Complainant is Boehringer Ingelheim Pharmaceuticals Inc. of Ridgefield, Connecticut, United States of America ("USA"), represented by Nameshield, France.
Respondent is JimmyX of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with EJEE Group Holdings Limited (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 12, 2016. On January 12, 2016, the Center transmitted by email to Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2016, Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on January 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2016. Respondent did not submit any response save for Respondent's email communications of January 25, 27 and 29, 2016. Accordingly, the Center notified the Parties that it will proceed to Panel Appointment process on February 10, 2016.
The Center appointed Yijun Tian as the sole panelist in this matter on February 16, 2016. 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
Complainant, Boehringer Ingelheim Pharmaceuticals Inc, is a company incorporated in Ridgefield, Connecticut, USA. Founded in 1885, Complainant is a leading global research-driven pharmaceutical enterprise and has today about 140 affiliated companies world-wide with roughly 46,000 employees. In 2014 alone, its net sales amounted to about EUR 13.3 billion (Annex 3 to the Complaint).
Complainant has exclusive rights in the ZANTAC marks. Complainant is the exclusive owner of several ZANTAC trademarks registered since December 21, 1982 (USA Trademark registration number 73289054) (Annex 5 to the Complaint).
Respondent is JimmyX of Beijing, China. The disputed domain name was registered on November 23, 2015. Respondent has offered the disputed domain name for sale to Complainant for USD 9,999 via Sedo. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to its trademark ZANTAC, the registration and use of which by Complainant preceded the registration of the disputed domain name.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant requests that the disputed domain name be transferred to it. B. Respondent
Respondent did not reply to Complainant's contentions. Respondent only replied via six emails on January 25, 27, 29 and February 17, 2016 contending on the issue of the language of the proceedings after the commencement of the proceedings.1 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regards to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the ZANTAC marks acquired through registration. The ZANTAC marks have been registered in the USA since 1982, and Complainant is a leading global research-driven pharmaceutical enterprise and has about 140 affiliated companies worldwide.
The disputed domain name comprises the ZANTAC mark in its entirety. The disputed domain name only differs from Complainant's trademarks by the generic Top-Level Domain ("gTLD") suffix ".club" to the ZANTAC marks. This does not eliminate the identity or at least the confusing similarity between Complainant's registered trademarks and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states:
"The applicable top-level suffix in the domain name (e.g., ".com") would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark". (paragraph 1.2).
Thus, the Panel finds that the gTLD suffix ".club" is not sufficient to negate the confusing similarity between the disputed domain name and the ZANTAC marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) 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 Complainant's trademarks.
The overall burden of proof on this element rests with 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 of production shifts to respondent to rebut complainant's contentions. If 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; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has rights in the ZANTAC marks since 1982 which long precede Respondent's registration of the disputed domain name (November 23, 2015).
According to the Complaint, with sales of EUR 133 billion in 2014, Complainant is one of the world's largest multinational pharmaceutical company. It has 140 affiliated companies worldwide and employs 46,000 people.
Moreover, Respondent is not an authorized dealer of ZANTAC branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifts the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent is using the disputed domain name in connection with a pay-per-click website and also proposed to transfer the disputed domain name for USD 9,999 via the website (bottom line of the website; Annex 8 to the Complaint). Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term "zantac" in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the ZANTAC marks or to apply for or use any domain name incorporating the ZANTAC marks.
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name on November 23, 2015, long after the ZANTAC marks became internationally famous. The disputed domain name is identical or confusingly similar to Complainant's ZANTAC marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent offers to sell the disputed domain name for USD 9,999 via the website resolved by the disputed domain name as well as via Sedo.
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on the website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(i) and (iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.
The Panel finds that Complainant has a widespread reputation in the ZANTAC marks with regard to its products. Complainant has registered its ZANTAC marks since 1982. Based on the information provided by Complainant, Complainant is one of world's largest multinational pharmaceutical companies, which has 140 affiliated companies worldwide and employs 46,000 people.
It is not conceivable that Respondent would not have had actual notice of Complainant's trademark rights at the time of the registration of the disputed domain name (in 2015).
Moreover, Respondent has chosen not to respond to Complainant's allegations. Respondent offered to sell the disputed domain name for USD 9,999. According to the panel's decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, "the failure of the Respondent to respond to the Complaint further supports an inference of bad faith" (see also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant's advertised ZANTAC-branded products.
Complainant has adduced evidence to prove that by using the confusingly similar disputed domain name, Respondent has "intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites".
To establish an "intention for commercial gain" for the purpose of this Policy, evidence is required to indicate that it is "more likely than not" that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Given the widespread reputation of the ZANTAC marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. In other words, Respondent has through the use of a confusingly similar disputed domain name created a likelihood of confusion with the ZANTAC marks. Moreover, Respondent did not respond formally to the Complaint. And, as mentioned above, Respondent offers to sell the disputed domain name for USD 9,999 via the website resolved by the disputed domain name as well as via Sedo. The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use a domain name, which is confusingly similar to Complainant's well-known trademarks, intended to ride on the goodwill of Complainant's trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves and the offer to sell the disputed domain name to Complainant are indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 7. Decision
For all 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 Complainant.
Yijun Tian
Sole Panelist
Dated: Februarys 20, 2016
1 The Registrar confirmed that the language of the Registrar Agreement is in English. In response to these communications from the Respondent, the Center informed Respondent that the language of the Registrar Agreement was in English and therefore the language of the proceedings was in English.
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