WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim Pharma GmbH & Co. KG v. 域名管理 2

Case No. D2015-0049

1. The Parties

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

The Respondent is 域名管理2 of China.

2. The Domain Names and Registrar

The disputed domain names <boehringer.网址>, <micardis.网址>, <mucosolvan.网址> and <spiriva.网址> are registered with Internet Domain Name System Beijing Engineering Research Center LLC (ZDNS) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2015. On January 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 14, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for the disputed domain names <boehringer.网址>, <micardis.网址> and <spiriva.网址> and providing the contact details. On January 14, 2015, the Complainant informed the Center that the email address: […]@boehringer-ingelheim.com or the Respondent is as same as that of the Complainant.

On January 15, 2015, the Complainant submitted an amended Complaint correcting a typo in the Complaint regarding the disputed domain name <mucosolvan.网址>. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with this disputed domain name. On January 19, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for this disputed domain name and providing the contact details.

On January 19, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on January 26, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2015.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on February 23, 2015. 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 (1861-1939) in Ingelheim am Rhein. The Complainant has since become a global research-driven pharmaceutical enterprise, with 140 affiliated companies world-wide employing an estimate of 46,000 employees.

The Complainant owns a vast portfolio of brands including the words “Boehringer”, “Micardis”, “Mucosolvan” and “Spiriva” in several countries in the world.

The Complainant also owns multiple domain names comprising the trademarks BOEHRINGER, MICARDIS, MUCOSOLVAN and SPIRIVA and has a substantial Internet presence.

The disputed domain names have been registered on January 5, 2015 by the Respondent.

5. Parties’ Contentions

A. Complainant

First, the Complainant asserts that the disputed domain names are identical or confusingly similar to its marks. The reasons are summarized as follows:

1. The Complainant owns numerous trademarks and domain names including the words BOEHRINGER, MICARDIS, MUCOSOLVAN and SPIRIVA in several countries.

2. The new generic Top-Level Domain (“new gTLD)” “.网址” is an IDN gTLD being proposed in ICANN’s new gTLD program, it translates as “Internet website” in Chinese.

3. The Complainant contends that the addition of the new gTLD “.网址” is not sufficient to escape the finding that the disputed domain names are identical to its trademarks and does not change the overall impression of the designation as being connected to a trademark of the Complainant. It does not avoid the likelihood of confusion between the disputed domain names and the Complainant, its trademarks and its domain names associated.

Second, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The grounds are summarized as follows:

1. The Complainant contends that the disputed domain names are identical to its prior trademarks.

2. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain names and it is not related in any way with the Complainant.

3. The Complainant does not carry out any activity for, nor has any business with the Respondent.

4. Neither licence nor authorization has been granted to the Respondent to make any use, or apply for registration of the disputed domain names by the Complainant.

5. The disputed domain names have been registered by “域名管理2”. Prior panels have held that a Respondent was not commonly known by a disputed domain name if the WhoIs information was not similar to the disputed domain name.

6. According to the WhoIs record, the disputed domain names have been registered with the Complainant’s email: […]@boehringer-ingelheim.com.

7. The disputed domain names display an inactive page.

Third, the Complainant contends that the Respondent has registered and is using the disputed domain names in bad faith. The grounds are summarized as follows:

1. The disputed domain names are identical to the Complainant’s trademarks.

2. The Respondent uses as Registrant email the Complainant’s email address.

3. The disputed domain names are inactive (“passive holding”) since their registration.

4. Given the notoriety of the Complainant’s trademarks, it seems impossible for the Respondent to use the disputed domain names in good faith. Prior UDRP decisions stated that passive holding, under the appropriate circumstances, falls within the concept of the domain name being used in bad faith, particularly where the domain name in question contains a well-known trademark.

5. Finally, the Complainant contends that the Respondent has registered the disputed domain names in order to deprive the Complainant of the ability to register its trademarks as domain names.

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 for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented to the Panel, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. The Complainant has submitted a request that English should be the language of the present proceeding. The Respondent did not comment on the Complainant’s request.

After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language for the present proceeding shall be in English and the decision will be rendered in English. The Panel based its decision on the following reasons:

(i) The Panel’s discretion under the Policy

Paragraph 11(a) of the Rules provides:

“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.”

Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.

(ii) The Circumstances of this Case

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.

In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest that, in the interests of fairness, the language of the proceeding ought to be the English language. In particular, the Panel notes that (a) the disputed domain names are made up of letters in Ascii-Script and could be pronounced phonetically in English; (b) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, the Respondent has chosen not to respond to the Complainant’s allegations.

Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. The Panel decides that the proceeding shall be English and the decision will be rendered in English.

6.2. Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must establish that each of the three following elements is satisfied:

(i) the disputed domain names are 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 names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the BOEHRINGER, MICARDIS, MUCOSOLVAN and SPIRIVA marks (“the BOEHRINGER et al. Marks”) in connection with pharmaceutical products in several countries in the world. The Panel finds that the BOEHRINGER et. al. Marks are distinctive in connection with the goods and services offered by the Complainant in many countries.

