The Complainant is Boehringer Ingelheim Pharma GmbH & Co. KG, Germany, represented by Nameshield, France.
The Respondent is haoting zhou, China, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 8, 2021 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 June 9, 2021. 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, and the proceedings commenced on June 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2021. The Center received three informal email communications from the Respondent in English on June 24, 2021 and July 3, 2021. The Center appointed Matthew Kennedy as the sole panelist in this matter on July 16, 2021. 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. The Panel issued Administrative Panel Procedural Order No. 1 on July 21, 2021. In that Order, the Panel (i) requested that the Complainant provide information by July 26, 2021 regarding its marketing of the PRADAXA brand as 百達生 or 百达生, and indicate when it started to market under the 百達生 or 百达生 brand; and (ii) gave the Respondent an opportunity to comment by July 29, 2021 on the Complainant’s submissions provided in response to the Order. On July 26, 2021, the Complainant filed a submission in response to the Order. The Respondent did not comment on the Complainant’s submission. 4. Factual Background The Complainant is a research-based biopharmaceutical company. Its products include a blood thinner for the prevention of strokes marketed as “Pradaxa” and, in Hong Kong, China, as “百達生”. Pradaxa is a prescription-only medicine. The Complainant owns multiple trademark registrations, including the following: - International trademark registration number 807503 for PRADAXA, designating multiple jurisdictions, including China, registered on July 9, 2003; and - Hong Kong, China trademark registration number 305151951 for 百達生 (in traditional script) and 百达生 (in simplified script), registered from December 23, 2019. The above trademark registrations both specify pharmaceutical preparations in class 5. Both registrations remain current. The Complainant also registered the domain name <百達生.asia>, which was created on June 21, 2012, but there is no evidence that that domain name has been used with an active website. The Complainant has also registered the domain name The standard Pinyin transliteration of 百達生 or 百达生 is “bǎidáshēng”. The Respondent is an individual resident in Shenzhen, a city in mainland China near the border with Hong Kong, China. The disputed domain name was registered on November 13, 2017. According to archived screenshots provided by the Complainant, the disputed domain name resolved in August 2018 to a website in Chinese that offered a purchasing agent service for the Complainant’s 百達生 (Pradaxa) medicine from Hong Kong, China and also provided information about the medicine. The website homepage displayed 百達生 with the trademark registration symbol ® in the top left-hand corner with the same tagline and featured image that appeared on the Complainant’s website at that time.1 The Respondent’s website homepage also displayed the PRADAXA mark in the top-left hand corner. The Respondent’s website homepage advised that 百達生was only sold in Hong Kong and displayed images of the packaging for three different dosages of “PRADAXA® 百達生” with their respective prices in Hong Kong pharmacies. The website allowed Internet users in mainland China (and elsewhere) to place orders via a WeChat address or after scanning a QR code. Among the data on the Respondent’s site was the information that 百達生was developed and placed on the market by the Complainant. Unlike the Complainant’s website, the Respondent’s website did not display the BOEHRINGER INGELHEIM trademark. At the time of the filing of the Complaint, the disputed domain name did not resolve to any active website. However, at the time of this Decision it has resumed resolving to the former website. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s prior trademark 百達生. The Complainant owns the Hong Kong, China trademark registration number 807503 for 百達生. The disputed domain name is the Pinyin equivalent of that term, “bǎidáshēng”. The addition of the geographic abbreviation “hk” is not sufficient to avoid the likelihood of confusion. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not named in the WhoIs database as the disputed domain name. He is not related in any way to the Complainant. The Complainant does not carry out any activity for, nor has any business with the Respondent. Neither license nor authorization has been granted by the Complainant to the Respondent to make any use of the Complainant’s trademark 百達生, nor to apply for registration of the disputed domain name. The disputed domain name is not currently used. The disputed domain name was registered and is being used in bad faith. The Respondent must have been aware of the Complainant’s百達生 trademark and the corresponding PRADAXA trademark. The disputed domain name used to resolve to a website that made direct reference to PRADAXA 百達生 products and to the Complainant, and offered these products for sale. The Respondent attempted to attract Internet users to his website for commercial gain, by causing a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of his website and the products offered therein, according to paragraph 4(b)(iv) of the Policy. The disputed domain name currently resolves to an inactive page. The first date of commercial use of the trademark 百達生 is July 1, 2009. The traditional form 百達生 is widely used on the Complainant’s Hong Kong, China website and on its official packaging. B. Respondent The Respondent sent the Center a series of informal emails in English, in which he stated that he did not know much English and that he rarely read emails. He asked for clarification as to whether the Complainant wanted to take back the disputed domain name or to stop him from providing information about its products. 6. Discussion and Findings 6.1. Language of the Proceeding Paragraph 11(a) of the Rules provides that “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 Registrar confirmed that the Registration Agreement for the disputed domain name is in English. The Respondent requested that all documents be sent to him in Chinese, stating that he did not know much English. Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293. The Panel observes that in this proceeding the Complaint was filed in the language of the Registration Agreement, i.e., English. The Respondent entered into the Registration Agreement and corresponded with the Center in English, which demonstrates that he is able to communicate in that language. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay whereas accepting it in English does not create unfairness to either Party. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2. Substantive Issues Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements: (i) the disputed domain name is 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 name; and (iii) the disputed domain name has been registered and is being used in bad faith A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Complainant has rights in the 百達生 mark and the PRADAXA mark. The disputed domain name contains the element “baidasheng”, which is the standard Pinyin transliteration of the characters in the Complainant’s 百達生mark, minus the diacritics indicating tones. As such, this element is a highly foreseeable means of representing the 百達生 mark in ASCII characters and basically identical to that mark phonetically. See, similarly, E. Remy Martin & Co v. xiangwu meng,WIPO Case No. D2012-0069. The disputed domain name also contains the geographical element “hk” which is the common abbreviation of the place name “Hong Kong”. As a mere geographical term, this additional element does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. See, for example, Genentech Inc. v. Bao Qiang Li, Li Bao Qiang,WIPO Case No. D2015-2241. The only other element in the disputed domain name is a generic Top-Level Domain (“gTLD”) “.com”. As a standard technical requirement of registration, a gTLD is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the 百達生mark.3 Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use 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) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the 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 the trademark or service mark at issue. As regards the first and third circumstances set out above, the disputed domain name resolves to a website that offers a purchasing agent service to supply百達生 (Pradaxa) medicine from Hong Kong, China, apparently without medical prescription, and provides information about that medicine. The Complainant submits that the Respondent is not related to it and that it has not licensed or authorized the Respondent to make any use of its 百達生trademark nor to register it in a domain name. The first screen of the Respondent’s website homepage is basically a copy of the first screen of the Complainant’s Hong Kong, China website homepage as it formerly looked, which gives the false impression that the site is affiliated with, or endorsed by, the Complainant. While the Respondent’s website discreetly notes that Pradaxa was developed and placed on the market by the Complainant, it does not display a prominent disclaimer clarifying that it has no relationship to the Complainant. The supply of this medicine without prescription may also be illegal. At the time of the filing of the Complaint, the disputed domain name was passively held. Accordingly, the Panel considers that the Complainant has made a prima facie case that neither use of the disputed domain name is in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name within the circumstances of paragraph 4(c)(iii) of the Policy. As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “haoting zhou”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by paragraph 4(c)(ii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not provide a substantive response to the Complainant’s contentions. Therefore, based on the record of this proceeding, the Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith The Panel recalls that the third element of paragraph 4(a) of the Policy uses the conjunction “and” which requires the Complainant to show both that the disputed domain name has been registered in bad faith and that the disputed domain name is being used in bad faith. Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows: “(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] web site or location.” As regards registration, the disputed domain name was registered in 2017, two years prior to the Complainant’s registration of the百達生 trademark. Although the Complainant submits that its 百達生 trademark predates the registration of the disputed domain name, that submission is not borne out by the evidence. Although the Complainant’s trademark registration for PRADAXA predates the registration of the disputed domain name, its trademark registration for 百達生does not. While it asserts that the first date of commercial use of the百達生 trademark was July 1, 2009, it provides no evidence to substantiate that assertion. In circumstances such as these, where the Complainant’s rights in its trademark arose after the registration of the disputed domain name, panels do not normally find bad faith on the part of a respondent. See WIPO Overview 3.0, section 3.8.1. However, in the present case, the disputed domain name resolves to a website that has displayed 百達生with the trademark registration symbol ® all along. The website has displayed images of the Complainant’s medicine in its original packaging bearing the PRADAXA registered mark and the product name 百達生alongside. The website credits the Complainant as the developer of PRADAXA. This all gives the Panel reason to find that the Respondent knew of the Complainant, PRADAXA, and百達生and targeted the Complainant’s nascent rights in the 百達生mark at the time that he registered the disputed domain name. In these circumstances, the Panel finds that the Respondent registered the disputed domain name in bad faith in anticipation of the Complainant’s rights in the 百達生mark. See WIPO Overview 3.0, section 3.8.2. As regards use, the Respondent uses the disputed domain name, which incorporates an abbreviation for the place name “Hong Kong” and essentially the standard Pinyin transliteration of the 百達生 trademark, to resolve to a website offering a purchasing agent service for百達生 (Pradaxa) medicine from Hong Kong, China. The Respondent’s site is operated for commercial gain. In view of these circumstances and the findings in Section 6.2B above, the Panel considers that the disputed domain name is being used in bad faith as envisaged in paragraph 4(b)(iv) of the Policy. For the above reasons, the Panel finds that the disputed domain was registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 disputed domain name Matthew Kennedy 1 At the time of filing the Complaint public WhoIs records identified a privacy service, Domain Administrator, See PrivacyGuardian.org, as the registrant of the disputed domain name. 2 The Panel notes its general powers articulated inter alia in paragraphs 10 and 12 of the Rules and has searched for archived Web pages in the Internet Archive (“www.archive.org”), which is a matter of public record, to verify that the Complainant’s website was live and how it looked at relevant times. The Panel considers this process of verification useful to assessing the case merits and reaching a decision. See WIPO Overview 3.0, section 4.8. 3 The Complainant does not argue that the disputed domain name is identical or confusingly similar to its PRADAXA mark. However, for the record, the Panel notes that “baidasheng” is not a transliteration of that mark. Although “baidasheng” and PRADAXA share the same middle syllable, the degree of phonetic similarity between them is very low. Nor is there any suggestion that “baidasheng” is a translation of PRADAXA, which appears to be an invented term. Accordingly, the Panel does not find that the disputed domain name is identical or confusingly similar to the PRADAXA mark.
Sole Panelist
Date: August 9, 2021
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