Regeneron Pharmaceuticals, Inc. v. 王俊东(wang jun dong)
Case No. D2019-2569
Historically, Panels have been quick to judge pornographic websites afoul of the UDRP. In their eyes, the mere use of a domain for pornographic material was enough to infer that the Respondent had the intention to tarnish the reputation of the Complainant. However, in a recent case, a Respondent was found not to have been acting in bad faith, despite the domain mapping to a pornographic website. In many jurisdictions, pornography can indeed be a bona fide business activity. However improper use of other trademarks to do so can severely impact someone’s reputation and goodwill. Given the importance of these cases, and the apparent shift in Panels’ reasoning, it is worth investigating this case in closer detail.
In Regeneron Pharmaceuticals, Inc. v. 王俊东(wang jun dong), the Complainant sought transfer of a domain name very similar to its own: <eyelaa.com>. The Complainant was a biotechnology company who owned a trademark for the term EYLEA, and conducted its business at <eylea.com> The Respondent, a Chinese individual who did not respond to proceedings, was using the domain name to operate a pornographic website.
The Complainant argued that because its EYLEA trademark was not a generic or common term, the Respondent must have intentionally registered the confusingly similar domain to attack its trademark. Its use as a pornographic website was demonstrative of the Respondent’s bad faith intentions to tarnish its reputation. The disputed domain name was registered well after the first use of the EYLEA trademark, and therefore the Respondent must have had actual and constructive notice of the Complainant’s trademark rights.
While acknowledging that past UDRP panels have held pornographic content alone to be proof of bad faith, in this instance Panel held it necessary for the Complainant to first prove the Respondent had knowledge of the Complainant’s mark.
Unfortunately for the Complainant, its allegations to this end were quite weak. There was nothing for the panel that would convince it that the Respondent, a Chinese individual, knew about the niche product of an American biotechnology company. Google and Baidu searches for the EYELAA up a range of results ranging from various Japanese products to a character in a popular video game, but nothing to do with the Complainant or its products. For the panel, despite the lack of response, the evidence on file suggested the Respondent registered the domain name without having the Complainant’s trademark in mind, and therefore could not have possibly registered the domain name in bad faith. The Complaint failed on the third element and the Respondent got to keep its domain.
However, such a finding seems to run counter to many previous UDRP decisions. In many instances, the mere use of a domain name for porn which itself had no explicit connotations, yet has been sufficient for panels to find bad faith use and registration. In Six Continents Hotels Inc v. Seweryn Nowak D2003-0022, the panel stated:
“It is commonly understood, under WIPO case law, that, whatever the motivation of respondent, the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the domain name was registered and is being used in bad faith.”
Moreover, the panel found that while people are not prohibited from running pornographic websites they “cannot be allowed to use [a] confusingly similar domain name in connection with such an endeavour.”
However, the UDRP is not a court. It is not bound by precedent. While panels can and frequently do reference prior UDRP decisions, each case is decided on its own merits from the evidence at hand. In Caledonia Motor Group Limited v. Amizon D2001-0860, the Panel noted that in most cases containing pornographic websites, the “bad faith intent of the respondent is pretty clear, and/or the fame of the complainant’s trademark is such that the respondent’s selection of it for a domain name cannot have been coincidental.”
Without doubt, a pornographic website is a strong indicator of bad faith, but in making their decision, a panel must consider the totality of the evidence. In the UDRP, the onus remains on the Complainant to prove that the Respondent has engaged in an intentional act of bad faith against their trademark. It would seem, that despite the added reputational harm of being associated with pornography, Complainants still need to prove that their trademark was being originally attacked.
Nevertheless, in cases concerning pornography there remains some inconsistency as to evidentiary standard required for panels to find in favour of the Complainant. As such, a Complainant’s best bet is to ensure their arguments are robust, and supported by quality evidence that suggests their trademark has been intentionally targeted.