WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim Vetmedica GMBH v. Luzhipeng (卢志鹏)

Case No. D2018-2043

1. The Parties

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

The Respondent is Luzhipeng (卢志鹏) of Beijing, China, represented by ES Law Inc. (英神律师事务所), China.

2. The Domain Name and Registrar

The disputed domain name <equihaler.com> is registered with 22net, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2018. On September 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2018, 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 September 14, 2018 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 September 17, 2018.

On September 14, 2018, 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 September 17, 2018. The Respondent requested that Chinese be the language of the proceeding on September 19, 2018.

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 in English and Chinese, and the proceedings commenced on September 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2018. The Response was filed with the Center on October 11, 2018.

On October 11, 2018, the Respondent sent an email to the Center advising that it had authorized the law firm that submitted the Response on its behalf. On October 12, 2018, the Center requested by email the legal representative’s contact details. On the same day, the Respondent’s legal representative replied by email advising that it had already provided this information in the Response. Later the same day, the Complainant sent an email communication to the Center requesting information regarding the identity of the Respondent’s legal representative. On the same day, the Respondent’s legal representative replied by email.

The Center appointed Matthew Kennedy as the sole panelist in this matter on October 24, 2018. 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 belongs to a group of research-based pharmaceutical companies founded in 1885 that is now present in more than 150 countries. The Complainant developed a veterinary device named “Equihaler” used for administering drugs to horses. The Complainant is the registered proprietor of German trademark registration number 302013069188 for EQUIHALER, applied for on December 19, 2013, and registered from February 14, 2014, specifying veterinary instruments and apparatus in class 10. That trademark registration remains current. The Complainant also registered the domain name <equihaler.eu> on January 29, 2014. That domain name redirects to the Complainant’s company group website.

The Respondent is an individual resident in China. His postal address, as shown in the Registrar’s WhoIs database and in the Response, is actually the street address of the Chinese Ministry of Commerce and other government offices. The Respondent’s email contract address is a gmail account. His telephone and fax contact numbers are a Chinese mobile number. Due to the fact that his contact postal address was false, delivery of the Written Notice was refused. Further, the Respondent’s legal representative’s contact email address, as shown in the Response and on email communications received by the Center on behalf of the Respondent, is in a domain that does not resolve to any active website.

The disputed domain name was registered on January 30, 2014. It does not resolve to any active website.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to the Complainant’s EQUIHALER trademark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Respondent is not related in any way to the Complainant. The Complainant has not granted either a licence or authorization to the Respondent to make any use of the Complainant’s EQUIHALER trademark or to apply for registration of the disputed domain name. The disputed domain name points to an inactive website.

The disputed domain name was registered and is being used in bad faith. The term “equihaler” is only known in relation to the Complainant. It has no dictionary meaning in any language. A Google search for “equihaler” displays several results, all related to the Complainant and its EQUIHALER trademark. The Respondent has made no active use of the disputed domain name. The Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting its trademark in a corresponding domain name, and from promoting its EQUIHALER trademark and associated products.

B. Respondent

The disputed domain name was registered before the Complainant’s trademark. The disputed domain name was registered on January 30, 2014. The Complainant’s trademark was registered with the German patent office on February 14, 2014 and July 21, 2014. EQUIHALER was only a pending trademark application before February 14, 2014 and today, four years later, it still has not been used in commerce (according to an Internet search). Common law rights logically cannot precede a mark’s use in commerce. The Complainant cannot extend its trademark rights to the period prior to registration.

First, at the time of registration of the disputed domain name (January 30, 2014), the Complainant cannot enjoy and protect rights in EQUIHALER as it had not yet obtained registration of its trademark. Second, the Respondent has never engaged in illegal conduct with regard to the disputed domain name.

6. Discussion and Findings

6.1 Language of the Proceeding

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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that English be the language of the proceeding. Its main arguments are that English is the most widely used language in international relations and a working language of the Center; the disputed domain name is registered in Latin script; and translation of the Complaint would require the Complainant to incur undue expenses.

The Respondent requests that Chinese be the language of the proceeding in accordance with paragraph 11 of the Rules. The Complainant has a Chinese subsidiary and is therefore fully able to provide the Complaint in Chinese.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that the Complaint in this proceeding was filed in English and that the Response was filed mostly in Chinese. However, the annex to the Response is in English and discussed in the Response, which demonstrates that the Respondent is indeed able to understand English. Nor does the Respondent deny that he understands that language. The Center has appointed a Panel familiar with both Chinese and English. Therefore, the Panel considers that requiring either Party to translate its submissions would create an undue burden and unnecessary delay, while accepting all documents as filed in their original language causes no unfairness to either Party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that it will accept all documents filed in Chinese without translation.

