The Complainant is Boehringer Ingelheim Pharma GmbH & Co. KG, Germany, represented by Nameshield, France.
The Respondent is 杨智超 (Zhichao Yang), China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2021. On August 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 4, 2021, 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 August 5, 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 in English on August 5, 2021.
On August 5, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the administrative proceeding. On August 5, 2021, the Complainant confirmed its request that English be the language of the administrative proceeding. The Respondent did not comment on the language of the administrative 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 August 11, 2021. In accordance with the Rules, paragraph5, the due date for Response was August 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2021.
The Center appointed Jonathan Agmon as the sole panelist in this matter on September 13, 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.
4. Factual BackgroundThe Complainant, Boehringer Ingelheim Pharma GmbH & Co. KG, is a family-owned pharmaceutical group of companies tracing back to 1885. It was founded by Albert Boehringer in Ingelheim am Rhein and has since become a global research-driven pharmaceutical enterprise with roughly 52,000 employees today. The Complainant’s areas of business are human pharmaceuticals, animal health and biopharmaceuticals. In 2020, the Complainant’s net sales amounted to about EUR 19.6 billion.
The Complainants owns the following registered BOEHRINGER trademark in several countries:
- International Registration No. 799761 for BOEHRINGER registered on December 2, 2002; and
- European Union Trade Mark No. 002932853 for BOEHRINGER registered on March 2, 2005.
The disputed domain name
The Complainant argues that the disputed domain name is confusingly similar to its BOEHRINGER trademark as the disputed domain name wholly contains BOEHRINGER in its entirety with the addition of the terms “manheim” (which is a misspelled version of the German city, Mannheim) and “pet rebates”, which are insufficient to avoid the finding of confusingly similarity. The addition of the generic Top-Level Domain (“gTLD”) “.com” also does not prevent the likelihood of confusion between the disputed domain name and the Complainant’s trademark.
The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name as it is not affiliated with or authorized the Respondent to use any of its trademarks or register the disputed domain name and that the Respondent is not known by the disputed domain name.
The Complainant further argues that the disputed domain name was registered and is being used in bad faith for commercial gain by creating a likelihood of confusion with the Complainant’s BOEHRINGER mark and the Respondent had actual knowledge of the Complainant’s mark at the time of registration.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1 Language of the ProceedingParagraph 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 Agreement for the disputed domain name 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 name consists of Roman letters, rather than Chinese characters;
(ii) at the time of the decision, the disputed domain name resolves to a parking page with PPC links in the English language;
(iii) the Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language; and
(iv) the Respondent did not object to the Complainant’s request that English be the language of the proceeding.
Upon considering the above, the Panel determines that English be the language of the proceeding.
6.2 Substantive Issues A. Identical or Confusingly SimilarParagraph 4(a)(i) of the Policy requires a complainant to show that a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belongs to its respective owner. The Complainant has provided evidence that it owns the BOEHRINGER trademarks.
The disputed domain name wholly contains the BOEHRINGER trademark in its entirety with the addition of the geographical term “Manheim” (which is a misspelled version of the German city, Mannheim), the descriptive terms “pet” and “rebates”, and the gTLD “.com”.
It is established that “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusingly similar” for purposes of the first element (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
It is also established that the applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (WIPO Overview 3.0, section 1.11). The addition of a gTLD to a disputed domain name does not avoid a finding of 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; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; L’Oréal v Tina Smith,WIPO Case No. D2013-0820; Titoni AG v Runxin Wang,WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A.,WIPO Case No. D2009-0877).
The disputed domain name consists of the Complainant’s BOEHRINGER mark, misspelling of the German city as “Manheim”, the descriptive terms “pet” and “rebates” and the gTLD “.com” which in the Panel’s view does not avoid a finding of confusing similarity with the Complainant’s trademark (see Schneider Electric S.A. v. Domain Whois Protect Service / Cyber Domain Services Pvt. Ltd.,WIPO Case No. D2015-2333).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the BOEHRINGER mark and the element under paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsParagraph 4(a)(ii) of the Policy requires the complainant to show that the respondent has no rights or legitimate interests in respect of the domain name. Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the 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 name and the Respondent has failed to assert any such rights or legitimate interests.
