WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boehringer Ingelheim International GmbH v. Jiaai EAC International Co., Limited
Case No. D2014-0372
1. The Parties
The Complainant is Boehringer Ingelheim International GmbH of Ingelheim am Rhein, Germany, represented by Schiedermair Rechtsanwälte of Frankfurt am Main, Germany.
The Respondent is Jiaai EAC International Co., Limited of Sydney, Australia.
2. The Domain Name and Registrar
The disputed domain name <twynsta.biz> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2014. On March 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 12, 2014, 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.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 7, 2014.
The Center appointed Lynda M. Braun as the sole panelist in this matter on April 14, 2014. 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 the family-owned Boehringer Ingelheim pharmaceutical group of companies with roots going back to 1885, when it was founded by Albert Boehringer. Ever since, the Complainant has become a global research-driven pharmaceutical enterprise and has today about 140 affiliated companies world-wide with approximately 46,000 employees. Thus, the Complainant is one of the world’s twenty leading pharmaceutical companies. The two main business areas of the Complainant are human pharmaceuticals and animal health. In 2012 alone, net sales of the Complainant amounted to billions of Euros.
The Complainant has developed a vast portfolio of human health pharmaceutical products, including, among many others, Twynsta, a receptor blocker medication providing effective and consistent blood pressure reduction. The Complainant is the owner of numerous national and international trademarks relating to the TWYNSTA brand (the “TWYNSTA Mark”). Moreover, the Complainant is the owner of numerous domain names that incorporate the TWYNSTA Mark, including <twynsta.com>, <twynsta.info>, <twynsta.net> and <twynsta.org>.
The Respondent registered the Disputed Domain Name on July 17, 2013 The Disputed Domain Name <twynsta.biz> resolves to a pay-per-click website containing sponsored links to third party commercial websites.
After the Complainant discovered the Respondent’s registration and use of the Disputed Domain Name, the Complainant continued to monitor the website and ultimately had its legal representative send a warning letter to the Respondent on January 31, 2014. On February 6, 2014, the Respondent replied, offering to sell the Disputed Domain Name to the Complainant for EUR 1,890.00. The Complainant responded that it was not interested in making such a purchase. On March 3, 2014, the Respondent communicated to the Complainant again, reiterating that the Disputed Domain Name was “only for sale”.
The Respondent also owns numerous domain names that incorporate the registered trademarks of third parties, including <beiersdorf.biz>, <lufthansa-technik.biz> and <yvesrocher.biz>, which currently resolve to pay-per-click websites containing sponsored links to third party commercial websites.
5. Parties’ Contentions
The Complainant contends that:
- The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- The Disputed Domain Name was registered and is being used in bad faith; and
The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the TWYNSTA Mark based on its longstanding use as well as its national and international trademark registrations for the TWYNSTA Mark. The Disputed Domain Name consists of the TWYNSTA Mark in its entirety and the generic Top-Level Domain (“gTLD”) “.biz”. The Disputed Domain Name is not only confusingly similar, but is also identical to the TWYNSTA Mark.
Moreover, the addition of a gTLD such as “.biz” to a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a)(i) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such 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. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. The Respondent’s lack of reply notwithstanding, there is no evidence in the record that the Respondent is in any way associated with the Complainant.
Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its trademark. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent was improperly using the Disputed Domain Name for commercial gain.
Accordingly, the second element of paragraph 4(a)(ii) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies the following circumstances that, if found, are evidence of registration and use of a domain name in bad faith:
(i) Circumstances indicating that a respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Circumstances indicating that a respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or
(iii) Circumstances indicating that a respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) Circumstances indicating that by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or location or of a product on respondent’s website or location.
This Panel finds that based on the record of this case, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, the registration of the Disputed Domain Name reproducing in its entirety the registered TWYNSTA trademark of the Complainant is clearly aimed to disrupt the Complainant’s business by diverting Internet users who are searching for the Complainant’s product from its official website as well as to prevent the Complainant from registering the Disputed Domain Name. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. The Panel thus concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith.
Second, the website to which the Disputed Domain Name resolves contains hyperlinks that are pay-per-click sponsored ads. As such, the Respondent is not only trading on consumer interest in the Complainant by creating a likelihood of confusion with Complainant’s TWYNSTA Mark in order to generate Internet traffic to its own website and to commercially benefit from the sponsored links that appear on the Respondent’s website, but the Respondent also derives commercial advantage in the form of referral fees. In the Panel’s view, this constitutes bad faith. See Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Lewis Black v. Burke Advertising, LLC, WIPO Case No. D2006-1128. Indeed, it has been held in many previous UDRP decisions that such exploitation of trademarks to obtain commercial gain through use of a pay-per-click website constitutes registration and use of the respective domain names in bad faith. See, e.g., L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623 (pay-per-click website “www.biothermcosmetics.com” et. al); Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383 (pay-per-click website “www.memberequitycards.com” et. al); Future Brands LLC v. Mario Dolzer, WIPO Case No. D2004-0718 (pay-per-click website “www.futurebrandsllc.com”).
Third, the Respondent’s reply to the Complainant’s legal representative’s cease and desist letter, requesting EUR 1,890.00, indicates that the Disputed Domain Name was registered, among other reasons indicated above, for the purpose of selling or otherwise transferring its registration to the Complainant for valuable consideration in excess of any documented out-of-pocket costs directly related to the Disputed Domain Name.
Finally, the fact that the Respondent has registered other domain names, as indicated above, that incorporate registered trademarks owned by third parties is another indication of bad faith. It is difficult to discern any motive other than that of preventing the trademark owner from reflecting the trademark in a corresponding domain name. The Respondent’s conduct regarding the Complainant, therefore, is not an isolated event. For example the Respondent was recently involved in UDRP cases in which the domain names it registered were transferred to their rightful owners. See, e.g., Michelin Recherche et Technique S.A. v. EAC International Co., Limited, WIPO Case No. D2013-1210; Barilla G. e R. Fratelli S.p.A. v. EAC International Co., Limited, WIPO Case No. D2013-1902. The Panel finds that such behavior is sufficient to constitute a pattern of conduct under the Policy, paragraph 4(b)(ii). See Potomac Mills Limited Partnership v. Gambit Capital Management, WIPO Case No. D2000-0062.
Accordingly, the third element of paragraph 4(a)(iii) of the Policy has been met by the Complainant.
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 <twynsta.biz> be transferred to the Complainant.
Lynda M. Braun
Date: April 17, 2014