WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim GMBH v. Wu Kun, Huang Chao Qiong, Huang Long, Zhou Xiao Wei, Li Yong, Chen Xu, Chen Fei

Case No. D2016-2007

1. The Parties

The Complainant is Boehringer Ingelheim GMBH of Ingelheim, Germany, represented by Nameshield, France.

The Respondents are Wu Kun of Dongguan, Guangdong, China; Huang Chao Qiong of Bazhong, Sichuan, China; Huang Long of Weinan, Shanxi, China; Zhou Xiao Wei of Anyang, Henan, China; Li Yong of Baoji, Shanxi, China; Chen Xu of Yanbian Korean Autonomous Prefecture, Jilin, China; and Chen Fei of Yanbian Korean Autonomous Prefecture, Jilin, China.

2. The Domain Names and Registrar

The disputed domain names <glyxambi.xyz>, <ingelvac.xyz>, <jentadueto.xyz>, <sifrol.xyz>, <synjardy.xyz> and <tradjenta.xyz> are registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on October 4, 2016. On October 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 8, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details.

On October 10, 2016, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. The Respondents 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 Respondents of the Complaint in English and Chinese, and the proceeding commenced on October 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on November 7, 2016.

The Center appointed Francine Tan as the sole panelist in this matter on November 11, 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 family-owned worldwide pharmaceutical group of companies with roots going back to 1885, when it was founded by Albert Boehringer (1861-1939) in Ingelheim am Rhein. Ever since then, the Complainant has become a global research-driven pharmaceutical enterprise and has today about 140 affiliated companies world-wide with approximately 46,000 employees. The two main business areas of the Complainant are human pharmaceuticals and animal health. In 2013 alone, net sales of the Boehringer Group amounted to about EUR 14.1 billion.

The Complainant, as a pharmaceutical group, is the owner of numerous subsidiaries in the world. The trade mark INGELVAC is owned by Boehringer Ingelheim Vetmedica GmbH; the trade marks GLYXAMBI, TRADJENTA, JENTADUETO and SYNJARDY are owned by Boehringer Ingelheim International GmbH; and the trade mark SIFROL is owned by Boehringer Ingelheim Pharma GmbH & Co. KG. The aforesaid subsidiaries are all wholly owned by the Complainant.

The Complainant's portfolio of brands including the terms "INGELVAC", "GLYXAMBI", "TRADJENTA", "SIFROL", "JENTADUETO", and "SYNJARDY" extend to a number of countries. The following are several of its trademark registrations.

The Complainant's trade marks INGELVAC, GLYXAMBI, TRADJENTA, SIFROL, JENTADUETO, and SYNJARDY (the "Trade Marks") have also been registered with the Trademark Clearing House ("TMCH").

The Complainant owns multiple domain name registrations including the wordings "ingelvac", "glyxambi", "tradjenta", "sifrol", "jentadueto", and "synjardy".

The disputed domain name <synjardy.xyz> was registered on September 16, 2016; the remaining five of the disputed domain names were registered on September 22, 2016. The disputed domain names point to websites displaying sponsored links.

On September 28, 2016, the Complainant's representative sent a cease-and-desist letter by email to the email address in accordance with the WhoIs information of the disputed domain names. The Registrant or a single agent acting on its behalf answered in English, proposing to sell each disputed domain name for USD 1,000.

Subsequent to the reply to the Complainant's cease-and-desist letter, the registrant's WhoIs information changed and each of the disputed domain names reflected different registrants' information.

5. Parties' Contentions

A. Complainant

(1) The disputed domain names are identical to the Trade Marks. The entirety of each of the Trade Marks has been incorporated in the disputed domain names without any adjunction of letter or word.

The only difference comprising the generic Top-Level Domain ("gTLD") ".xyz" is not sufficient to escape the finding that the disputed domain names are identical to the Trade Marks and does not change the overall impression of their being connected to the Trade Marks.

(2) The Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondents are not related in any way to the Complainant. The Complainant does not carry out any activity for, nor does it have any business with the Respondents. The Respondents have not been licenced nor authorized by the Complainant to make any use of the Trade Marks, or to apply for registration of the disputed domain names.

