WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boehringer Ingelheim International GmbH v. Pan Da Da
Case No. D2016-0486
1. The Parties
The Complainant is Boehringer Ingelheim International GmbH of Ingelheim, Germany, represented by Nameshield, France.
The Respondent is Pan Da Da of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <ofev.top> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 10, 2016. On March 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 11, 2016, 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 11, 2016, the Center sent an email communication to the parties in Chinese and English regarding the language for the proceeding. On March 14, 2016, the Complainant requested 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 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 both Chinese and English, and the proceeding commenced on March 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 7, 2016.
The Center appointed Jonathan Agmon as the sole panelist in this matter on April 11, 2016. 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 German pharmaceutical group of companies that includes about 140 affiliated companies worldwide. The Complainant's main business areas are human pharmaceuticals and animal health. The Complainant markets a product named "Ofev" for the treatment of idiopathic pulmonary fibrosis disease. The Complainant owns an international trademark consisting of OFEV in several countries, registered under the serial No. 1120388 and registered on April 10, 2012. The Complainant also owns multiple domain names consisting of the trademark OFEV such as: <ofevipf.com>, <ipf-ofev.com>, <ipf-ofev.de> and others.
The disputed domain name <ofev.top> was registered on February 15, 2016 by the Respondent.
The disputed domain name currently resolves to an inactive webpage.
5. Parties' Contentions
The Complainant argues that the disputed domain name <ofev.top> is identical to the registered trademark OFEV.
The Complainant argues that the generic Top-Level Domain ("gTLD") ".top" is insufficient to distinguish the disputed domain name from its registered trademark OFEV.
The Complainant further argues that the term "Ofev" is a non-generic term, only known in relation to the Complainant and that it has no meaning whatsoever in English, French or in any other language.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name <ofev.top> and it is not related in any way with the Complainant.
The Complainant argues that it does not carry out any activity for, nor has any business with the Respondent.
The Complainant claims that it neither licensed nor authorized the Respondent to make any use of the Complainant's registered trademark OFEV, or apply for registration of the disputed domain name by the Complainant.
The Complainant argues that further proof of the Respondent's lack of legitimate interests in respect of the disputed domain name, is the fact that the website at the disputed domain name has been inactive since its registration.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. 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 language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of the proceeding should be English.
The Panel cites the following with approval:
"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this 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 abilities to articulate the arguments for the case." (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
a) The disputed domain name consists of Latin letters, rather than Chinese letters;
b) The Respondent did not object to English being the language of the proceeding.
Upon considering the above, the Panel rules that English be the language of the proceeding.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of the registered trademark OFEV.
The disputed domain name reproduces the Complainant's trademark OFEV in its entirety and includes the new gTLD suffix ".top".
Previous UDRP panels have ruled that gTLD suffix generally has no capacity to distinguish a domain name from a trademark (see Dassault (Groupe Industriel Marcel Dassault) v. Ma Xiaojuan, WIPO Case No. D2015-1733; Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080). This rationale applies mutatis mutandis to this case.
The addition of a gTLD ".top" to the disputed domain name does not avoid confusing similarity. See also, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451. Thus, the gTLD ".top" is typically without legal significance since use of a gTLD is technically required to operate a domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.
C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant's trademark OFEV, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.
The Respondent has not submitted any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the OFEV trademark since at least the year 2012.
The disputed domain name is confusingly similar to the Complainant's trademark. Previous UDRP panels have found that "[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095).
Further the disputed domain name is currently inactive which can, in appropriate circumstances, indicate the Respondent's bad faith. See Telstra Corporation Limited v. Nuckear Marshmllows, WIPO Case No. D2000-0003.
Based on the evidence that was presented to the Panel, including the use of the Complainant's trademark in the disputed domain name, the passive holding of the disputed domain name and the Respondent's failure to answer the Complaint, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
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 <ofev.top> be transferred to the Complainant.
Date: April 22, 2016