Complainant is Boehringer Ingelheim Animal Health France, France, represented by Nameshield, France.
Respondent is Johnson Zhang, Singapore.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 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 Complainant on August 5, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 5, 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 Respondent of the Complaint, and the proceedings commenced on August 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2021. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on September 15, 2021.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on October 12, 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 BackgroundComplainant is a global company in the pet and equine business. Complainant’s product offerings include FRONTLINE, a medication for cats and dogs that treats and prevents fleas, ticks and other pests and related ailments. Complainant owns several registrations for the FRONTLINE trademark, including International Trademark No. 1245236 (registered January 30, 2015).
The disputed domain name was registered on July 31, 2021. At the time the Complaint was filed and currently the disputed domain name resolves to a website in Chinese, at which the disputed domain name is offered for sale.
5. Parties’ Contentions A. ComplainantAccording to Complainant, the disputed domain name is confusingly similar to Complainant’s FRONTLINE trademark in which Complainant has rights as demonstrated by its cited registration. Complainant asserts that the addition of terms, specifically, “for cats,” does not eliminate the confusing similarity and that the overall impression is that the domain is associated with Complainant’s FRONTLINE trademark. In addition, Complainant contends that the disputed domain name remains confusingly similar despite the addition of the “.com” Top-Level Domain (“TLD”).
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Complainant states that, in the WhoIs database, Respondent is not identified by the disputed domain name and cites that prior panels have found that a respondent is not determined to be commonly known by a disputed domain name if the information in the WhoIs database does not list respondent as similar to the disputed domain name. Complainant also asserts that Respondent is not a licensee of Complainant, does not have any business relationship with Complainant, and has not been authorized in any way by Complainant to use Complainant’s trademark or register the disputed domain name. Complainant contends that Respondent offering the disputed domain name for sale does not constitute a right or legitimate interest in the disputed domain name.
Complainant asserts that because the disputed domain name was registered many years after Complainant had established its FRONTLINE mark, and because Google search results for “Frontline for cats” all refer to Complainant’s products, Respondent must have been aware of Complainant’s trademark. In addition, Complainant asserts that the addition of the term “for cats” is a specific reference to Complainant’s products. Complainant contends that Respondent has deliberately used Complainant’s trademark to attract Internet users for the purpose of commercial gain through offering the disputed domain name for sale. Accordingly, Complainant contends that the disputed domain name was registered and used in bad faith.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsUnder paragraphs 5(e) and 14(a) of the Rules, the effect of a default by a respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A respondent’s default does not by itself satisfy a complainant’s burden of proof and is not necessarily an admission that the complainant’s allegations are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340.
A. Identical or Confusingly SimilarA national or international trademark registration is prima facie evidence that the holder has the requisite rights in the registered mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it owns the International registration in FRONTLINE, as referenced above. Therefore, Complainant has established that it has rights in the FRONTLINE mark.
The remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the TLD in which the domain name is registered) is identical or confusingly similar to Complainant’s mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id.
Here, the disputed domain name incorporates the FRONTLINE trademark in its entirety, with the addition of the words “for cats” after, with dashes in between the words. This variation does not prevent a finding of confusing similarity between the disputed domain name and the mark. See Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Energy,WIPO Case No. D2017-0075.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to its FRONTLINE mark.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
Paragraph 4(c) of the Policy lists the ways that Respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, 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 it has acquired no trade mark 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 trade mark or service mark at issue.
Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that Respondent is not a licensee of Complainant and that Respondent has no other business relationship with Complainant. Nor has Respondent submitted any arguments to rebut Complainant’s contention that Respondent is not commonly known by the disputed domain name. As the dispute domain name is currently being used to host a website that offers the disputed domain name for sale, the remaining question is whether such an offer for sale represents a legitimate right or interest. In the circumstances of this case, the Panel finds that such an offer does not constitute rights or legitimate interests.
Therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad FaithIn this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided evidence of its registration and widespread use of the FRONTLINE trademark prior to Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of Complainant and its rights in the FRONTLINE trademark when Respondent registered the disputed domain name. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. That the disputed domain name includes the terms “for cats” when Complainant’s FRONTLINE trademark is a product for use on cats is a further indication that Respondent was likely aware of Complainant’s trademark.
Respondent is currently using the disputed domain name to host a website offering the disputed domain name for sale. Accordingly, Respondent is using the disputed domain name for purposes of commercial gain. Prior UDRP panels have found that a respondent’s use of a disputed domain name that contains a complainant’s trademark for purposes of commercial gain constitutes bad faith.
For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was in bad faith.
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
Brian J. Winterfeldt
Sole Panelist
Date: October 26, 2021