6.2 Supplemental Filings

After the filing of the Response, both Parties sent email communications to the Center regarding the Respondent’s authorized legal representative. The Panel notes that the Response provides the name, postal and email address of the representative authorized to act for the Respondent in this administrative proceeding in accordance with paragraph 5(c)(ii) of the Rules. The Panel has also included a factual observation regarding that email address in Section 4 above.

6.3 Substantive Issues

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:

(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

Based on the evidence submitted, the Panel finds that the Complainant has rights in the EQUIHALER trademark and that the Complainant acquired those rights before it filed the Complaint on September 6, 2018.

The Respondent points out that the Complainant had no rights in the EQUIHALER trademark at the time of registration of the disputed domain name. However, the Panel does not consider that fact a bar to the Complainant’s standing to initiate a proceeding under the Policy. The Policy makes no specific reference to the date on which the holder of the trademark acquired its rights. For the purposes of the first element of the Policy, it suffices for the Complainant’s trademark rights to have been in existence at the time the Complaint was filed, as in the present case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.1.3.

The disputed domain name wholly incorporates the EQUIHALER trademark. The only additional element is the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix may generally be disregarded in the assessment of confusing similarity between a domain name and a trademark for the purposes of the Policy.

Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a 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.”

The disputed domain name does not resolve to an active website. This circumstance shows that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services for the purposes of the Policy, and there is no evidence that he has made any demonstrable preparations to do so. Nor is this a legitimate noncommercial or fair use of the disputed domain name. The Panel does not find that the Respondent’s use falls within the first or third circumstance of paragraph 4(c) of the Policy.

According to the Registrar’s WhoIs database, the Respondent’s name is “Luzhipeng” (卢志鹏), not “Equihaler”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because he did not raise any such rights or legitimate interests.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.

With respect to registration, the Panel observes that the disputed domain name was registered before the Complainant’s rights accrued. Although the Complainant filed its trademark application for EQUIHALER on December 19, 2013, that trademark application was still pending at the time of registration of the disputed domain name on January 30, 2014. The Complainant’s EQUIHALER trademark was registered from February 14, 2014, fifteen days after the registration of the disputed domain name. The Complainant does not assert any rights prior to registration on the basis of use.

The Panel recalls that, where a respondent registers a domain name before the complainant’s trademark rights accrue (as in the present case), panels will not normally find bad faith on the part of the respondent. See WIPO Overview 3.0, section 3.8.1. However, there is an exception to that general proposition in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the disputed domain name was to capitalize unfairly on the complainant’s nascent trademark rights. See WIPO Overview 3.0, section 3.8.2 and, for example, Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598; and Stoneygate 48 Limited and Wayne Mark Rooney v. Huw Marshall, WIPO Case No. D2006-0916.

The Panel considers that the circumstances of this case are exceptional. The Complainant’s group of companies has a reputation in the pharmaceutical industry. The disputed domain name incorporates the Complainant’s EQUIHALER trademark in its entirety with no additional element besides a gTLD suffix, which is a technical requirement of registration. “Equihaler” is a coined word with no other meaning. The Respondent registered the disputed domain name six weeks after the Complainant filed its trademark application and the day after the Complainant registered the same term in another Top-Level Domain. The Panel finds it implausible that this was mere coincidence and that the Respondent was unaware of the Complainant’s potential rights in EQUIHALER. Rather, it appears that the disputed domain name was registered in anticipation of the Complainant’s trademark rights and that its aim was to take unfair advantage of the reputation that would attach to that trademark when the Complainant used it. See, for example, BML Group Limited v. Rikard Beach, Proxy My Whois AB, WIPO Case No. D2015-1897. The Respondent provides no alternative explanation for his choice of the disputed domain name. Therefore, the Panel considers it more likely than not that the Respondent registered the disputed domain name in bad faith.

With respect to use, the Respondent makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, the disputed domain name incorporates the Complainant’s EQUIHALER trademark with no additional element besides the gTLD suffix “.com”. The Respondent has provided false contact information for himself in the Registrar’s WhoIs database and in the Response, indicating an attempt to conceal his whereabouts. The Respondent has made no active use of the disputed domain name since its registration four years ago. The Respondent argues that he has not engaged in any illegal conduct with regard to the disputed domain name, but he still gives no explanation of any proposed use of the disputed domain name. In the circumstances, these are indicia of bad faith. See, for example, Istanbul Kültür Üniversitesi Türkiye Cumhuriyeti v. Burak Kilanc, Kilanc Family, WIPO Case No. D2016-0391. Therefore, the Panel considers it more likely than not that the Respondent is using the disputed domain name in bad faith.

Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 disputed domain name <equihaler.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: November 1, 2018