WIPO: Be aware of generic terms in domain name dispute resolution

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of a domain name because the Complainant failed to demonstrate that the Respondent lacked rights or legitimate interests in the disputed domain name.

Background

The Complainant was Pharming Group N.V. of Leiden, Netherlands, a company founded in 1988.  The Complainant was a bio-pharmaceutical company dedicated to developing innovative products for the treatment of unmet medical needs with a website at “www.pharming.com”.  It owned a European trade mark PHARMING for use in connection with pharmaceutical and medical materials and services.

The Respondent, who replied to the Complainant’s contentions, was Hu Zhe, Bei Jing Rui Cheng Hai Hui Jian Kang Ke Ji You Xian Gong Si of Beijing, China.  The Respondent was a company specialized in plant molecular medicine technology research and product development.

The disputed Domain Name was <cc-pharming.com>.  At the time of the Panel’s decision, the Domain Name was resolving to the Respondent’s website which provided information on its plant molecular medicine technology research and development products and services.

Decision: Legitimate interests & bad faith

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements under paragraph 4(a):

i) The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

As far as the first limb was concerned, the Complainant contended that the Domain Name was identical or confusingly similar to its PHARMING trade mark, registered in 2007.  The Panel agreed as the Domain Name used the PHARMING trade mark in its entirety, simply adding the term “cc” with a hyphen “-”, and thus was confusingly similar to the Complainant’s trade mark.

Therefore, the Complainant satisfied the first element set out in paragraph 4(a)(i) of the UDRP.

and, ii) The respondent has no rights or legitimate interests in respect of the domain name

As far as the second requirement under the UDRP is concerned, a complainant is required to establish a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name.

In this case, the Complainant argued that it was the owner of the PHARMING trade mark and that it was not aware of any trade mark owned by the Respondent that was identical or similar to the disputed Domain Name.

The Panel was satisfied with the prima facie case established by the Complainant and therefore the burden of proof shifted to the Respondent, who had to put forward arguments and evidence to demonstrate rights or legitimate interests in the Domain Name.

The Respondent asserted that the term “pharming” was a generic term used in the bio-pharmaceutical industry and that it provided bio-pharmaceutical products and services on its website.  In addition, the Respondent had a business relationship with a bio-pharmaceutical company.  The Respondent submitted evidence showing its efforts to engage in business under the name “CC-Pharming Ltd”. Amongst the evidence, there was a registration certificate of technology import contract and a joint development agreement between the Respondent and the bio-pharmaceutical company mentioned above.  Finally, the Respondent demonstrated that it had used the name “CC-Pharming Ltd” to operate in the bio-pharmaceutical field by providing news reports from China Daily.

The Panel accepted that the Respondent had legitimate interests in the Domain Name, having used it for a bona fide offering of goods and services before the dispute arose. The second requirement set out in paragraph 4(a) (ii) of the UDRP was therefore not satisfied by the Complainant.  This was enough for the Panel to deny the case, but nevertheless the Panel went on to consider bad faith.

and, iii) The domain name has been registered and is being used in bad faith.

Under the third requirement, the Complainant claimed that the Respondent had registered and used the Disputed Domain Name in bad faith.  The Complainant argued that it was likely that the Respondent was aware of the Complainant’s trade mark when registering the disputed Domain Name in 2017 because the Complainant’s trade mark was well-known in the bio-pharmaceutical industry. Accordingly, the Complainant argued that the Respondent intentionally attempted to take advantage of the Complainant’s reputation by creating a likelihood of confusion with the PHARMING trade mark.

The Respondent claimed that the term “pharming” was a generic word in the pharmaceutical industry. The Responded argued that the Complainant’s trade mark PHARMING was not well-known and that it was not aware of it before receiving notice of the dispute.  The Respondent provided evidence showing that its representative had significant experience in bio-technology and had received many awards for his research, and so the Respondent had already built a considerable reputation world-wide.  It was therefore unnecessary for the Respondent to take advantage of the Complainant’s reputation.

As a result, the Panel found that the Complainant had not satisfied the third element under the UDRP as set forth by paragraph 4(a)(iii) as it had failed to show that the Respondent had registered and used the Domain Name in bad faith.  The Complaint was therefore denied.

Comment

This decision highlights the fact that having a trade mark by itself does not necessarily mean that the trade mark holder will succeed in obtaining the transfer of a domain name, even if it identically reproduces such trade mark. Complainants must demonstrate as a minimum that respondents had awareness of their rights in order to be able to prove bad faith registration, and this will be more difficult where the domain name in question has a generic meaning in the business field of the respondent.

The decision is available here.

 

Authored by Jane Seager and Katia Beider

Contacts
Jane Seager
Partner
Paris

 

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