The Complainant is Boehringer Ingelheim Pharma GmbH & Co. KG of Ingelheim, Germany, represented by Nameshield, France.
The Respondent is Wang Lian Feng of Beijing, China. 2. The Domain Names and Registrars
The disputed domain names and are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2018. On March 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 15, 2018, 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 March 28, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On March 29, 2018, the Complainant submitted a 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 in English and in Chinese of the Complaint, and the proceedings commenced on April 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2018.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on May 3, 2018. 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 German family-owned pharmaceutical group of companies, founded in 1885 by Albert Boehringer in Ingelheim am Rhein, and has grown into a global pharmaceutical company.
The sign “Giotrif” is the trademark and trade name for the medication produced by the Complainant, containing the active substance “Afatinib”, used in the treatment of advanced lung cancer. The Complainant commercializes, and has obtained marketing authorizations for this medication under the trade name “Giotrif” in numerous countries in the world, including in China, where it obtained its marketing authorization from the China Food and Drug Administration on February 2, 2017.
The Complainant owns trademark registrations (word marks) for GIOTRIF in a number of jurisdictions around the world (e.g., International registration No. 951419, registered on December 12, 2007), including in China. Furthermore, the Complainant also owns the domain name . The disputed domain names were registered on February 17, 2018. The disputed domain names have not been used in connection with any active websites. 5. Parties’ Contentions A. Complainant
The Complainant essentially contends that the disputed domain names are identical to its trademark for GIOTRIF, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered, and are being used in bad faith.
The Complainant has provided evidence establishing that its GIOTRIF trademarks are used intensively and have developed a substantial reputation and recognition. The Complainant has also provided evidence that the disputed domain names are linked to inactive websites. The Complainant essentially contends that the Respondent has nevertheless maintained the disputed domain names to prevent the Complainant to register its GIOTRIF trademarks as domain names in these extensions. The Complainant contends that such use constitutes use in bad faith.
The Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Language of proceedings
Pursuant to paragraph 11(a) of the Rules, language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine a language of proceeding other than the language of the registration agreement, taking into account the circumstances of the case.
In view of all elements of this case, being, in particular, the Complainant’s request, the lack of comment on the language of the proceeding or substantive response of the Respondent (who had the opportunity to put forward arguments in either English or Chinese), and the fact that Chinese as the language of proceedings could lead to unwarranted delay for the Complainant because of translation of the Complaint into Chinese, the Panel rules that the language of proceedings shall be English. 6.2. Discussion and Findings
The Policy requires the Complainant to prove three elements:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Based on the evidence submitted, the Panel’s findings are as follows: A. Identical or Confusingly Similar
The Panel finds that the Complainant has shown that it has valid rights in the sign “Giotrif” based on its intensive use and registration of the same as a trademark.
Moreover, the disputed domain names are identical to the Complainant’s trademark GIOTRIF, incorporating it in its entirety. The generic Top-Level Domains “.online” and “.site” do not differentiate it from the Complainant’s trademark. Accordingly, the Panel rules that the disputed domain names are identical to the Complainant’s trademark so that the first element required by the Policy is fulfilled. B. Rights or Legitimate Interests
The Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has not granted any license or permission for the Respondent to register the disputed domain names fully incorporating the Complainant’s trademark. Moreover, as stated in Pharmacia & Upjohn Company v. Moreonline,WIPO Case No. D2000-0134, “mere registration does not establish rights or legitimate interests in the disputed domain name”. The Panel considers that no apparent active use is being made of the disputed domain names, and that one of the circumstances envisaged by paragraph 4(c) of the Policy would appear to apply. The Panel notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the requirements of the second element under the Policy. C. Registered and Used in Bad Faith
Given the reputation and fame of the Complainant’s trademark and the prior registration of an almost identical, yet official, domain name by the Complainant (), the registration of the disputed domain names is clearly intended to mislead and divert consumers to the disputed domain names. Even a cursory Internet search would have already made it clear to the Respondent that the Complainant owns a trademark in GIOTRIF and uses it extensively, including in China. The choice of generic Top-Level Domains is, in this case, even likely to increase the likelihood of confusion. It may induce Internet users to believe that there is an association between the disputed domain names and the Complainant, as it suggests that the disputed domain names lead to the official website or online marketplace for this particular medication marketed by the Complainant. In the Panel’s view, this clearly indicates the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain names in bad faith.
As to use of the disputed domain names in bad faith, section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states in this regard: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.” Having regard to all elements of the case at hand, and in particular to the identity between the Complainant’s trademark and the disputed domain names, the distinctiveness and intensive use of the Complainant’s trademark, even in China, and the Respondent’s use of incomplete physical contact details in the WhoIs records for the disputed domain names, the Panel rules that it has been demonstrated that the Respondent has used and is using the disputed domain names in bad faith.
Moreover, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 disputed domain names, and be transferred to the Complainant.
Deanna Wong Wai Man
Sole Panelist
Date: May 14, 2018
Full & Egal Universal Law Academy