WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim Pharma GmbH & Co. Kg v. Taminato Kiyoko

Case No. D2019-3109

1. The Parties

The Complainant is Boehringer Ingelheim Pharma GmbH & Co. Kg., Germany, represented by Nameshield, France.

The Respondent is Taminato Kiyoko, China.

2. The Domain Name and Registrar

The disputed domain name <boehringerplus.online> (the “Domain Name”) is 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 December 17, 2019. On December 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 18, 2019, 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 December 24, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On December 26, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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, in English and Chinese, of the Complaint, and the proceedings commenced on January 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 24, 2020.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on March 6, 2020. 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, Boehringer Ingelheim Pharma GmbH & Co. Kg., is a pharmaceutical group of companies going back to 1885. The Complainant now has approximately 140 affiliated companies worldwide with approximately 50,000 employees.

The Complainant owns a number of trademarks for BOEHRINGER (the “Trade Mark”) in several countries, such as the following:

- International trademark BOEHRINGER Registration No. 799761, registered on December 2, 2002, which designates China;

- European Union trademark BOEHRINGER Registration No. 2932853, registered on March 2, 2005.

The Complainant also owns a number of domain names incorporating the term “Boehringer”, such as <boehringer.com>, registered on and used since January 12, 2000 and <boehringerplus.jp>, registered since June 2, 2015.

The Domain Name was registered on December 5, 2019 and refers to an online store offering for sale vehicle accessories, DIY tools and etc. that are unrelated to the Complainant’s business.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Trade Mark BOEHRINGER, that addition of the term “plus” does not change the overall impression of the designation as being connected to the Complainant’s trademark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith.

The Complainant requests transfer of the Domain Name.

B. Respondent

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

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The burden is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.

Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

The Panel will therefore deal with each of these requirements.

6.1. Preliminary Procedural Issue – Language of the Proceeding

The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement is Chinese.

The Complainant submits in paragraph 10 of the Complaint as well as in its communication to the Center on December 26, 2019, that the language of the proceeding should be English. The Complainant contends that the Domain Name is confusingly similar to the Trade Mark; the English language is the language most widely used in international relations; the Domain Name is formed by Roman characters as the English language rather than the Chinese script; if the documents have to be submitted in Chinese, the Complainant would have to incur substantial expenses for translation.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.

The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that in any case, all of the communications from the Center to the Parties were transmitted in both Chinese and English. The Respondent chose not to respond to the Complaint and comment on the language of the proceeding. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.

6.2. Substantive Issues

A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark in which it has rights. The Complainant has clearly established that there are trademarks in which it has rights. The Complainant’s BOEHRINGER mark has been registered as noted above, and widely used in connection to the Complainant’s pharmaceutical business.

The Panel notes that the Domain Name <boehringerplus.online> incorporates the Complainant’s BOEHRINGER Trade Mark in its entirety. The addition of the term “plus” does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark (see Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888 and section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Panel is of the opinion that the addition of generic Top-Level Domain (“gTLD”) can be disregarded when comparing the similaritiy between a domain name and a trademark (see Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah, WIPO Case No. D2014-0269).

Therefore, the Panel considers the Domain Name to be confusingly similar to the Complainant’s BOEHRINGER Trade Mark.

Accordingly, the Complainant has made out the first of the three elements that it must establish.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.

The Complainant contends that there is no relationship between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain names incorporating the Trade Mark. The Panel also notes that the Respondent has not been commonly known by the Domain Name and that the Respondent does not appear to have acquired trademark or service mark rights. The Respondent’s use and registration of the Domain Name was obviously not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent exists.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded, and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

The Trade Mark was registered and used before the Domain Name was registered. There are several factors which clearly indicate that the Respondent had knowledge of the Trade Mark. The mark is made up of the founder’s surname. The Complainant’s business is now a billion-Euro business. The Domain Name includes the Complainant’s distinctive and well-known Trade Mark in its entirety. Moreover, the composition of the Domain Name is very similar to the domain name <boehringerplus.jp> used by the Complainant for healthcare professionals. The Panel is satisfied that the Respondent must have been aware of the Complainant’s Trade Mark when it registered the Domain Name and such registration was made in bad faith.

The Panel therefore finds that the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith. (See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks).

The Domain Name points to an online store that is unrelated to the Complainant’s business and is used to promote unrelated products (such as vehicle accessories, DIY tools, etc.) to those offered by the Complainant. The Panel finds that by using the Domain Name incorporating the Complainant’s Trade Mark in its entirety in connection with a website to offer products unrelated to those offered by the Complainant, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.

In addition to the circumstances of registration and use referred to above, the following facts indicate that the Domain Name was registered and is being used in bad faith – the Complainant has a well-known trademark; the Respondent failed to file a response; the Respondent appears not to have given complete contact details when it registered the Domain Name; the Center’s attempt to send the Written Notice by facsimile to the number in the WhoIs was not successful. The above-mentioned circumstances are further indicative of the Respondent’s bad faith.

For the above-cited reasons, the Panel finds that the Complainant has established the third element of the Policy.

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 Domain Name <boehringerplus.online> be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: March 20, 2020