The Respondents have not developed a legitimate use in respect of the disputed domain names. There is no bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain names are for sale on Sedo's platform. Further, in response to the Complainant's cease-and-desist letter, the Respondents proposed an excessive price of USD 1,000 per disputed domain name, which constitutes more than the usual out-of-pocket costs associated with each disputed domain name.

One of the Respondents is already known to the Complainant in a previous UDRP case through the Respondent's name "Huang Chao Qiong" invoving a domain name which contained the Complainant's trade mark PRADAXA. In that case, the panel ordered the transfer of the domain name to the Complainant.

(3) The disputed domain names were registered and are being used in bad faith.

When the Respondents registered the disputed domain names, it would have been advised of the claim of ownership of the Trade Marks by the Complainant since they had been registered with the TMCH.

The Trade Marks in this case have no dictionary meaning or significance other than as the Complainant's trade marks. The adoption of the Trade Marks in the disputed domain names gives rise to the inference that the Respondents registered the disputed domain names for their trade mark value.

The disputed domain names point to websites displaying sponsored links and an offer to sell. The aim of the registration of the disputed domain names was thus only to sell them and/or intentionally to attract visitors for commercial gain by confusion with the Trade Marks.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

6.1 Preliminary Issue – Multiple Respondents

In this case, as indicated above, there are multiple domain names in dispute and also multiple Respondents.

Paragraph 3(c) of the Rules provides as follows: "The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder".

The Center stated that there appeared to be at least prima facie grounds sufficient to warrant accepting the Complaint for the Panel's final determination of the consolidation request on appointment.

The Complainant states its belief that Wu kun, Huang Chao Qiong, Huang Long, Zhou Xiao Wei, Li Yong, Chen Xu and Chen Fei are the same Registrant/Respondent, for the following reasons:

(i) The Registrant or a single agent acting on its behalf, in reaction to the sending of the cease-and-desist letter, answered the cease-and-desist letter for all six disputed domain names.

(ii) Subsequent to the reply to the Complainant's cease-and-desist letter, the registrant's WhoIs information changed and each of the disputed domain names reflected different registrants' information.

(iii) The Registrar is the same for the six disputed domain names.

(iv) The registration date is the same for five of the disputed domain names.

(v)The disputed domain names <synjardy.xyz> and <jentadueto.xyz> have the same Registrant's address.

(vi) The WhoIs information has changed, but the creation date is the same.

(vii) The content of the pages to which the disputed domain names resolve have not changed. They are still parking pages with pay-per-click links and an external link with an offer to sell.

Paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition states the consensus view on this issue as follows:

"WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants' individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties."

In the case of Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281, the panel held:

"…indicia of common control have been found based on commonalities in registrant information, such as shared administrative or technical contacts and shared postal or email addresses, as well as other circumstances in the record indicating that the respondents are related or that a sufficient unity of interests otherwise exists that they may be essentially treated as a single domain name holder for purposes of paragraph 3(c) of the Rules."

It is incumbent upon panels to determine that any consolidation of multiple respondents under paragraph 10(e) will be both procedurally efficient and fair and equitable to all parties. See National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd., WIPO Case No. DAU2008-0021.

The Panel is persuaded in this case, based on the circumstances enumerated by the Complainant, that a consolidation of the proceeding for the six disputed domain names would be procedurally efficient and fair and equitable. Most notably, the email received in response to the Complainant's cease-and-desist letter is a strong indication of common control. The Panel also notes that the disputed domain names all contain the gTLD ".xyz" in combination with a trade mark of the Complainant. Five of the disputed domain names were registered on the same day. The Respondents have not disputed a specific common grievance and common conduct in this case. The Panel is satisfied that the Respondents for the disputed domain names are one and the same person or entity and therefore finds the condition prescribed by paragraph 3(c) of the Rules has been met. Accordingly, the Respondents are hereinafter referred to as the Respondent.

