The Complainant is Boehringer Ingelheim Pharma GmbH & Co. KG, Germany, represented by Nameshield, France.
The Respondent is 黄健 (Huang Jian), China. 2. The Domain Names and Registrar
The disputed domain names The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2019. On October 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 31, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 1, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on November 4, 2019. On November 1, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on November 4, 2019. The Respondent did not comment on the language of the proceeding. The Center verified that the Complaint together with the amended 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 English and Chinese, and the proceedings commenced on November 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2019. The Center appointed Joseph Simone as the sole panelist in this matter on December 18, 2019. 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, Boehringer Ingelheim Pharma GmbH & Co. KG, is a German pharmaceutical enterprise founded in 1885 by Albert Boehringer in Ingelheim am Rhein. The Complainant owns a large number of trademarks for “BOEHRINGER-INGELHEIM” and “BOEHRINGER INGELHEIM” worldwide, including an international trademark registration for “BOEHRINGER-INGELHEIM”, No. 221544, registered on July 2, 1959, covering international classes 1, 2, 3, 4, 5, 6, 16, 17, 19, 29, 30 and 32. Further, the Complainant operates and advertises its business through the website “ www.boehringer-ingelheim.com”. The disputed domains The Complainant contends that the disputed domain names are confusingly similar to its trademark BOEHRINGER-INGELHEIM and the associated domain names, including “www.boehringer-ingelheim.com”. Specifically, the Complainant asserts that the deletion of the letter “e” in Second, the Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names for the following reasons. The Respondent is neither affiliated with nor authorized by the Complainant, and has never been granted a license to use Complainant’s trademark or register the disputed domain names. Further, as the disputed domain names are inactive, the Respondent did not make and does not plan to make use of the disputed domain names, indicating a lack of legitimate interest therein. Finally, the Complainant asserts that the disputed domain names were registered and are being used in bad faith. Given the distinctiveness and reputation of Complainant’s trademark, it is unlikely that the Respondent registered the disputed domain names – misspellings of the Complainant’s trademark – without knowledge thereof. In so doing, the Respondent shows its intent to confuse and mislead the public. Furthermore, as the disputed domain names are inactive, the Respondent has not and cannot demonstrate any actual or contemplated use of the domain names which is legitimate. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding In accordance with paragraph 11 of the Rules: “[…] 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.” Therefore, the default language of the proceeding shall be Chinese. However, the Complainant filed the Complaint in English and requested that English be the language of this proceeding, arguing that the disputed domain names are formed in Roman letters (as opposed to Chinese Pinyin) and that it would cause an undue burden if the Complainant were required to submit all documents in Chinese. The key consideration in choosing the language of the proceeding is to ensure that each party has a fair opportunity to present its case. The Respondent was notified of each step of the proceeding in both Chinese and English and was given the opportunity to submit a response in Chinese. The Respondent, however, did not respond regarding the choice of language, or submit a formal response. As such, the Panel believes there would be no prejudice caused to the Respondent by proceeding in English. On the other hand, requiring the Complainant to submit the Complaint in Chinese would be a waste of resources. The Panel has therefore decided that the language of the proceeding shall be English and shall proceed with a decision in English. A. Identical or Confusingly Similar Under the first element of the Policy, a complainant must prove that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy). The Complainant has provided evidence of a valid international trademark registration for BOEHRINGER-INGELHEIM. Therefore, the Complainant has satisfied its obligation to show its rights in this trademark. The test for whether a domain name is identical or confusingly similar to the Complainant’s trademark is fairly straightforward and a domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies,WIPO Case No. D2004-0962). It is standard practice to disregard the Top-Level Domain (“TLD”) (see, e.g., F. Hoffmann-La Roche AG v. Domain Admin/xcite,WIPO Case No. DCC2007-0003). Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further explains that “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”. Examples of such typos include, among others, “adjacent keyboard letters” and “the inversion of letters and numbers”. In the present case, the disputed domain names constitute intentional misspellings of the Complainant’s trademark for BOEHRINGER-INGELHEIM after disregarding the TLD. These typos consist of an inversion of the letters “e” and “r” in the case of Therefore, the disputed domain names are confusingly similar to the relevant trademark and as such, the first element of the Policy has been established. B. Rights or Legitimate Interests Under the second element, a complainant must demonstrate that the respondent should be deemed as having no rights or legitimate interest in respect of the disputed domain name (paragraph 4(a)(ii) of the Policy). The Complainant submits that it has no affiliation with the Respondent and has never authorized the Respondent to register the disputed domain names or use its trademark. Further, there is no evidence that the Respondent is commonly known by the disputed domain names. Under these circumstances, and in particular where the disputed domain names are intentional misspellings of the Complainant’s trademark (which by itself may suggest lack of legitimacy), it is hard for the Panel to conceive of any rights or legitimate interests that the Respondent could have in the disputed domain names. Thus, in the absence of any explanation on its part, the Respondent has not rebutted the Complainant’s prima facie case. In accordance with paragraph 4(c) of the Policy, the Panel may, based on available evidence, consider whether the Respondent is making or has made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services, or, whether the Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain or to mislead consumers. But as the disputed domain names is inactive as of the date of this decision, and as the Respondent did not put forward evidence of its planned use of the same in connection with a bona fide offering of goods or services, there is no evidence to suggest that the Respondent has rights or legitimate interest in the disputed domain names. As such, the Panel concludes that the second requirement of the Policy is satisfied. C. Registered and Used in Bad Faith Under the final element, a complainant must prove that a disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy). In this regard, section 3.1.4 of the WIPO Overview 3.0 states that: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term to a famous or widely-known trademark) by an unaffiliated entity can by itself create a presumption of bad faith” (emphasis supplied). Particular circumstances, such as the nature of the domain names and a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the domain names, can also help inform the Panel’s assessment of the Respondent’s bad faith. The Complainant has demonstrated a long history of use of the mark BOEHRINGER-INGELHEIM, originating from the establishment of the business in 1885 by Albert Boehringer in Ingelheim am Rhein. The Complainant owns a large worldwide portfolio of registrations for its trade name, including an international registration for BOEHRINGER-INGELHEIM, which registered in 1959. The Complainant has expanded considerably and globally over the years so that its trademark is now internationally recognized. In view of this, it is highly unlikely that the Respondent thought of such a distinctive mark by itself and then decided to register three of its misspelled forms. Thus, in the absence of any explanation to the contrary or any evidence suggesting that the Respondent has rights or legitimate interests in the disputed domain names, the Panel believes that the registration of the disputed domain names was done with the Complainant’s well-recognized trademark in mind and concludes that the disputed domain names were registered and are being used in bad faith. Therefore, the final requirement of the UDRP is met. 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, Joseph Simone
Sole Panelist
Date: December 30, 2019
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