The Complainant is Boehringer Ingelheim International GmbH, Germany, represented by Nameshield, France.
The Respondent is JH Kang, Republic of Korea. 2. The Domain Name and Registrar
The Disputed Domain Name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2021. On January 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 11, 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 January 11, 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 January 11, 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 January 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2021. The Center appointed Pablo A. Palazzi as the sole panelist in this matter on February 15, 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 Background The Complainant is a German family-owned pharmaceutical group of companies operating since 1885 and founded by Albert Boehringer in Ingelheim am Rhein, Germany. At the present, the Complainant has become a global research-driven pharmaceutical enterprise with roughly 50,000 employees. Jardiance is a prescription medicine used along with diet and exercise to lower blood sugar in adults with type 2 diabetes, and also to reduce the risk of cardiovascular death in adults with type 2 diabetes who have known cardiovascular disease. The Complainant owns trademarks registrations for the term “Jardiance” in several countries, including also an International Trademark JARDIANCE, Registration No. 981336, registered on September 3, 2008. Furthermore, the Complainant is the owner of the domain name The Respondent registered the Disputed Domain Name The Complainant’s contentions can be summarized as follows: Identical or confusingly similar The Complainant contends that the Disputed Domain Name Rights or legitimate interests The Complainant alleges that the Respondent is not known as the Disputed Domain Name. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and it is not related in any way with the Complainant. In addition, the Complainant does not carry out any activity for, nor has any business with the Respondent. Neither the Complainant had licensed or authorized the Respondent to make any use of the JARDIANCE trademark, or to register the Disputed Domain Name. Finally, the Complainant states that the Disputed Domain Name is not in use. Therefore, the Complainant contends that Respondent did not make any use of Disputed Domain Name since its registration, and it confirms that Respondent has no demonstrable plan to use it. Thus, it demonstrates a lack of legitimate interests in respect of the Disputed Domain Name. Registration and use in bad faith The Complainant alleges that the term “Jardiance Savings” refers to the Complainant’s trademark. Consequently, the Respondent registered the Disputed Domain Name in knowledge of the Complainant and its trademarks, which is an evidence of bad faith. Furthermore, the Disputed Domain Name is not used by the Respondent and it is offered on sale for an amount of USD 599. Finally, the Complainant states that the Respondent is known in numerous UDRP disputes in pattern of conduct. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name in this case: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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 The Complainant has demonstrated that it has trademarks rights over the term “Jardiance”. Based on the evidence submitted, the Panel finds that the Disputed Domain Name Furthermore, the Disputed Domain Name contains the Complainant’s JARDIANCE trademark in its entirety. The addition of the dictionary term “savings” does not prevent a finding of confusing similarity. Moreover, the addition of the country code Top-Level Domain (“ccTLD”) “.co” does not change this finding since the ccTLD is generally disregarded in such an assessment of confusingly similarity. Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name: (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark. The Complainant has prior rights in the trademarks which precede the Respondent’s registration of the Disputed Domain Name. The Respondent has failed to show that it has acquired any trademark rights with respect of the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods and services. The Respondent had the opportunity to demonstrate its rights or legitimate interests, but he did not do so. As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith. The Disputed Domain Name was registered on November 30, 2020, while the Complainant’s trademark JARDIANCE International Trademark Registration No. 981336 was registered on September 3, 2008. Also, the Complainant has provided evidence of a savings program for eligible patients. In this sense, the Panel is on the opinion that the Respondent was aware of the Complainant’s rights when registered the Disputed Domain Name. Moreover, the Respondent has been involved in several previous domain name disputes, and has been ordered to transfer domain names to its legitimate owners (see, among others, Medtronic, Inc. v. JH Kang,WIPO Case No. DCO2020-0040; and Gilead Sciences, Inc. v. JH Kang,WIPO Case No. DCO2020-0019). In addition, the Complainant has also produced evidence that the Disputed Domain Name is offered for sale at the amount of USD 599. Accordingly, the Panel finds that the Respondent has registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant, who is the owner of the trademark for valuable consideration in excess of his documented out-of-pocket costs directly related to the Disputed Domain Name, according to the paragraph 4(b)(i) of the Policy. The Disputed Domain Name resolves to a pay-per click website. However, the automatic generation of pay-per-click links does not prevent a finding of bad faith. See section 3.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition. Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name 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 Name Pablo A. Palazzi
Sole Panelist
Date: March 1, 2021.
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