In assessing the degree of similarity between the Complainant’s trademark and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s trademark and the disputed domain names are to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet users seeking information about the Complainant’s products or services.

The disputed domain names consist of the Complainant’s BOEHRINGER et al. Marks in their entirety with the addition of the gTLD suffix “.网 ”. The Panel is of the view that the most prominent and distinctive part of the disputed domain names are the words “Boehringer”, “Micardis”, “Mucosolvan” and “Spiriva”, which are identical or confusingly similar to the Complainant’s registered BOEHRINGER et. al. Marks. Given the substantial goodwill and distinctiveness of the Complainant’s marks, the addition of suffixes such as “.网 ”, a Chinese character which translates loosely to “net”, “network” or “website” is not typically a distinguishing factor.

The Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names:

(1) The Respondent has not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the “Boehringer”, “Micardis”, “Mucosolvan” and “Spiriva” terms.

(2) There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the BOEHRINGER et al. Marks.

(3) There is no indication whatsoever that the Respondent is commonly known by the disputed domain names and/or is using the disputed domain names in connection with a bona fide offering of goods or services. Indeed, the disputed domain names have been registered by “域名管理2”.

(4) On the contrary, the disputed domain names are currently connected to an inactive websites with no demonstrable evidence of use of the disputed domain names for the purpose of bona fide offering of goods or services. The Panel finds that the Respondent therefore does not have the right to use the BOEHRINGER et al. Marks in the disputed domain names. Such behaviour on the part of the Respondent clearly shows that it is not using the disputed domain names in connection with a bona fide offering of goods or services and that the Respondent has no rights or legitimate interests in the disputed domain names.

(5) The Complainant and its BOEHRINGER et al. Marks enjoy substantial goodwill and high degree of recognition in connection with pharmaceutical products and are registered trademarks in many countries all over the world. Consequently, in the absence of contrary evidence from the Respondent, the BOEHRINGER et al. Marks are not those that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1). Based on the above reasons, the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden of production to the Respondent to produce evidence to rebut this presumption.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to [the respondent] 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] (as an individual, business, or other organization) [has] been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain names. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests in the disputed domain names.

In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the Respondent has not adduced evidence of any rights or legitimate interests in the disputed domain names.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that a respondent has registered or 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 the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

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

The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by a respondent in appropriate cases.

One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain names in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks often transcends national borders. Taking into account the market presence of the Complainant globally, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain names.

Furthermore, the Complainant has established a substantial presence on the Internet. The Complainant has also registered and used disputed domain names which incorporate the BOEHRINGER et al. Marks. A simple search on the Internet would reveal the presence of the Complainant’s trademarks and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain names. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain names, failing which the Panel draws the conclusion that the disputed domain names were registered in bad faith with intent to create an impression of an association with the Complainant and its products.

Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant’s trademark and where the trademark in question has through substantial use acquired goodwill, a reasonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the Respondent may show that the choices of the disputed domain names were made legitimately and in good faith for the genuine offering of goods or services on the Internet. In this case, there is no evidence that the Respondent has used or intends to use the disputed domain names for purposes of bona fide offering of goods and services over the Internet.

The Panel notes that the websites at the disputed domain names appear to be inactive. In accordance with established precedent, the Panel finds that the passive holding of the disputed domain names does not as such prevent a finding of bad faith. See WIPO Overview 2.0, paragraph 3.2.

Furthermore, the Complainant has also adduced evidence to show that the Respondent has adopted an email address: […]@boehringer-ingelheim.com which is the same as that of the Complainant. In the absence of any plausible explanation from the Respondent, the Panel finds that this is indicative that the Respondent attempts to pass off the disputed domain names as those officially endorsed or registered by the Complainant. Such conduct is indicative of registration and use of the disputed domain names in bad faith.

The Respondent could have explained its choice of the disputed domain names and its subsequent conduct. However, the Respondent did not do so and the Panel was not provided with any plausible explanation.

The Panel notes that the Complainant has adduced evidence and proved that by registering and using the confusingly similar disputed domain names, the Respondent’s likely purpose is disrupting the Complainant’s business. The Panel finds that given the substantial goodwill of the Complainant’s BOEHRINGER et al. Marks, a lack of plausible explanation for the choice of incorporating the Complainant’s trademarks in the disputed domain names, a lack of explanation for adopting an email which is the same as that of the Complainant, and the lack of plausible evidence of using the disputed domain names for bona fide offering of goods or services, are certainly relevant factors indicating bad faith registration and use.

Thus, the Panel finds for the Complainant on the third part of the test.

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 names, <boehringer.网址>, <micardis.网址>, <mucosolvan.网址> and <spiriva.网址> be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist
Date: March 9, 2015