6.2 Preliminary Issue – Language of the Proceeding

The Registration Agreements for the disputed domain names are in Chinese. The Complaint was filed in English and the Complainant requested that English be the language of the proceeding. The Complainant submitted this request on the basis that:

(i) the Respondent understands English as is evident from the fact that it responded to the Complainant's cease-and-desist letter in English;

(ii) English is the most widely used language in international relations and one of the working languages of the Center;

(iii) the disputed domain names are not in Chinese characters but comprise Roman letters;

(iv) the Complainant is German and does not understand Chinese;

(vi) the Complainant would have to incur high costs in having the Complaint and supporting documents translated into Chinese; and

(vii) the Respondent was notified of the proceeding and issue of the language of the proceeding in Chinese and was afforded the opportunity to respond.

Paragraph 11(a) of the Rules states 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 Respondent appears to be able to understand and communicate in English, based on its email response of September 28, 2016. The Respondent did not object to nor respond on the issue of the language of the proceeding. It was advised by the Center in Chinese (and English) of the nature of the administrative proceeding and the applicable deadlines for a response.

The Panel has to ensure that the proceeding takes place with due expedition (paragraph 11 of the Rules) whilst taking into account the interests of the parties. To require the Complainant to translate the Complaint and annexes into Chinese would inevitably lead to a significant delay in the proceeding whereas on the face of it, bearing in mind the nature of the disputed domain names, the Respondent seems familiar with and is able to understand English. The Panel believes that the Respondent's interests would not be prejudiced by its decision that English is to be the language of the proceeding.

6.3 Substantive Issues

A. Identical or Confusingly Similar

The disputed domain names are identical to the Complainant's prior Trade Marks.

The gTLD ".xyz" does not serve to remove the identity with the respective Trade Marks since it constitutes an inherent technical requirement of domain names.

The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy has been met.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. There is no evidence that the Respondent has ever been known by the disputed domain names, nor has the Complainant licensed or permitted the Respondent to use the respective Trade Marks or to apply for any domain name corresponding to the Trade Marks. Further, the Respondent has not invoked any of the circumstances which could indicate the existence of any rights or legitimate interests in the disputed domain names. When the Respondent received the cease-and-desist letter, it did not assert, much less demonstrate, that it had rights or legitimate interests in the disputed domain names but instead, demanded a sum of USD 1,000 for each disputed domain name.

As has been held in many earlier cases and is consistent with the overall consensus view of UDRP panels, e.g., in Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455,a complainant is only required to establish a prima facie case that the respondent lacks rights or legitimate interests. Once a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Panel therefore finds that the requirement of paragraph 4(a)(ii) of the Policy has been met.

C. Registered and Used in Bad Faith

The Panel is persuaded in this case that the Respondent registered and has used the disputed domain names in bad faith. The circumstances present in this case – the fact that the Respondent was in default in responding to the proceeding; the Trade Marks were all registered with the TMCH which meant that if the disputed domain names were registered during the ICANN "Claims Notice" period, the Respondent would have been notified of the Complainant's claims to registered proprietorship of these marks; the Respondent's offer to sell each disputed domain name for USD 1,000 when it received the cease-and-desist letter which is an amount way in excess of reasonable out-of-pocket expenses for registering the disputed domain names; and the absence of rights or legitimate interests in the disputed domain names – all lead to a finding that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. It is indeed hard to conceive how the Respondent, presumably Chinese, would have been able to explain and justify its specific choice of the six disputed domain names comprising very distinctive and unusual words/terms which all happen to be trade marks of the Complainant. The Respondent obviously specifically targeted the Trade Marks. The Panel concludes that the disputed domain names were registered for the purposes described in paragraphs 4(b)(i) and (iv) of the Policy.

The Panel therefore finds that the requirement of paragraph 4(a)(iii) of the Policy has been met.

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 names <glyxambi.xyz>, <ingelvac.xyz>, <jentadueto.xyz>, <sifrol.xyz>, <synjardy.xyz> and <tradjenta.xyz> be transferred to the Complainant.

Francine Tan
Sole Panelist
Date: November 13, 2016