WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pharming Group N.V. v. Hu Zhe, Bei Jing Rui Cheng Hai Hui Jian Kang Ke Ji You Xian Gong Si

Case No. D2018-2499

1. The Parties

The Complainant is Pharming Group N.V. of Leiden, Netherlands, represented by Arnold & Siedsma B.V., Netherlands.

The Respondent is Hu Zhe, Bei Jing Rui Cheng Hai Hui Jian Kang Ke Ji You Xian Gong Si of Beijing, China, represented by Beijing Beihui Law Firm, China.

2. The Domain Name and Registrar

The disputed domain name <cc-pharming.com> (the “Disputed 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 November 1, 2018. On November 2, 2018, Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 6, 2018, 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 the same day, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center also sent a notification that the Complaint was administratively deficient to the Complainant on the same day. The Complainant filed an amended Complaint on November 9, 2018.

On November 6, 2018, 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 November 9, 2018. The Respondent requested that Chinese be the language of the proceeding on November 21, 2018.

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 November 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2018 and further extended to December 8, 2018 as requested by the Respondent. The Response was filed with the Center on December 7, 2018. The Respondent also sent several email communications on November 6, 2018, November 10, 2018, November, 19, 2018, and December 8, 2018.

The Center appointed Peter J. Dernbach, Willem J. H. Leppink and Dr. Hong Xue as panelists in this matter on January 4, 2019. The Panel finds that it was properly constituted. Each member of 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, founded in Netherlands in 1988, is a bio-pharmaceutical company dedicated to developing innovative products for the treatment of unmet medical needs. The Complainant is a listed company on the EURONEXT. The Complainant is the owner of “www.pharming.com” website, which provides information of its research and development products and services.

The Complainant owns European Union Trademark Registration No. 001051275 for the PHARMING trademark for use in connection with pharmaceutical and medical materials and services (registered July 14, 2007 and covering goods and services in Classes 5, 10, and 42).

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

The Respondent registered the Disputed Domain Name on December 5, 2017. The Disputed Domain Name resolves to the Respondent’s website, which provides information of its plant molecular medicine technology research and development products and services.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the Disputed Domain Name be transferred to the Complainant based on the following grounds:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Disputed Domain Name incorporates the Complainant’s PHARMING trademark in its entirety, and the additional term of “cc-“ added to the Disputed Domain Name does not reduce the similarity between the Disputed Domain Name and the Complainant’s trademark. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s PHARMING trademark.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant asserts that it has used “Pharming” as its entity name since 1988 and registered the PHARMING trademark in 2000, while the Respondent was established and registered the Disputed Domain Name in late 2017. In addition, there is no relation between the Respondent’s Chinses name “Beijing Ruicheng Haihui” and the Disputed Domain name. Furthermore, based on the Complainant’s searches, it appears that the Respondent does not own any trademark that contains the “cc-pharming” element. Thus, the Respondent does not have any prior rights or legitimate interests in the Disputed Domain Name.

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

The Complainant is well-known by its name and the PHARMING trademark throughout the world. The Complainant also has a strategic alliance with the China State Institute of Pharmaceutical Industry. As the Respondent is a China company which is also specialized in bio-pharmaceutical industry, it is likely that the Respondent is familiar with the Complainant and its reputation.

Given that the Respondent’s Chinese name has nothing to do with the Disputed Domain Name, it is clear that the Respondent intentionally attempt to attract consumers for commercial gain. The Respondent is taking advantage of the reputation of the Complainant and creating a likelihood of confusion with the Complainant’s name and trademark.

Therefore, the Disputed Domain Name is registered and is being used in bad faith.

