The Complainant is Boehringer Ingelheim International GMBH of Ingelheim, Germany, represented by Nameshield, France.
The Respondent is xujun of xujun of Chengdu, Sichuan, China. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with Hangzhou AiMing Network Co., LTD (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 16, 2016. On February 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 18, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On February 18, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On February 18, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the 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 proceeding commenced on February 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 17, 2016.
The Center appointed Kar Liang Soh as the sole panelist in this matter on March 22, 2016. 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 pharmaceutical group of companies founded in 1885 by Albert Boehringer. It is a global research-driven enterprise with about 140 affiliated companies worldwide and approximately 46,000 employees. Net sales of the pharmaceutical enterprise amounted to about EUR 13.3 billion in 2014.
The Complainant's two main business areas are in human pharmaceuticals and animal health. OFEV is a trademark for a drug developed by the Complainant for the treatment of idiopathic pulmonary fibrosis. The drug has been marketed worldwide, including Australia and Cocos Islands.
The Complainant is the registered proprietor of the trademark OFEV in many jurisdictions, including the following:
Jurisdiction
Trademark No.
Registration Date
International
1120388
April 10, 2012
Germany
302011060390
February 24, 2012
International registration 1120388 has been granted protection in China and Australia.
The Complainant is also the registrant of multiple domain names incorporating the trademark OFEV, including the following:
Domain Name
Registration Date
January 12, 2006
December 4, 2014
May 30, 2014
May 30, 2014
May 31, 2014
May 30, 2014
August 13, 2013
May 30, 2014
May 30, 2014
August 13, 2013
June 18, 2015
May 30, 2014
November 8, 2011
The Respondent appears to be an individual based in Chengdu, China. Beyond the WhoIs information of the Disputed Domain Name and the registrar verification in this proceeding, little information about the Respondent is known. The physical address and facsimile details of the Respondent in the WhoIs information are invalid as attempts to deliver the Written Notice of the commencement of administrative proceeding to the Respondent via these avenues have failed.
The Disputed Domain Name was registered on November 14, 2015 and did not resolve to a website as of the date of the Complaint. A cease-and-desist letter for the transfer of the Disputed Domain Name to the Complainant was sent by email by the Complainant's agent to the Respondent on January 8, 2016. The Respondent did not reply to the Complainant's cease-and-desist letter. 5. Parties' Contentions A. Complainant
The Complainant contends that:
a) The Disputed Domain Name is identical or confusingly similar to the trademark OFEV in which the Complainants have rights. The Disputed Domain Name incorporates the trademark OFEV in its entirety. As it is generally accepted that the top-level suffix in the domain name does not change the overall impression of the domain name, and is to be disregarded under the confusing similarity test, the Disputed Domain Name is thus identical to the Complainant's trademark OFEV. The Complainant's trademark OFEV is a term which has no meaning in English, French or any other language. The results of a search on Baidu for OFEV are all related to the Complainant;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not known as OFEV. The Respondent's name is "xujun". The Respondent is not related in any way to the Complainant and does not carry out any activity for, nor has any business with the Complainant. The trademark OFEV has not been licensed or authorized to the Respondent for use or for registration as a domain name. The Disputed Domain Name does not resolve to a website, demonstrating a lack of legitimate interests in the Disputed Domain Name; and
c) The Disputed Domain Name was registered and is being used in bad faith. The trademark OFEV is used worldwide on a drug for the treatment of idiopathic pulmonary fibrosis. The Respondent must be aware of the Complainant's rights given the lack of reply to the cease-and-desist letter sent to the Respondent. The Disputed Domain Name has not been used since its registration. The Respondent has maintained the Disputed Domain Name in order to prevent the Complainant from reflecting its trademark as a domain name, and relies on the cases of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (the "Telstra case") and CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case No. D2000-0400 (the "CBS case")to support a finding of bad faith registration and use. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Language
Pursuant to paragraph 11(a) of the Rules, 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 has affirmed that the language of the Registration Agreement for the Disputed Domain Name is Chinese. The Complainant filed the Complaint in English and has requested that English be adopted as the language of the proceeding. Having considered the circumstances, the Panel allows the Complainant's request, having taken into account the following factors:
a) The Complainant is based in Germany where Chinese is not a common language;
b) The Disputed Domain Name is registered in Latin characters;
c) The Complaint has already been filed in English, to which the Respondent did not respond despite the Center's indicating that it would accept a response in either language. Requiring that the Complaint be translated into Chinese would place an unnecessary burden on the Complainant;
d) The Respondent, having been given a fair chance to object, has not filed any response or commented on the Complainant's request that English be adopted as the language of the proceeding; and
e) Requiring a Chinese translation of the Complaint will lead to unnecessary delay in the proceeding. 6.2. Discussion
In order to succeed in this proceeding, the following limbs of paragraph 4(a) of the Policy must be established:
a) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
c) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the trademark registrations in the evidence tendered, which extends to China and Australia (which covers the Cocos Islands – the geographical area affiliated with the ".cc" country code Top-Level Domain ("ccTLD")), the Panel is satisfied that the Complainant owns rights in the trademark OFEV.
