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 was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2019. On November 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 8, 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 21, 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 on November 21, 2019. On November 21, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. 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 in English and Chinese of the Complaint, and the proceedings commenced on November 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2019. The Center appointed Jonathan Agmon as the sole panelist in this matter on January 22, 2020. 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 group of pharmaceutical companies founded some 135 years ago in 1885. The Complainant conducts business in three main areas: human pharmaceuticals, animal health, and biopharmaceuticals. The Complainant currently has around 50,000 employees and in 2018, the Complainant achieved net sales of around EUR 17.5 billion. The Complainant is the owner of the mark BOEHRINGER-INGELHEIM (International Registration No. 221544) registered on July 2, 1959 and designating, inter alia, Germany, Spain, and Switzerland. The Complainant is also the owner of various domain names, including but not limited to the following: - - The disputed domain names were registered on November 6, 2019 and are presently inactive. According to the evidence provided by the Complainant, an email address registered under the disputed domain name The Complainant’s contentions include the following: The Complainant asserts that it has rights in the BOEHRINGER-INGELHEIM trademark through its International trademark registration and argues that the disputed domain names are confusingly similar to the Complainant’s registered trademark as the disputed domain names wholly incorporate the BOEHRINGER-INGELHEIM trademark and only differ from the BOEHRINGER-INGELHEIM trademark by the addition of an acronym. The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names as the Respondent was not commonly known by the disputed domain names. In addition, the Complainant states that the Respondent is not affiliated with the Complainant, nor has the Complainant licensed or permitted the Respondent to use any of its trademarks or register the disputed domain names. The Complainant further argues that the disputed domain names were registered and are being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceedings Paragraph 11 of the Rules provides that: “(a) Unless 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 language of the Registration Agreements for the disputed domain names is Chinese. The Complainant requested that the language of the proceeding be English. The Respondent did not comment on the language of the proceeding. The Panel cites the following with approval: “Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (See Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004.) The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding: (i) the disputed domain names consist of Latin letters, rather than Chinese characters; (ii) the Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language; and (iii) the Respondent did not object to the Complainant’s request that English be the language of the proceeding. Having regard to the above, the Panel determines that English be the language of the proceeding. 6.2 Substantive Issues A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The Complainant has provided evidence of its International trademark registration for the A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. All three disputed domain names incorporate the Complainant’s BOEHRINGER-INGELHEIM mark in its entirety (see Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller,WIPO Case No. D2008-1345). The disputed domain name The disputed domain name The disputed domain name It is well-established where a complainant’s trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; Novartis AG v. Radu Luca,WIPO Case No. D2016-2582). Thus, the addition of the acronyms “ag”, “hq”, or “hr” does not avoid confusing similarity with the Complainant’s BOEHRINGER-INGELHEIM mark. It is also established that the addition of a gTLD to a disputed domain name does not avoid confusing similarity as the use of a gTLD is technically required to operate a domain name (see Accor v. Noldc Inc.,WIPO Case No. D2005-0016; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; WIPO Overview 3.0, section 1.11). Thus, the addition of the gTLD “.com” is without significance and does not prevent a finding of confusing similarity in the present case. In the particular circumstances of the present case, the Panel is of the view that the disputed domain names are confusingly similar to the Complainant’s trademark in which the Complainant has rights. B. Rights or Legitimate Interests Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name (see WIPO Overview 3.0, section 2.1). In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests. The Complainant has provided evidence that it owns an International trademark registration designating multiple jurisdictions long before the disputed domain names were registered and that it has not licensed or otherwise permitted the Respondent to use the Complainant’s BOEHRINGER-INGELHEIM mark (see LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138). In addition, the Registrar has confirmed that the disputed domain names are registered under the Respondent 黄健（Huang Jian) which bears no resemblance to the disputed domain names in any way (see Sportswear Company S.P.A. v. Tang Hong,WIPO Case No. D2014-1875; WIPO Overview 3.0, section 2.3). Furthermore, the Complainant has submitted evidence of an email sent by an email address registered under the disputed domain name In the present case, the Respondent did not submit a Response to the Complaint and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain names to rebut the Complainant’s prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith The complainant must show that the respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy. The Complainant has submitted evidence that the disputed domain names were created long after the BOEHRINGER-INGELHEIM mark was registered. The Complainant’s evidence has shown that the BOEHRINGER-INGELHEIM mark has been registered since 1959 whereas the disputed domain names were only registered in November 2019. Therefore, the prior registration of the BOEHRINGER-INGELHEIM mark is suggestive of the Respondent’s bad faith when it registered the disputed domain names (see Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735). The Complainant argued that the Respondent knew of the BOEHRINGER-INGELHEIM mark at the time when it registered the disputed domain names because the BOEHRINGER-INGELHEIM mark is well known and has been registered multiple times. The Panel further notes that the Complainant has established that its BOEHRINGER-INGELHEIM trademark has been recognized in prior UDRP cases as well-known in connection with the Complainant’s activity. Given the fame and the distinctive nature of the BOEHRINGER-INGELHEIM mark, the Panel finds that it is inconceivable that the Respondent could have acquired the disputed domain names without knowledge of the BOEHRINGER-INGELHEIM mark. (See Leite’s Culinaria, Inc. v. Gary Cieara,WIPO Case No. D2014-0041; WIPO Overview 3.0, section 3.2.2) Next, the disputed domain names are presently inactive and resolve to blank pages. Where passive holding is found, non-use of a domain name would not prevent a finding of bad faith, and a panel will look at the totality of circumstances in each case (see WIPO Overview 3.0, section 3.3; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Examples of factors considered by previous UDRP panels include: “(i) the degree of distinctiveness or reputation of the complainant’s mark; (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use; (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and (iv) the implausibility of any good faith use to which the domain name may be put.” In this case, the Panel is of the view that the particular circumstances of the present case strongly suggest that the Respondent’s non-use of the disputed domain names is in bad faith. The evidence presented to the Panel shows that the BOEHRINGER-INGELHEIM mark owned by the Complainant is highly distinctive and has been widely used worldwide. The Respondent had failed to submit a response and it is implausible that there is any good faith use to which the disputed domain names may be put (see WIPO Overview 3.0, section 3.3; Cloudflare, Inc. v. Private Registrant, Digital Privacy Corporation / Richard Sheng,WIPO Case No. DAI2019-0001; Philip Morris Products S.A. v. Han Ming, Lin Cheng,WIPO Case No. D2018-1635). In addition, the Respondent did not submit a Response in this proceeding. These are all further indications of the Respondent’s bad faith, which were considered by the Panel. Furthermore, the Complainant has provided evidence that an email address registered under the disputed domain name Based on the evidence presented to the Panel, including the registration of the disputed domain names long after the registration of the Complainant’s mark, the confusing similarity between the disputed domain names and the Complainant’s mark, the fact that there is no plausible good faith use the Respondent can put the disputed domain names to, the fact that no Response was submitted by the Respondent, and the fact that one of the disputed domain names was used for a phishing scheme, the Panel draws the inference that the disputed domain names were registered and are being used in bad faith. 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 Jonathan Agmon
BOEHRINGER-INGELHEIM mark designating numerous jurisdictions.
Sole Panelist
Date: February 5, 2020
Full & Egal Universal Law Academy