The Complainant is Boehringer Ingelheim International GmBH of Ingelheim, Germany, represented by Nameshield, France.
The Respondent is 赵睿 of Rizhao, Shandong, China. 2. The Domain Name and Registrar
The disputed domain name (the“Domain Name”) is registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2017. On January 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 18, 2017, 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 January 30, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On January 30, 2017, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in Chinese and English, and the proceedings commenced on February 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 27, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2017.
The Center appointed Karen Fong as the sole panelist in this matter on March 9, 2017. 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 with roots going back to 1885, when it was founded by Albert Boehringer in Ingelheim am Rhein. Today it has about 140 affiliated companies world wide with about 46,000 employees. The net sales in 2013 amounted to about EUR 14.1 billion.
The Complainant owns numerous trade marks for BOEHRINGER INGELHEIM (the “Trade Mark”) and BOEHRINGER, the earliest of which dates back to 1959 (i.e., international registration no. 221544 for BOEHRINGER-INGELHEIM, registered on July 2, 1959). It also has an extensive domain name portfolio including the Trade Mark such as , , , , and .
The Complainant registered the BOEHRINGER trade mark at the Trade Mark Clearing House since April 17, 2014.
The Respondent registered the Domain Name on November 4, 2016. On December 22, 2016, a cease‑and‑desist letter was sent to the Respondent who failed to respond. The Domain Name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith. B. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the Registration Agreement is Chinese.
The Complainant submits in paragraph 10 of the Complaint as well as in its communication to the Center on January 30, 2017, that the language of the proceeding should be English. The Complainant contends that the Domain Name is identical to the Trade Mark; its international business is operated primarily in English, and it is not able to communicate in Chinese; the Domain Name is in Latin characters as the English language rather than Chinese; if the documents have to be submitted in Chinese, the proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that in any case all of the communications from the Center to the Parties were transmitted in both Chinese and English. The Respondent chose not to respond to the Complaint. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. C. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights to the Trade Mark.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine whether the trade mark would generally be recognizable within the domain name. In this case the Domain Name is identical to the Trade Mark. It is accepted that the inclusion of the generic Top-Level Domain “.vip” shall be disregarded for the purpose of comparison under the first element.
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. The Complainant has established this element of the case. D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that there is no relationship between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain names incorporating the Trade Mark. The Domain Name is not a name of the Respondent. The Domain Name is not being used in connection with an active website or otherwise.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. E. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Trade Mark was registered and used before the Domain Name was registered. There are several factors which clearly indicate that the Respondent had knowledge of the Trade Mark. The mark is made up of the founder’s surname and the geographical name of the original place of business. This business is now a billion-Euro business. The Panel is satisfied that the Respondent must have been aware of the Complainant’s mark when it registered the Domain Name and such registration was made in bad faith.
Although the Domain Name is not connected to an active website, it does not prevent a finding of bad faith. As stated in paragraph 3.2 of the WIPO Overview 2.0, the apparent lack of active use of the domain name without any active attempt to sell or to contact the trade mark owner does not prevent a finding of bad faith. The Panel has to examine the circumstances of the case to determine whether the respondent is acting in bad faith. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.
In addition to the circumstances of registration referred to above, the following facts indicate that the Domain Name is being used in bad faith – the Complainant has a well known trade mark, the Respondent failed to file a response, the Respondent appears not to have given complete contact details when it registered the Domain Name. The Center’s attempt to communicate by fax to the number in the WhoIs failed. Considering the circumstances, particularly the lack of any link between the Complainant and the Respondent, the Panel considers that the Respondent’s passive holding of the Domain Name is further evidence of the Respondent’s bad faith.
For the above-cited reasons, the Panel finds that the Complainant has established the third element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, , be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: March 20, 2017
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