The Complainant is Boehringer Ingelheim Pharma GmbH & Co. KG of Ingelheim, Germany.
The Respondent is dnsprotect / dnsprotect of China. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with Guangdong JinWanBang Technology Investment Co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 23, 2015. On October 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On October 30, 2015, the Center transmitted an email to the parties in English and Chinese regarding the language of the proceeding. On October 30, 2015, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not submit any comments within the specified due date.
The Center verified that the 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 of the Complaint, and the proceeding commenced on November 6, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 27, 2015.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on December 10, 2015. 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. 4. Factual Background
The Complainant is a family-owned pharmaceutical group of companies dating back to 1885, when it was founded by Albert Boehringer (1861-1939) in Ingelheim am Rhein.
The Complainant has produced registration information for the following international trademarks, inter alia:
1. BOEHRINGER INGELHEIM, international trademark, Registration No. 221544 registered on July 2, 1959, protected in China through International Trademark registration.
2. BOEHRINGER INGELHEIM, International trademark, Registration No. 568844, registered on March 22, 1991, protected in China through International Trademark registration.
The Complainant owns numerous domain names comprising the trademark BOEHRINGER INGELHEIM:
, , , ,
According to the WhoIs data, the Disputed Domain Name was registered by the Respondent on July 28, 2015, and will expire on July 28, 2016. 5. Parties' Contentions A. Complainant
The Complainant requests 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 includes the Complainant's trademark BOEHRINGER INGELHEIM in its entirety. The addition of dashes "-" and of the word "china" is not sufficient to distinguish the Disputed Domain Name from the Complainant's trademark.
The Disputed Domain Name is identical and confusingly similar to the Complainant's BOEHRINGER INGELHEIM trademark.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant states that the Respondent is not affiliated with nor authorized by the Complainant in any way. The Complainant does not have any business relationship with the Respondent. In addition, the Complainant's figurative trademark BOEHRINGER INGELHEIM is integrated on the main page of the website "www." without authorization, in order to create a likelihood of confusion with the Complainant.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
According to the website to which the disputed domain name resolves, the Respondent presents itself as being officially linked with the trademark BOEHRINGER INGELHEIM. Furthermore, the Complainant's figurative trademark BOEHRINGER INGELHEIM is integrated on the main page of the website "www." without authorization, in order to create a likelihood of confusion with the Complainant. Thus, the Complainant contends that the Respondent has registered the disputed domain name with a view to intentionally create a likelihood of confusion with the Complainant's trademarks, corporate name and domain names as to the source, sponsorship, affiliation and/or endorsement on its website, for its own commercial gain. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Language of Proceeding
Paragraph 11(a) of the Rules provides that "[u]nless 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 appliance 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). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") further states: "in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement" (see paragraph 4.3 of WIPO Overview 2.0).
The Registration Agreement is in Chinese. Therefore, the language of the administrative proceeding should generally be Chinese according to paragraph 11(a) of the Rules. However, the Complainant requests the language of the proceeding should be English. For the following reasons, the Panel decides that the language of the proceeding shall be English:
(1) The Panel finds that the Complainant is not in a position to conduct the proceeding in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese.
(2) The Center's communications to the Respondent have used both English and Chinese, and ample opportunity has been given to the Respondent to object to the Complainant's request. The Respondent did not reply to the Center. 7. Discussion and Findings 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 [administrative-dispute-resolution service 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[.]".
The Complainant has established that it is the owner of the BOEHRINGER INGELHEIM trademark.
The Disputed Domain Name incorporates the BOEHRINGER INGELHEIM trademark in its entirety, with the addition of hyphens "-" and an English word "china", and the generic Top-Level Domain (gTLD) ".com". The addition of hyphens, English geographical term "china" and the gTLD ".com" cannot distinguish the Disputed Domain Name from the Complainant's BOEHRINGER INGELHEIM trademark. The only distinctive part of the Disputed Domain Name is "boehringer ingelheim", which is identical to the Complainant's trademark. Furthermore, the addition of geographical term "china" does not mitigate the likelihood of confusion and could, in fact, strengthen Internet user's confusion with the Complainant's business in China.
According to the above, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant's BOEHRINGER INGELHEIM 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 sets out the following several circumstances "[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent's] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]:
(i) before any notice to [the respondent] of the dispute, [the respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a 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 consensus view of UDRP panels on the rights or legitimate interests of a reseller or distributor under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.3 of the WIPO Overview 2.0, whereby: "[n]ormally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. […]." (See also, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; National Association of Realtors v. John Fothergill,WIPO Case No. D2010-1284).
The Complainant has established that it is the owner of the BOEHRINGER INGELHEIM trademark and confirmed that it has no connection or affiliation with the Respondent. The Complainant also states that no authorization was granted to the Respondent to use the Complainant's trademark in the Disputed Domain Name or otherwise.
Therefore, 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. As such, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.
The Respondent did not submit any allegation or evidence indicating any rights or legitimate interests as demonstrated in paragraph 4(c) of the Policy. The Respondent did not allege nor provide evidence to establish that it is a legally authorized reseller of the Complainant. The Respondent does not accurately and prominently disclose its relationship with the Complainant. Therefore, the Respondent cannot claim that it, as a reseller of the Complainant's products, has rights or legitimate interests in the Disputed Domain Name.
According to the record in the WhoIs database, there is no evidence showing that the Disputed Domain Name has any connection with the Respondent's name or the Respondent is commonly known by the Disputed Domain Name.
Based on the above, the Panel concludes that the condition of paragraph 4(a)(ii) of the Policy has been satisfied. 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 [administrative-dispute-resolution service providers], 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 explicitly states, in relevant part, that "the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] web site or location or of a product or service on [the respondent's] web site or location".
The Complainant's BOEHRINGER INGELHEIM trademark has been registered internationally, and protected in China through International Trademark registration. The Respondent chose the BOEHRINGER INGELHEIM trademark as the only distinctive part of the Disputed Domain Name. No allegation or evidence suggests that the Respondent selected "boehringer ingelheim" as used in the Disputed Domain Name for any reason other than the reputation of the trademark. The screenshot of the website the Disputed Domain Name previously resolved to shows that the Respondent is aware of the Complainant's trademark, as the figurative trademark BOEHRINGER INGELHEIM is integrated on the top of the main page. Such intentional registration shows the bad faith of the Respondent. Thus, the Panel concludes that the Disputed Domain Name was registered in bad faith.
Moreover, the Respondent uses the BOEHRINGER INGELHEIM trademark on the website to which the Disputed Domain Name previously resolved. The screenshot of the website indicates that the website sells pharmaceutical products. According to the evidence submitted by the Complainant, the website to which the Disputed Domain Name previously resolved has a "Company Profile" section with the Complainant's company information. On the top left-hand side of the home page of the website, the Respondent uses the figurative BOEHRINGER INGELHEIM trademark. These features make the website under the Disputed Domain Name appear to be official websites of the Complainant or sponsored or endorsed by the Complainant.
The condition of paragraph 4(a)(iii) of the Policy has been fulfilled. 8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
Peter J. Dernbach
Sole Panelist
Date: December 24, 2015
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