WIPO, Arbitration and Mediation Centre, March 11, 2019, No. D2019-0035, Pharnext versus Wang Bo, Xiang Rong (Shanghai) Sheng Wu Ke Ji You Xian Gong Si
On numerous occasions, we have noticed that even those complainants who are represented in UDRP proceedings, could have been better informed about the nature and extent of the rights on which the respondent may rely. Detailed research is an essential prerequisite to filing a complaint, otherwise, the success of the complaint is jeopardised.
On January 7, 2019, the French company Pharnext, whose main activity is in the biopharmaceutical industry, filed a UDRP complaint seeking the transfer of the name <pharnex.com>, which had been registered by a Chinese company.
The complainant contended that it had trademark rights in PHARNEXT through ownership of its “PHARNEXT” logo protected by an international trademark since 2013 and used on its website located at www.pharnext.com.
The respondent had registered the domain name <pharnex.com> in October 2017. At the time the complaint was submitted, the disputed name connected to a website in both English and Chinese indicating that PHARNEX is a platform to help medical companies set up operations in China.
The complainant claimed that the respondent must have had the “PHARNEXT” trademark in mind when registering the domain name, because in May 2017, its partnership with Tasly, one of the most recognised pharmaceutical companies in China, had been announced. The complainant also said there is no plausible explanation for the Respondent’s registration of the Domain Name. It also claimed to have done searches which revealed no evidence that the respondent had any right or legitimate interest in the name.
However, the respondent, Xian Rong (Shanghai), firstly, proved that it had a licence on the “PHARNEXT” trademark for financial services, and secondly pointed to its active use of the trademark since December 2017. Although the ownership of a trademark does not automatically confer a legitimate interest or rights on the respondent, the complainant bears the burden of proof throughout the complaint.
In the present case, the expert was “convinced that the PHARNEXT trademark was registered in good faith”. She further noted that the domain name was used, before the filing of the complaint, in connection with a genuine offer of goods and services. Hence, though the domain name was confusingly similar to the complainant’s trademark, the complaint could not be accepted.
The expert stressed 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.. Quite simply, the complainant had not proved that the disputed domain name had been registered and used in bad faith.
This decision once again highlights that it is essential to carry out research on all aspects of the proposed complaint; including the respondent and the sign from which the disputed domain name has been derived. For example, researching the “PHARNEX” sign on the Chinese databases would have made the complainant aware of the existence of the word mark “PHARNEX” on which the respondent relied. This would have alerted the complainant to a potential weakness in its case and enabled it to consider alternative strategies. It is essential to think of every possible defense a respondent may raise and be prepared to counter any such defense.
This brief was published in the July-August 2019 issue of the French magazine “Propriété industrielle”.