WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pharnext v. Wang Bo, Xiang Rong (Shang Hai) Sheng Wu Ke Ji You Xian Gong Si
Case No. D2019-0035
1. The Parties
The Complainant is Pharnext of Issy-Les-Moulineaux, France, represented by Cabinet Lavoix, France.
The Respondent is Wang Bo, Xiang Rong (Shang Hai) Sheng Wu Ke Ji You Xian Gong Si of Taizhou, China, represented by HengDu Law Firm, China.
2. The Domain Name and Registrar
The disputed domain name <pharnex.com> (the “Domain Name”) is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2019. On January 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 8, 2019, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on January 11, 2019, 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 January 14, 2019.
On January 11, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on January 14, 2019. The Respondent requested that Chinese be the language of the proceeding on January 15, 2019.
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 in English and Chinese of the Complaint, and the proceedings commenced on January 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2019. The Response was filed with the Center on January 28, 2019.
The Center appointed Karen Fong as the sole panelist in this matter on February 15, 2019. 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 biopharmaceutical company founded in 2007 which develops novel therapeutics for neurodegenerative diseases. It currently has two products in clinical development, one for the treatment of Charcot-Marie-Tooth disease type 1A and the other for Alzheimer’s disease. The Complainant’s company name and trade mark is PHARNEXT and it uses this trade mark in connection with its pharmaceutical services. It will commence using the trademark PHARNEXT in connection with its pharmaceutical products shortly.
The Complainant filed to register the trade mark under International trade mark registration number 1179329 on June 20, 2013 designating numerous jurisdictions including China in relation to Class 5, 35, 41, 42 and 44 (the “Trade Mark”). Protection of the Trade Mark has so far been granted in the United States, European Union, New Zealand, Japan, Russia Federation and Australia. In China, the provisional refusal of the Complainant’s application regarding the International trade mark registration number 1179329 was successfully appealed and approved for registration in classes 5 and 44.
The Complainant operates a website at “www.pharnext.com”.
The Respondent registered the Domain Name on October 23, 2017. At the time of the filing of the Complaint, it was connected to a website in English and Chinese saying that “PHARNEX is a one-stop service platform for pharmaceutical company. We aimed to provide full life cycle service for pharmaceutical companies but help global pharmaceutical enterprise successfully entering into China and doing business in China” (the “Website”). The Website was not active on or around February 26, 2019. It then was reactivated on or around March 11, 2019.
The Respondent is Wang Bo, Xiang Rong (Shang Hai) Sheng Wu Ke Ji You Xian Gong Si. Xiang Rong (Shang Hai) Sheng Wu Ke Ji You Xian Gong Si is the English translation of the company 享融（上海）生物科技有限公司 which could be translated as Xian Rong (Shanghai) Biotechnology Company. The trade mark PHARNEX is registered in China in Class 36 under Chinese trade mark registration number 24409097 on May 28, 2018 (the “PHARNEX Trade Mark”). The proprietor of the PHARNEX Trade Mark is 台州保隆化工有限公司 or Taizhou Baolong Chemical Co., Ltd has granted a licence to the Respondent to use the PHARNEX trade mark. Wang Bo is the name of the legal representative of both companies. The PHARNEX Trade Mark is used in conjunction with the Chinese brand name 药融圈. PHARNEX is the English version of the brand name 药融圈. The combination of these two names in logo form are subjects of trade mark applications in China filed on April 9, 2018 in classes 37, 41 and 42 (the “Logo”). These trade marks have been used by the Respondent since at least December 2017.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy has been met and the Domain Name should be transferred.
Identical or Confusingly Similar
The Complainant contends that it has established trade mark rights in .
Ignoring the generic “.com” when considering identity and confusing similarity, the Complainant contends that the Domain Name is “quite identical or at least highly similar” in a visual and phonetical point of view to the dominant part of the Trade Mark is which is the word PHARNEXT. The Website being in the pharmaceutical field are for services similar to the goods and services to the Trade Mark and therefore likely to cause confusion, mistake or deception as to the source, origin, sponsorship or approval of services and consumers and others are likely to believe that the Complainant authorises or controls the Respondent or that the Domain Name is associated with or related to the Trade Mark.
