WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Regeneron Pharmaceuticals, Inc. v. Zhou Xiao Wei / Xiao Wei Zhou
Case No. D2017-0018
1. The Parties
The Complainant is Regeneron Pharmaceuticals, Inc. of Tarrytown, New York, United States of America (“United States” or “US”), represented by Ohlandt, Greeley, Ruggiero & Perle, LLP, United States.
The Respondent is Zhou Xiao Wei / Xiao Wei Zhou of Anyang, Henan, China.
2. The Domain Name and Registrar
The disputed domain name <eylea.xyz> (“the Domain Name”) is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2017. On January 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 10, 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 January 11, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On January 11, 2017, the Complainant confirmed 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 formally notified the Respondent of the Complaint, and the proceedings commenced on January 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2017.
The Center appointed Karen Fong as the sole panelist in this matter on February 23, 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 a pharmaceutical company that owns the trade mark EYLEA in connection with pharmaceutical preparations for the treatment of ophthalmic diseases and conditions. The trade mark has been in use since 2011. It owns US trade mark registrations for the EYLEA trade mark (“the Trade Mark”), for example, US trade mark registration no. 4,088,223 filed on June 30, 2008 and registered on January 17, 2012.
The Domain Name was registered on September 23, 2016. The Domain Name resolves to a static webpage that says “Coming soon”.
On October 28, 2016, the Complainant’s legal representative wrote a cease-and-desist letter to the Respondent who responded saying that he would transfer the Domain Name to the Complainant provided the Complainant “take a LLLL.com to exchange or to pay me $800”.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The 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 Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the Registration Agreement is Chinese.
The Complainant submits in paragraph 10 of the Complaint as well as in its response to the Center on January 11, 2017 that the language of the proceeding should be English. The Complainant contends that the Respondent is familiar with the English language as he responded to the Complainant’s cease‑and‑desist letter in English. Further the Domain Name is in English characters rather than Chinese. The Trade Mark and the Domain Name are composed of words which are only recognized in English characters. Neither the Complainant nor its legal representative have knowledge of the Chinese language and requiring them to translate the Complaint would result in significant delay and cost to the Complainant.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding and finds that there is sufficient evidence that the Respondent is familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that in any case all of the communications from the Center to the parties were transmitted in both Chinese and English. The Respondent chose not to respond to the Complaint. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel accepts that the Complainant has registered rights to the Trade Mark which pre-date the Domain Name.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Name is identical to the Trade Mark. It is accepted that the inclusion of the generic Top-Level Domain denomination “.xyz” shall be disregarded for the purpose of these proceedings.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. The Complainant has established this element of the case.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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; o r
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non- commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that there is no relationship between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain names incorporating the Trade Mark. The Domain Name is not a name or nickname of the Respondent, nor is it in any way identified with or related to any rights or legitimate interests of the Respondent. The Trade Mark EYLEA is a coined word and therefore not one that other parties including the Respondent, would choose unless seeking to create an association with the Complainant. The Respondent is not making any legitimate noncommercial or fair use of the Trade Mark in light of its offer to sell the Domain Name to the Complainant. Further the Respondent’s email user name when he emailed the Complainant regarding the sale of the Domain Name is shown as “praulent” which is another drug marketed and sold by the Complainant.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
E. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Trade Mark was registered and used before the Domain Name was registered. There are several factors which clearly indicate that the Respondent had knowledge of the Trade Mark. The mark is an invented word without any ordinary meaning. The Respondent also used another one of the Complainant’s trade marks as his user name in his email address whilst communicating with the Complainant’s legal representatives demonstrating knowledge of the Complainant’s business. The Panel is satisfied that the Respondent must have been aware of the Complainant’s mark when it registered the Domain Names and such registration was made in bad faith.
The Domain Name is also being used in bad faith. The Respondent attempted to sell the Domain Name to the Complainant for USD 800 which is clearly in excess of its out of pocket costs. Further, the Respondent has registered a number of domain names which comprise trade marks belonging to third parties. These include <nasonex.xyz> belonging to Schering Corp, <lafco.xyz> belonging to Lafco Enterprises Inc, <oliverpeoples.xyz> belonging to Oliver Peoples, Imc and <basaglar.xyz> belonging to Eli Lilly & Co, showing a pattern of conduct aimed at preventing the Complainant from reflecting the trade mark in a corresponding domain name. This is clearly bad faith use under paragraph 4(b)(i) and (ii) of the Policy.
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 <eylea.xyz> be transferred to the Complainant.
Date: March 3, 2017