WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim Pharma GmbH & Co. Kg v. 蒋黎 (Leed Johnny)

Case No. D2020-0264

1. The Parties

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

The Respondent is 蒋黎 (Leed Johnny), China.

2. The Domain Name and Registrar

The Disputed Domain Name <boehringeringelhempetrebates.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2020. On February 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 5, 2020, 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 February 14, 2020 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 February 17, 2020.

On February 14, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on February 17, 2020. The Respondent did not comment on the language of the proceeding.

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 in English and Chinese of the Complaint, and the proceedings commenced on February 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2020.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on April 7, 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 is a global pharmaceutical enterprise with net sales of the group amounting to some EUR 17.5 billion in 2018.

The Complainant is the registered owner of the following trademark:

BOEHRINGER-INGELHEIM, International trademark, Registration No.221544, registered on July 2, 1959.

The Complainant has domain name registrations consisting of the wording "BOEHRINGER INGELHEIM," e.g., <boehringer-ingelheim.com> registered in 1995, and <boehringeringelheim.com> registered in 2004.

The Respondent was not identified in the WhoIs data, but the Respondent’s information was later disclosed by the Registrar. The Respondent is an individual in China, and the Disputed Domain Name <boehringeringelhempetrebates.com> was registered on February 3, 2020. The Disputed Domain Name resolves to a parking page with commercial links.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions could be summarized as follows:

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

The Disputed Domain Name incorporates the distinctive part of the Complainant’s BOEHRINGER INGELHEIM trademark, without a letter “i”, and with an additional element “pet rebates”. The “pet rebates” element is a generic term and is not able to create a sufficient distinction between the Disputed Domain Name and the Complainant’s trademark. In fact, the addition of the “pet rebates” element to the distinctive part of the Complainant’s trademark increases the likelihood of confusion with another domain name <boehringeringelheimpetrebates.com>, owned by the Complainant for its pet products. The Complainant therefore submits that the Disputed Domain Name is confusingly similar to a trademark in which it has rights according to the terms of the Policy.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Respondent does not own any trademark, trade name or any other right in the name “BOEHRINGER INGELHEIM”. The Respondent is not licensed or authorized by the Complainant to use the Complainant’s BOEHRINGER INGELHEIM trademark in any form. The Respondent is not making any legitimate noncommercial or fair use of the Disputed Domain Name as the Disputed Domain Name redirects to a parking page with commercial links only, without any information, or service or goods provided. In the light of these circumstances, the Complainant asserts that the Respondent has no rights or legitimate interest in the Disputed Domain Name.

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

The Disputed Domain Name was registered exclusively for the purpose of exploiting the reputation of the Complainant’s BOEHRINGER INGELHEIM trademark. The Respondent intentionally uses the Disputed Domain Name to attract Internet Users for commercial gain. Under these circumstances, the Complainant submits that the Disputed Domain Name was registered and is being used in bad faith.

B. Respondent

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

6. Language of Proceeding

Paragraph 11(a) of the Rules provides that “[u]nless 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”.

Paragraph 10(b) of the Rules provides that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”; and paragraph 10(c) of the Rules provides that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition […].”

The Registration Agreement for the Disputed Domain Name is in Chinese. The Complainant requests the language of proceeding to be English on February 17, 2020. The Respondent did not reply to the request of the Complainant. Given the following factors, the Panel decides that the language of proceeding be English.

1. The Disputed Domain Name <boehringeringelhempetrebates.com> comprises completely Latin elements and covers the English words “pet rebates”;

2. Given that the content of the web site to which the Disputed Domain Name resolves contains extensive use of English, it appears that the Respondent understands and is able to communicate in English. The Complainant is not in a position to conduct these proceedings in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese;

3. The Center has notified the parties of the potential language issue in both Chinese and English on February 25, 2020. The Respondent was given an opportunity to comment on the language of the proceeding and failed to do so. The Center notified the Respondent of its default on March 24, 2020.