Rights or Legitimate Interests
The Complainant contends that the Respondent is not a licensee of the Complainant and has not been authorised to use the Trade Mark. The Respondent is making an unfair commercial use of the Domain Name. There is no plausible explanation for the Respondent’s registration of the Domain Name as the Respondent has no personal attachment to the Domain Name. The Complainant has done searches and found no evidence to show that the Respondent has rights or legitimate interests in the Domain Name as set out in the Policy.
Registered and Use in Bad Faith
The Complainant contends that the Respondent must have had the Trade Mark in mind when it registered the Domain Name on October 23, 2017. On May 10, 2017, there was a press release announcing that the Complainant had entered into a strategic partnership with Tasly, a group ranked amongst China’s top 10 listed pharmaceutical companies. This includes an investment of EUR 20 million by Tasly in the Complainant, the creation of a research and development joint venture between the two companies and a licence agreement for the development and commercialisation by the joint venture company of one of the new products in the Chinese market. The Complainant is also quoted on the Euronext stock exchange. Further in June 2018, one of the products being developed by the Complainant was granted a priority review by the China Food and Drug Administration. The Complainant submits that the Trade Mark has become well-known in the pharmaceutical industry in China and elsewhere in the world before the registration of the Domain Name. Despite the above, the Respondent has registered and is currently using the Domain Name in the pharmaceutical field. As such the Respondent’s registering and using the Domain Name in relation to pharmaceutical services is in bad faith. The Respondent’s registration and use of the Domain Name was with the intent to attract for commercial gain users to its site by creating a likelihood of confusion with the Trade Mark as to source, sponsorship, affiliation or endorsement.
The Respondent denies that the Domain Name should be transferred to the Complainant for the following reasons.
Identical or Confusingly Similar
The Respondent contends that the Complainant does not have the required rights necessary to succeed in the first element of the UDRP. The designation of International Registration No. 1179329 in China has not been recorded on the register (the online record shows that it is still under the process of reviewing the provisional refusal of the Complainant’s application). Further, the list of trade mark applications and registrations submitted in evidence was not substantiated by certificates of registration. In any event, the Domain Name is not identical or confusingly similar to the Trade Mark. The Domain Name is made up of an acronym consisting of two elements – “Phar”, which is an abbreviation of the word “pharmaceutical”, and “Nex”, which stands for “link” and “fusion”. The combination of these two words correspond with the meaning of the Respondent’s Chinese brand name 药融圈. This brand name alludes to the services offered by the Respondent which is to build the pharmaceutical industry eco system, co-creating, sharing, maximising synergies, linkage of millions of enterprises. Further, the prefix of the Trade Mark “Phar” being an abbreviation of the word, “pharmaceutical” means that this is commonly used by companies in the pharmaceutical industry. Examples of these companies in China include <carephar.com>, <shaphar.com>, <wanhe-phar.com>, <gbphar.com> and <biophar.com>. The adoption of the Domain Name has nothing to do with the Respondent wanting to cause confusion with the Complainant. In addition, the Complainant was in error when it relied on the Website to assess confusingly similarity under the first element as set out in section 1.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Rights or Legitimate Interests
The Respondent contends and has provided evidence that it has a licence to use the PHARNEX Trade Mark. The Respondent also has provided evidence that it has been using the Pharnex Trade Mark and the Logo since at least December 2017 in various medical and pharmaceutical summits as well as promotional materials supporting these summits. The Respondent is able to show that its use of the Domain Name comprising an acronym indicates a credible and legitimate intent which does not capitalise on the reputation and goodwill inherent in the Trade Mark. Before receiving notice of the dispute, the Respondent has legally acquired the right to use the PHARNEX Trade Mark, become widely known by the PHARNEX Trade Mark, and has rights or legitimate interests in the Domain Name.