B. Respondent

The Respondent’s contentions may be summarized as follows:

(i) The Disputed Domain Name is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Respondent contends that the Disputed Domain Name can be separated into two parts, “cc” and “pharming”. The term “cc” is the combination of the first two letters in the words for “China” and “cao” (the Chinese phonetic equivalent of “grass”). And the term “pharming” is a generic word that means “the practice of rearing or growing genetically-modified animals or plants in order to develop pharmaceutical products.” Therefore, the Disputed Domain Name is not identical or confusingly similar to the Complainant’s PHARMING trademark.

(ii) The Respondent has rights or legitimate interests in respect of the Disputed Domain Name.

The Respondent states that before receiving any notification of the dispute, it has used the Disputed Domain Name in connection with bona fide offerings of goods and services. The Respondent also states that it is commonly known by the Disputed Domain Name. The Respondent provided evidence to this effect, including the following:

(1) The Respondent used the Disputed Domain Name for email communications with internal and external parties.

(2) The Respondent operates a website under the Disputed Domain Name providing various bio-pharmaceutical products and services.

(3) The Respondent uses “CC-Pharming Ltd.” as its English company name to engage business with foreign entities.

(4) The Respondent and its representative, Yueju Wang, has been reported by major social media around the world and is a legitimate expert and entrepreneur in the bio-pharmaceutical field.

(iii) The Disputed Domain Name has not been registered and is not being used in bad faith.

The Respondent contends that the term “pharming” is a generic word which means “the practice of rearing or growing genetically-modified animals or plants in order to develop pharmaceutical products.” As the Respondent is a company engaging in bio-pharmaceutical industry targeting market not only China but also markets abroad, it is reasonable to register the Disputed Domain Name to operate business. The Respondent further states that the Complainant’s PHARMING trademark is not a well-known trademark, and that the Respondent was not aware of it before receiving the notice of the dispute.

The Respondent provides evidence to show that its representative, Yueju Wang, has extensive experience in the field of plant biotechnology. He received numerous awards for his research and has applied for over 20 patents in connection with his work. As the Respondent has already built a reputation around the world, it is unnecessary to take advantage of the Complainant’s reputation. The Respondent has never approached to the Complainant for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name. The only reason for the Respondent to register the Disputed Domain Name is to operate its own business.

6. Discussions and Findings

6.1 Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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 proceeding”.

The Rules allow the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004) (See section 4.5 of WIPO Overview 3.0).

The Registration Agreement for the Disputed Domain Name is in Chinese. The Complainant requests the language of the proceeding to be English. The Respondent requests the language of the proceeding be Chinese. Given the following factors, the Panel decides that the language of the proceeding shall be English.

(1) The website to which the Disputed Domain Name resolves contain English language content, which suggests that the website is designed to attract Internet users from around the world rather than only Chinese users (Dolce & Gabbana S.r.l. v. Shuangzhi Lee, WIPO Case No. D2013-1103).

(2) The Center transmitted an email in English and Chinese to the Parties on November 6, 2018. The Respondent replied the email in English on November 10, 2018.

(3) The Respondent has provided materials showing that it is engaged in business collaborations using an Ltd. designation with iBio Inc. in the United States of America (“United States”).

(4) The Complainant is not in a position to conduct this proceeding in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese.

Given these facts, the Panel finds that it is more likely than not that the Respondent has sufficient familiarity with English. And in order to avoid any due delay and additional expense, the Panel accepts the Respondent's materials in Chinese. In consideration of the above circumstances and in the interest of fairness to both Parties, the Panel decides, under paragraph 11 of the Rules, that English shall be the language of the proceeding in this case.

6.2 Substantive Issues

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”

Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it” (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087).

The Complainant owns rights in the PHARMING trademark. The Disputed Domain Name incorporates the PHARMING mark in its entirety, with the combination of the term “cc” with a hyphen “- ”. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (section 1.8 of WIPO Overview 3.0). Therefore, the additional term does not avoid the confusing similarity between the Disputed Domain Name and the Complainant’s PHARMING trademark.

The Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s PHARMING trademark. The condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the respondent has rights or legitimate interests in the disputed domain name:

(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;

(ii) the fact that respondent has commonly been known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The overall burden of proof on this element rests with the complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; section 2.1 of WIPO Overview 3.0 ).

The Complainant has established that it is the owner of the PHARMING trademark and confirmed that it has no connection or affiliation with the Respondent. The Complainant also states that it is not aware of any trademarks in which the Respondent may have rights that are identical or similar to the Disputed Domain Name.

The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production shifts to the Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the Disputed Domain Name.

Based on the evidence on the record, the Panel is satisfied that the Respondent has made prior use of the Disputed Domain Name in connection with a bona fide offering of goods or services.

First, the Respondent has submitted evidence including the entries in online dictionaries showing that the term “pharming” is a term of art meaning “the practice of rearing or growing genetically-modified animals or plants in order to develop pharmaceutical products.” It is persuasive that the term “pharming” is a genetic term in the biopharmaceutical industry.

In addition, the Disputed Domain Name resolves to the Respondent’s website, which provides bio-pharmaceutical products and services. Based on the evidence provide by both Parties, the Respondent has a business relationship with iBio Inc., which is a biopharmaceutical company in the United States. The following evidence submitted by the Respondent also show some effort to engage in business under the name “CC-Pharming Ltd.” prior to notice of this dispute and it appears that a number of transactions occurred:

- Form of Archival Filing and Registration of Foreign Trade Business Operators signed by the China government (dated November 13, 2017)

- Recordation Receipt for the Formation of a Foreign-Funded Enterprise signed by the China government (dated July 24, 2018)

- A joint development agreement and an invoice between the Respondent and iBio, Inc. (dated August 8, 2018 and August 9, 2018)

- Registration Certificate of Technology Import Contract signed by the China government (dated August 8, 2018)

- A contract between the Respondent and GE Medical Systems Trade and Development (Shanghai) Co. Ltd.

Furthermore, the following articles and news reports provided by the Respondent also show that the Respondent has used the name “CC-Pharming Ltd.” to operate business in bio-pharmaceutical field:

- The website of the “Center for China and Globalization (CCG)” described the representative of the Respondent as a “founder of CC-Pharming Ltd.”, and stated that he “left his tenured faculty position in the U.S. to create CC-Pharming in Beijing, applying plant transient expression technology to produce biological pharmaceuticals”.

- The news article published on “China Daily” on October 5, 2018 reported that “IBio and CC-Pharming made the decision to work together with a goal of making the drug more affordable”.

Based on the evidence above, it appears that the Respondent is using the Disputed Domain Name for the offering of goods and services. The Respondent has been using the “CC-Pharming Ltd.” trade name and is using the Disputed Domain Name corresponding to its name to offer its services in the bio-pharmaceutical field. The Respondent’s business appears to be legitimate in the sense that it actually offers the goods and services promoted.

In these circumstances, the Panel finds that the Complainant has not established paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [provider], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.”

Paragraph 4(b) of the Policy lists four illustrative circumstances that shall each be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

(i) circumstances indicating that a respondent has registered or has acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

In analyzing the third element, the Panel looks to the understanding of the Respondent at the time of registering the Disputed Domain Name and its subsequent use.

The Complainant has submitted evidence showing that its right in the PHARMING trademark since 2000. The Complainant also claims that it is well-known by its name and PHARMING trademark, so that the Respondent must have known of its trademark when registering the Disputed Domain Name in 2017.

As mentioned in the second element, the Respondent has provided various evidence showing that it is engaged in the provision of goods and services in the bio-pharmaceutical industry. Considering these factors and the entirety of the evidence presented to the Panel, the Panel finds that it is unlikely that the Respondent is using the Disputed Domain Name in bad faith. As a result, the Panel finds that the Complainant has not established paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

Peter J. Dernbach
Presiding Panelist

Willem J. H. Leppink
Panelist

Dr. Hong Xue
Panelist
Date: January 18, 2019