Given these facts, the Panel is satisfied that the Respondent has sufficient familiarity with English that the Respondent should be able to understand the language of the Complaint, and has chosen not to respond. Therefore, it will not be prejudicial to the Respondent in its abilities to articulate its arguments in Chinese or English in the administrative proceeding, whereas requiring the Complainant to translate the Complaint and all supporting materials into Chinese would cause unnecessary delay to the administrative proceeding. (Dolce & Gabbana S.r.l. v. Zhang Yali, WIPO Case No. D2013-1101). The Panel does not consider it prejudicial to the Respondent to adopt English as the language of the proceeding, and determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding and the decision will be rendered in English.

7. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this Administrative Proceeding and obtain the requested remedy (in this case, transfer of the Disputed Domain Names), the Complainant must prove that each of the three following elements are present:

(i) the Disputed 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 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 alleges that the Disputed Domain Name <boehringeringelhempetrebates.com> is identical or confusingly similar to this trademark.

The Complainant has established that it is the owner of trademarks BOEHRINGER-INGELHEIM and BOEHRINGER INGELHEIM

The Disputed Domain Name incorporates the entirety of the Complainant’s trademark BOEHRINGER INGELHEIM, with a slight typo of a missing “I” and includes the additional “pet rebates” element. The addition of “pet rebates” element term does not serve to distinguish the Disputed Domain Name from the Complainant’s trademarks. In fact, it may likely cause Internet users to believe that the Disputed Domain Name designates a site operated by, or on behalf of, the Complainant or a subsidiary or associate of the Complainant. Therefore, the addition of the “pet rebates” element does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademarks.

Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interest in respect of the [disputed] domain name[.]”.

Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]:

(i) before any notice to [the respondent] of the dispute, [the 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 [the respondent has] acquired no trademark 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 trademark or service mark at issue”.

A complainant may show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Complainant has established that it is the owner of the BOEHRINGER-INGELHEIM and BOEHRINGER INGELHEIM trademarks, and it that is has neither licensed nor authorized the Respondent to make any use of such trademarks or apply for registration of the Disputed Domain Name.

There is no evidence indicating that the Respondent is commonly known by the Disputed Domain Name or the name of “BOEHRINGER-INGELHEIM”. And the Disputed Domain Name redirects to a parking webpage with several commercial links only.

The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production thus shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.

The Respondent did not submit any allegation or evidence to support a finding that the Respondent has rights or legitimate interests in the Disputed Domain Name or that it is used in connection with a bona fide offering of goods or services or for noncommercial or fair use as demonstrated in paragraph 4(c) of the Policy.

Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith”.

Paragraph 4(b) of the Policy explicitly states, in relevant part, that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”

Precedent indicates that “whether the commercial gain from misled Internet users is gained by the Respondent or by the Registrar (or by another third party), it remains that the Respondent controls and cannot (absent some special circumstance) disclaim responsibility for, the content appearing on the website to which the disputed domain name resolves”. (See StudioCanal v. Registration Private, Domains By Proxy, LLC / Sudjam Admin, Sudjam LLC., WIPO Case No. D2018-0497).

The Complainant’s trademark BOEHRINGER-INGELHEIM has been registered in many countries around the world and BOEHRINGER INGELHEIM trademark is registered in China. Both of these registrations were made prior to the registration of the Disputed Domain Name. The Respondent chose the BOEHRINGER INGELHEIM trademark, without the letter “i” as the only distinctive part of the Disputed Domain Name. The Respondent has not submitted any allegation or evidence suggesting that the Respondent selected the BOEHRINGER INGELHEIM with the generic term “pet rebates” for any reason other than the reputation of the Complainant’s trademark. The Panel finds that the Disputed Domain Name has been registered in bad faith.

The Disputed Domain Name resolves to a web site with commercial links. There is no evidence in the record to support a finding that this use has been for any reason other than the intent to attract Internet users for commercial gain. The Panel finds that the Respondent’s use of the Disputed Domain Name attempts to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion. This use of the Disputed Domain Name is in bad faith.

Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy.

8. 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, <boehringeringelhempetrebates.com> be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: April 21, 2020