In accordance with the consensus view of prior panels as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), the ccTLD generally is disregarded when comparing a domain name with a trademark. The Panel does not see any reason to depart from this consensus opinion in the circumstances. Bearing this in mind, the Disputed Domain Name is undeniably identical to the trademark OFEV. The first limb of paragraph 4(a) of the Policy is accordingly established. B. Rights or Legitimate Interests
The consensus view among panels is that the Complainant is only required to establish a prima facie case that the Respondent lacks rights to or legitimate interests in the Disputed Domain Name. Once such a prima facie case is made out, the burden shifts to the Respondent to show otherwise.
The Complainant has maintained that the Respondent was never authorized, licensed or otherwise allowed by the Complainants to use the trademark OFEV or to register a domain name incorporating the same. The Complainant has asserted that the Respondent is not affiliated with the Complainant in any way and there is no evidence to suggest otherwise. The Respondent's name and the Disputed Domain Name bear no similarity with each other and no evidence which could suggest that the Respondent is commonly known by the Disputed Domain Name has been put before the Panel. Given that the Disputed Domain Name does not resolve to a website, the Panel also finds no indication in the evidence tendered that the Respondent used the Disputed Domain Name in connection with a bona fide offering of goods and services. As such, the Panel is of the view that the Complainant has established a prima facie case that the Respondent lack rights to or legitimate interests in the Disputed Domain Name.
The Respondent has not filed any response during the course of the proceeding to deny or refute the Complainant's contentions. In the absence of any evidence or explanation to the contrary, the prima facie case has not been rebutted and the Panel holds that the second limb of paragraph 4(a) of the Policy is also established. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which, if fulfilled, constitute evidence of bad faith registration and use of a domain name. In particular, paragraph 4(b)(ii) states as follows:
"you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct."
Following the consensus view of prior panels in respect of the above circumstance as outlined in WIPO Overview 2.0, a pattern of conduct may be established where the respondent has been involved in multiple UDRP cases with similar fact situations, or a single case where the respondent has registered multiple domain names which are similar to the complainant's trademarks. In order to establish a pattern of conduct, more than one or two examples are generally required. Bearing this in mind, the Panel finds that paragraph 4(b)(ii) has not been made out. Particularly, the Complainant has neither adduced evidence of other UDRP cases involving the Respondent, nor shown that the Respondent has registered other domain names which are identical or confusingly similar to the Complainant's trademark OFEV. As such, the pattern of conduct required in paragraph 4(b)(ii) of the Policy to constitute bad faith registration and use of the Disputed Domain Name has not been established.
Notwithstanding the above, the Panel notes that the circumstances in paragraph 4(b) of the Policy are not exhaustive, and bad faith registration and use of a domain name may be founded on other grounds. In particular, the case of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, has long established that passive holding of a domain name entirely incorporating a trademark having a strong reputation may amount to bad faith registration. In determining whether a respondent is acting in bad faith, prior cases such as CBS Broadcasting, Inc v. Dennis Toeppen,WIPO Case No. D2000-0400, make it clear that all the circumstances surrounding the registration and use of the domain name must be considered. These cases have contributed to the current consensus view in WIPO Overview 2.0 that circumstances which may cumulatively be indicative of bad faith include "the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity."
Applying the principles above, the Panel concludes that the passive holding of the Disputed Domain Name by the Respondent amounts to registration and use of the Disputed Domain Name in bad faith for the following reasons:
a) It is apparent from the evidence that the Disputed Domain Name does not resolve to a website. There is also no evidence of use or intended use of the Disputed Domain Name by the Respondent.
b) The Complainant's trademark has a strong reputation and is known in its field, as supported by its evidence of use, including in Australia;
c) The Complainant's trademark OFEV has no apparent meaning in any language. It relates to highly specialized goods which are in the highly regulated pharmaceutical field. Internet searches point extensively to the Complainant's websites, trademarks and products. It is unlikely that the Respondent could have devised and adopted the Disputed Domain Name without prior knowledge of the trademark OFEV;
d) The Respondent did not respond to the Complainant's cease-and-desist letter; and
e) The Respondent has provided invalid contact and address information in breach of the registration agreement.
Taking into account all of the above reasons, the Panel is not convinced on the balance of probabilities that there was any actual or contemplated good faith use of the Disputed Domain Name by the Respondent and concludes that the Respondent's passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii). 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, , be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Date: April 18, 2016
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