WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim Pharma GmbH & Co. KG v. 高海生 (Hai Sheng Gao)

Case No. D2020-0586

1. The Parties

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

The Respondent is 高海生 (Hai Sheng Gao), China.

2. The Domain Name and Registrar

The disputed domain name <boehringerplus.xyz> is registered with West263 International Limited (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2020. On March 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2020, 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 March 10, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on March 10, 2020. 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 March 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2020.

The Center appointed Douglas Clark as the sole panelist in this matter on April 24, 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 family-owned pharmaceutical group of companies with roots going back to 1885, when it was founded by Albert Boehringer in Ingelheim am Rhein, Germany. It has become a global research-driven pharmaceutical enterprise and has about 140 affiliated companies worldwide with roughly 50,000 employees today. The three main business areas of the Complainant are human pharmaceuticals, animal health and biopharmaceuticals. The Complainant achieved net sales of around EUR 17.5 billion in 2018.

The Complainant is the owner of various BOEHRINGER trademarks in the world, including the international trademark No. 799761 which, inter alia, designates China and Japan, registered on December 2, 2002 in classes 1, 3, 5, 10, 16, 30, 31, 35, 41, 42 and 44 and European Union trademark No. 002932853 registered on March 2, 2005 in classes 1, 3, 5, 10, 16, 30, 31, 41, 42 and 44.

The Complainant is the owner of numerous domain names which incorporate the word “boehringer”, including <boehringer.com> registered and used since January 12, 2000 and <boehringerplus.jp> registered since June 2, 2015.

The Respondent is an individual based in China.

The disputed domain name was registered on March 3, 2020 and does not at the date of this decision resolve to an active webpage. According to the evidence provided by the Complainant, the disputed domain name previously resolved to a shopping website in the Japanese language.

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar

The Complainant contends that the disputed domain name <boehringerplus.xyz> is confusingly similar to the trademark BOEHRINGER and it contains the Complainant’s trademark BOEHRINGER in its entirety.

The Complainant asserts that addition of the term “plus” does not change the overall impression of the designation as being connected to the Complainant’s trademark. The addition of the term “plus” worsens the likelihood of confusion, as the domain name <boehringerplus.jp> is used by the Complainant for healthcare professionals.

The Complainant contends that addition of the new generic Top-Level Domain (“gTLD”) “.xyz” is not sufficient to escape the finding that the disputed domain name is identical to the Complainant’s trademarks and does not change the overall impression of the designations as being connected to its trademark.

No rights or legitimate interests

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant claims that once such a prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.

The Complainant asserts that the Respondent is not identified in the Whols database by a name the same or similar to the disputed domain name, but as “Hai Sheng Gao”, and contends that that the Respondent is not commonly known by the disputed domain name.

The Complainant contends that the Respondent is not affiliated with nor authorized by the Complainant in any way. The Complainant does not carry out any activity for, nor has any business with the Respondent. Neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark BOEHRINGER or apply for registration of the disputed domain name by the Complainant.

The disputed domain name points to an online store unrelated to the disputed domain name and the Complainant contends that the Respondent has used the disputed domain name in a way that fails to confer rights or legitimate interests.

Registered and used in bad faith

The Complainant contends that the Respondent has registered the disputed domain name and is using it in bad faith.

Based on the distinctiveness of the Complainant’s trademarks and reputation, the Complainant asserts it is reasonable to infer that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademarks.

The disputed domain name redirects to an online store unrelated to the Complainant and the Complainant contends that the Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Complainant. The Complainant further asserts that the Respondent is obtaining commercial gain from his use of the disputed domain name and the resolving website.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

The Language of the Registration Agreement is Chinese.

The Complainant requested the language of the proceeding be in English on the grounds that (i) English language is the language most widely used in international relations and is one of the working languages of the Center; (ii) the disputed domain name is formed by words in Roman characters (ASCII) and not in Chinese; (iii) the disputed domain name is confusingly similar to the Complainant’s trademark; and (iv) in order to proceed in an language other than English the Complainant would have had to retain specialized translation services at a cost very likely to be higher than the overall cost of these proceedings. The use of Chinese in this case would therefore impose a burden on the Complainant which must be deemed significant in view of the low cost of these proceedings.

The Respondent did not respond to this request.

Paragraph 11(a) of the Rules provides 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 Center made a preliminary determination to:

1) accept the Complaint as filed in English;

2) accept a Response in either English or Chinese;

3) appoint a Panel familiar with both languages mentioned above, if available.

The final determination of the language of the proceeding lies with this Panel.

The Respondent did not respond to the Center’s preliminary determination.

This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.

As set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delays and expense. The Panel would have accepted a Response in Chinese, but none was filed. These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.

6.2 Substantive Issues

A. Identical or Confusingly Similar

The Panel finds the disputed domain name <boehringerplus.xyz> is confusingly similar to the Complainant’s trademark because the disputed domain name incorporates the Complainant’s trademark BOEHRINGER in full, followed by the term “plus”. The Complainant’s trademark is clearly recognizable in the disputed domain name. The additional term “plus” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark BOEHRINGER. The gTLD “.xyz” should be disregarded under the first element confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.

The first element of paragraph 4(a) of the Policy is therefore satisfied.

B. Rights or Legitimate Interests

The Respondent has not responded to the Complaint to assert any rights or legitimate interests.

Section 2.1 of the WIPO Overview 3.0 provides:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent has no business or any kind of relationships (i.e., licensor, distributor) with the Complainant. Further, the Respondent is not commonly known by the disputed domain name. Considering the absence of a response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.

The second element of paragraph 4(a) of the Policy is therefore satisfied.

C. Registered and Used in Bad Faith

Based on the evidence, the Panel has no hesitation in finding that the disputed domain name was registered in bad faith and is being used in bad faith.

The Complainant’s trademark BOEHRINGER was registered worldwide before the registration of the disputed domain name. The disputed domain name was registered 20 years after the Complainant has registered and used the domain name <boehringer.com> and almost five years after the Complainant has registered the domain name <boehringerplus.jp>. The Panel finds that the Respondent could not have chosen and registered the disputed domain name in good faith without having been aware of the Complainant especially given its reputation and extensive presence worldwide in the pharmaceutical industry.

The disputed domain name resolved to an online shopping website offering various products for sale, for example, headphones, rugs, purses and etc. The disputed domain name has been used to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s trademark BOEHRINGER as to the source sponsorship, affiliation, or endorsement of the services of the website, which falls into paragraph 4(b)(iv) of the Policy. Although the disputed domain name does not resolve to an active website at the time of this decision, it does not prevent a finding of bad faith use under the current circumstances.

Under all the circumstances of this case, the Panel is satisfied that the Respondent registered the disputed domain name with the Complainant’s trademark BOEHRINGER in mind and has used the disputed domain name in bad faith.

For the above reasons, the third part of the paragraph 4(a) of the Policy is therefore satisfied.

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 <boehringerplus.xyz> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: May 7, 2020