The Complainant submitted evidence that it did not authorize or license the Respondent to use the BOEHRINGER mark (see OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org,WIPO Case No. D2015-1149; Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The Complainant also submitted that the Respondent’s use of the disputed domain name resolved to a parking page with PPC links related to the pharmaceutical industry. It is well established that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering of goods or services where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see WIPO Overview 3.0, section 2.9). In this case, the Panel finds that the Respondent is not making a bona fide offering of goods or services as the PPC links on the website at the disputed domain name appear to be competitive with the Complainant and would also mislead unsuspecting Internet users seeking the Complainant.
In addition, the evidence submitted by the Complainant shows that the Respondent is not commonly known by the disputed domain name.
The Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name which is sufficient to rebut the Complainant’s prima facie case.
The Panel is therefore of the view that the Respondent has no rights or legitimate interests in respect of the disputed domain name and accordingly, paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad FaithThe complainant must show that the respondent registered and is using the disputed domain name in bad faith (paragraph 4(a)(iii) of the Policy). 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 name resolves to a parked page containing PPC links on the website at the disputed domain name that appear to be competitive with the Complainant and would likely mislead unsuspecting Internet users seeking the Complainant. It is up to the Respondent to control the content appearing on the website under the disputed domain name. PPC links that provide links to competitors of the Complainant represent a clear indication of bad faith registration and use of the disputed domain name. In addition, there is no indication of a good faith attempt by the Respondent to prevent the offending advertising links and as discussed below the Respondent was aware of the Complainant and its trademark when he registered the disputed domain name. See Volkswagen Aktiengesellschaft v. Robert Brodi,WIPO Case No. D2015-0299.
The Complainant also states that the Respondent has been involved in other UDRP proceedings, for instance: Boehringer Ingelheim Pharma GmbH & Co.Kg. v. 杨智超 (Zhichao Yang),WIPO Case No. D2021-0842; Accenture Global Services Limited v. Moniker Privacy Services / Whois Agent, Domain Protection Services, Inc. / Zhichao Yang,WIPO Case No. D2019-2787; Andrey Ternovskiy dba Chatroulette v. Domain Administrator, See PrivacyGuardian.org / Zhichao Yang,WIPO Case No. D2019-0792, and other URDP proceedings with domain names similar with third parties’ trademarks which the Panel has taken into consideration. The Complainant states that the Respondent was clearly aware of the Complainant and its BOEHRINGER mark and that the Respondent has no connection to the BOEHRINGER mark. The existence of prior disputes between the Parties is an indication that the Respondent was aware of the Complainant and its trademark and was targeting the Complainant. (See WIPO Overview 3.0, section 3.2.1, listing additional bad faith consideration factors, including, “(v) any respondent pattern of targeting marks along a range of factors, such as a common area of commerce, intended consumers, or geographic location, (vi) a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name, or (vii) other indicia generally suggesting that the respondent had somehow targeted the complainant.”)
The Respondent did not submit a Response in this proceeding which is a further indication of the Respondent’s bad faith, which has been considered by the Panel.
Based on the totality of evidence presented to the Panel, including the confusing similarity between the disputed domain name and the Complainant’s mark, the distinctive nature of the Complainant’s mark, the fact that the disputed domain name is being used for PPC links to competitive products or services, the previous cases between the Parties showing that the Respondent is targeting the Complainant, and the fact that no Response was submitted by the Respondent to the Complaint, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith, and accordingly, paragraph 4(a)(iii) of the Policy is satisfied.
7. DecisionFor 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
Jonathan Agmon
Sole Panelist
Date: September 26, 2021