Registered and Use in Bad Faith
The Respondent’s case is that it enjoys the legal right to use the PHARNEX Trade Mark in the course of business. As such it has a legitimate right to register and use the Domain Name. The PHARNEX Trade Mark was created to reflect the services offered by the Respondent, i.e., a pharmaceutical or medicine circle. This is what the Respondent does – to bring together companies offering pharmaceutical related services. Although both parties are in the pharmaceutical industry, they do very different things. The Complainant‘s main field of activity is in pharmaceutical drug development whilst the Respondent helps in the development of pharmaceutical entrepreneurs. It did not have any need to rely on the reputation of the Complainant. The Complainant has failed to provide evidence that the Respondent knew about the Complainant prior to the registration of the Domain Name. The Respondent is not a competitor of the Complainant and its purpose for registering the Domain Name was not to undermine the Complainant‘s business. There was no intent on the part of the Respondent to register the Domain Name to sell, rent or otherwise transfer the Domain Name to the Complainant or one of its competitors for a sum in excess of the costs of the purchase of the Domain Name by the Respondent nor was it registered with the intent to attract for commercial gain users to its site by creating a likelihood of confusion with the Trade Mark as to source, sponsorship, affiliation or endorsement.
6. Discussion and Findings
6.1 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 for the Domain Names is Chinese.
The Complainant submits that the language of the proceeding should be English as the Complainant is a French company and is able to communicate in English but not in Chinese. The Respondent is able to communicate in English since the Website is also provided in English. If the Complainant has to communicate in Chinese, it would give the Respondent an unfair advantage.
The Respondent submits that the language of the proceeding should be Chinese as the Respondent is Chinese, the Registrar is located in China, the registration agreement is in Chinese and the Respondent would have difficulty conducting the defence in English.
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 finds that the Respondent is familiar with the English language as evidenced by the use of English on the Website. The Panel is mindful of the need to ensure the proceeding is conducted in a timely and cost-effective manner. Considering all the circumstances, the Panel therefore finds that the Respondent would not be prejudiced, should the decision be rendered in English. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
(i) It will accept the filings on behalf of the Complainant in English;
(ii) It will accept the filings on behalf of the Respondent in Chinese; and
(iii) It will render this decision in English.
6.2 Substantive Issues
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 trade marks or service marks 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 being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered rights to the Trade Mark. Section 1.1.2 of WIPO Overview 3.0 makes it clear that the global nature of the Domain Name System means that the jurisdiction where the trade mark is valid is not considered relevant for the assessment under the first element. The fact that there may not be a valid registration in China yet is not relevant. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case the Trade Mark is recognisable in the Domain Name except that the Domain Name does not have the last letter “T” in the Trade Mark. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”), which in this case is “.com”. It is viewed as a standard registration requirement (section 1.11 of WIPO Overview 3.0).
The Panel finds that the Domain Name is confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the 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; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
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 section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. 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 Panel notes that the PHARNEX Trade Mark is registered in China in class 36 for financial services on May 28, 2018 and has a filing date of May 31, 2017. Applications for the Logo have been filed in classes 37, 41 and 42 on April 9, 2018. The Respondent has provided evidence that it has a license to use the PHARNEX Trade Mark since May 28, 2018. It has also provided evidence that the PHARNEX mark has been used in connection with its business and services since December 2017.
Whilst the existence of a respondent’s trade mark does not automatically confer rights or legitimate interests on the respondent especially where the overall circumstances demonstrate that such a trade mark was obtained primarily to circumvent the application of the UDRP or otherwise prevent the complainant’s exercise of its rights, there is no evidence here indicating such pretext. The Panel is satisfied that the PHARNEX Trade Mark was registered in good faith and not to circumvent the application of the UDRP and the Respondent has a licence to use the trade mark. The Panel notes that her findings are made in the limited boundaries of the UDRP; any matters outside the scope of the Policy may be handled by the parties in a relevant court of law.
The evidence filed indicates that before the notice of the dispute the Respondent has used the Domain Name and a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
As such even if the Panel has made a finding that the Domain Name is confusingly similar to the Trade Mark, the Panel finds that the Complainant has not established the second element of the Policy.
C. Registered and Used in Bad Faith
In view of the Panel’s findings in relation to the second element under the UDRP, the Panel need not make a finding under the third element. For the sake of completeness, the Panel notes that the Respondent has provided a credible explanation of the creation of and its rights to the PHARNEX Trade Mark which corresponds with the Domain Name. Based on this record, the Panel accepts that the registration of the Domain Name was for the protection of the Respondent’s own brand for use on the Internet. The third element of the Policy has not been established.
For the foregoing reasons, the Complaint is denied.
Date: March 11, 2019