The Complainant is Regeneron Pharmaceuticals, Inc., United States of America (“United States”), represented by Ohlandt, Greeley, Ruggiero & Perle, LLP, United States of America.
The Respondent is 王俊东(wang jun dong), China.
The disputed domain name <eyelaa.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2019. On October 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 25, 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 in English on October 28, 2019.
On October 25, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on October 25, 2019. The Respondent did not comment on the language of the proceeding.
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 October 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2019.
The Center appointed Rachel Tan as the sole panelist in this matter on November 29, 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.
The Complainant is a biotechnology company founded in 1988. The Complainant holds a number of registrations for the EYLEA trade mark, including United States Registration No. 4088223, registered on January 17, 2012 in class 5; United States Registration No. 4100104, registered on February 14, 2012 in class 5, and United States Registration No. 5524177, registered on July 24, 2018 in class 5.
The Complainant also owns domain names incorporating the EYLEA trade mark, including <eylea.com>, registered on January 23, 2010 and <eylea.us>, which have been used to promote Complainant’s EYLEA product since 2012.
The Respondent is 王俊东 (wang jun dong).
The disputed domain name was registered on August 19, 2019 and currently resolves to a pornographic website.
The Complainant contends that the disputed domain name <eyelaa.com> is confusingly similar to its EYLEA trade mark. The insertion of the letter “e” after “ey” and the replacement of the letter “e” with “a” does not eliminate the confusion between the disputed domain name and the Complainant’s EYLEA trade mark. Furthermore, the insertion of the letter “e” after “ey” forms “eye”, a word which is closely connected to the Complainant’s ophthalmic pharmaceutical products bearing the EYLEA trade mark.
The Complainant further contends that its use of the EYLEA trade mark far predates the registration of the disputed domain name. 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 a variation of Complainant’s EYLEA trade mark. Further, the Respondent is not commonly known by the disputed domain name. In addition, the Respondent resolves the disputed domain name to a pornographic website, which cannot be considered use in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. The Respondent’s use of the disputed domain name constitutes tarnishment of the Complainant’s EYLEA trade mark.
The Complainant finally contends that its EYLEA trade mark is a coined word. The Respondent intentionally registered a domain name which is confusingly similar to the Complainant’s EYLEA trade mark and includes the word “eye” to deliberately confuse consumers searching for Complainant’s EYLEA ophthalmic pharmaceutical product. This indicates the Respondent’s awareness of the Complainant and its EYLEA trade mark. It is unlikely that the Respondent was unaware of nearly eight years of the Complainant’s prior use of EYLEA mark in commerce, as well as the registration of the EYLEA mark more than seven years prior to the Respondent’s registration of the disputed domain name. Furthermore, the Respondent is attempting to profit from the disputed domain name and the Complainant’s EYLEA trade mark which indicates the bad faith use.
The Respondent did not reply to the Complainant’s contentions.
The Panel must first address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regarded to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.
In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center proceeded to issue its case-related communication to the Parties in both English and Chinese. The Center decided to accept the Complaint as filed in English, accept a Response in either English or Chinese, and appoint a Panel familiar with both languages.
The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below:
(a) The Respondent’s choice of Latin characters for the disputed domain names indicates some fluency with the English language;
(b) Even if the Respondent does not possess a sufficient command of English to understand the complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request; and
(c) The Respondent has failed to reply the Complainant’s contentions. The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.
The Complainant owns registrations for the EYLEA trade mark, including United States Registration No. 4088223, registered on January 17, 2012, United States Registration No. 4100104, registered on February 14, 2012, and the United States Registration No. 5524177, registered on July 24, 2018. These registrations cover “pharmaceutical preparations, namely, ophthalmic; pharmaceutical preparations for the treatment of ophthalmic diseases and conditions in class 5” and predate the registration of the disputed domain name by some time.
UDRP panels typically apply a “low threshold” test for confusing similarity under the first element of a UDRP complaint, proceeding to the merits of the case under the other elements of the Policy if there is “sufficient similarity” between the disputed domain name and the relevant trade mark. See, e.g., Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647. This is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression.
