention of attracting, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Although the disputed domain names are not in active use, it can be surmised, from the coined nature of the word “eylea” that the Respondent must have been aware of the reputation of the Complainant and its business, and therefore selected this word for its domain name registrations. The Respondent did not proffer any explanation for how it came to adopt this term for the disputed domain names. Bearing in mind, too, the length of time and extent to which the Complainant has been in business, it is highly improbable that the Respondent was not aware of the Complainant’s business and rights in the trade mark EYLEA at the time of registering the disputed domain names. The fact that the disputed domain names are passively held does not prevent a finding of bad faith registration and use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In the premises, the Panel finds that the third element of paragraph 4(a) of the Policy has been satisfied. 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 disputed domain names and be transferred to the Complainant.
Francine Tan
Sole Panelist
Date: November 29, 2017
Full & Egal Universal Law Academy