Based on a side by side comparison of the Complainant’s EYLEA trade mark and the disputed domain name <eyelaa.com>, the Panel notes that the two middle letters “L” and “E” are reversed in order and an additional letter “A” appears at the end of the disputed domain name. Despite these differences, there is adequate UDRP jurisprudence which establishes that the inversion and addition of letters does not automatically eliminate the similarity between the disputed domain name and the Complainant’s trade mark. All things considered, the Panel is of the view that there exists just enough visual and phonetic similarity to give the Complainant standing to bring the Complaint.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s EYLEA trade mark. Thus, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
The Complainant alleges that the Respondent does not possess legitimate rights or interests as it is not known or in any way related to the disputed domain name. The Complainant accepts that the Respondent is using the disputed domain name to commercially derive revenue by linking it to a pornographic website, but such offering cannot be considered bona fide, legitimate or fair use of the disputed domain name.
The Panel is of the view that whether or not the Respondent’s offering is bona fide rests heavily on the similar contentions made under the third element that the disputed domain name “has been registered and is being used in bad faith”. Therefore, the Panel suspends judgment on the second element to deal with the allegations of bad faith.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith because it resolves to a website hosting pornographic material in an attempt to unlawfully profit within the meaning of paragraph 4(b) of the Policy. The basis for this claim is that the Respondent purposely chose a confusingly similar domain name with the inclusion of “eye” to refer to the Complainant’s business which shows awareness of the Complainant’s EYLEA trade mark. Moreover, as the disputed domain name was registered well after the Complainant’s first use and registration of the EYLEA trade mark, the Respondent had actual and constructive notice of the Complainant’s rights.
While numerous UDRP panels deciding cases under the Policy have held that pornographic content on a respondent’s website may constitute a significant indicator of bad faith under those case circumstances, it should also be kept in mind that providing adult content per se may not be illegitimate. For this allegation to succeed, the Complainant would have to demonstrate that the Respondent had the Complainant or its trade mark in mind when selecting the disputed domain name for this purpose. See The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743.
The Respondent unhelpfully did not rebut the Complainant’s contentions. The failure to do so in this case does not necessarily lead to the Panel to draw an adverse inference as to the Respondent’s motives. It is incumbent on the Complainant to prove his case and the contentions put forward are unfortunately in the Panel’s view not wholly persuasive on the record before it.
The Complainant is a manufacturer of a specialist drug used to treat eye diseases. The Respondent is apparently based in China. The Panel accepts the Complainant has established rights in the EYLEA trade mark and recognises the global reach of the Internet. The Panel has also carefully considered the assertion that the Respondent deliberately chose to switch the letters “E” and “Y” to form the word “eye” in direct reference to the Complainant’s business. Nevertheless, the Panel remains unconvinced that the facts and evidence submitted lead to the conclusion that the Respondent had actual or constructive knowledge of the Complainant or its trade mark, or that the Respondent’s activities were directed at the Complainant’s EYLEA trade mark. Although the Complainant is in the eye treatment industry, one cannot discount the fact that “eye” is relevant to other industries and the Respondent may have found the disputed domain name attractive for this reason. Moreover, while the disputed domain name is not descriptive, one does not necessarily infer that its creation was an obvious play on the Complainant’s trade mark specifically chosen to target the Complainant’s customers.
Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. See section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition. A search using the keyword “eyelaa” on the Google search engine brings up a number of websites including many Instagram accounts and even some relating a character from the World of Warcraft role playing game The same search using the Baidu search engine results in multiple entries about a Japanese physicochemical water flow extractor branded EYELAA, a name identical to the disputed domain name. The search results show that other parties have adopted the “eyelaa” name for use in different industries.
On the balance of probabilities, it cannot be discounted that the Respondent’s choice of the domain name could have been made randomly or at least without having the Complainant’s trade mark in mind.
Therefore, the Panel finds that the Complainant has failed to prove its case.
For the foregoing reasons, the Complaint is denied.
Date: December 31, 2019
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