WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boehringer Ingelheim International GmbH v. Sushanying
Case No. D2016-0835
1. The Parties
The Complainant is Boehringer Ingelheim International GmbH of Ingelheim, Germany, represented by Nameshield, France.
The Respondent is Sushanying of Maoming, Guangdong, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <ofev.wang> is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 27, 2016. On April 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 28, 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 May 3, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On May 4, 2016, the Complainant requested that English be the language of the proceeding. On the same day, the Respondent requested that Chinese be 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 of the Complaint, and the proceeding commenced on May 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2016. The Response was filed with the Center on May 27, 2016.
The Center appointed Douglas Clark as the sole panelist in this matter on June 7, 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 company. It manufactures and sells the drug OFEV. OFEV is approved as a prescription drug for the disease's treatment of idiopathic pulmonary fibrosis (commonly known as "IPF"), in a number of countries including by the Food and Drug Administration (FDA) in United States of America.
The Complainant owns an International Trademark Registration for OFEV, designating several countries including China, registered under the number No. 1120388 on April 10, 2012.
Furthermore, the Complainant owns multiple domain names containing "ofev", including <ofev.com>.
The Respondent is an individual based in China.
The disputed domain name was registered on March 1, 2016.
The disputed domain name does not resolve to any page.
5. Parties' Contentions
Identical or Confusingly Similar
The Complainant contends that the disputed domain name <ofev.wang> and the trademark OFEV are identical or confusingly similar.
No rights or legitimate interests
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for OFEV. It, therefore, has no rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
Before acquiring the disputed domain name, it is highly likely the Respondent's knew of the Complainant's rights in the mark OFEV and acquired the disputed domain name to disrupt the business of the Complainant and to prevent the Complainant from reflecting its mark in a corresponding domain name and/or disrupting the Complainant's business.
Identical of Confusingly Similar
The Respondent submitted the Complainant's product OFEV is a specialist drug that is not widely known in China and has not been registered with the Chinese State Food and Drug Administration.
Further, the letters OFEV can be used as an abbreviation of the Chinese characters "欧风儿" (transliterated in full as "ou feng er") a normal Chinese name. "OFE" therefore are the initials of "ou feng er". "v" (standing for "verified") represents that the name has been verified on the Internet. OFEV can also mean "of electric vehicles".
Rights or Legitimate Interests
The Respondent asserted further that it had registered the disputed domain name <ofev.wang> well after the end of the sunrise period for registration of ".wang" domain names which had expired in 2014 which would lead people to believe the Complainant had given up its rights to register OFEV under the generic Top-Level Domain ("gTLD") ".wang".
It had, as a result, acquired its own legitimate rights.
Registered and Used in Bad Faith
The Respondent further denied that it had registered and used the disputed domain name in bad faith. It had not offered to sell or rent the disputed domain name. There is no evidence it sought to disrupt the business of the Complainant. Given the very limited business area of the Complainant it had no relation to the Respondent and the Respondent did not know of the Complainant's brand. The disputed domain name had not been registered for commercial purposes. The disputed domain name had in fact been registered to create a blog for a friend named "欧风儿(ou feng er)" as a birthday present. This had not yet been done as the birthday had not yet come around.
6. Discussion and Findings
A. Language of Proceeding
The language of the Registration Agreement is Chinese. 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 Complainant requested the language of the proceeding be English on the grounds that the Complainant conducted business in English and it would be unduly burdensome for it to translate the Complaint into English.
The Respondent requested the language of proceeding be Chinese on the basis that it did not understand English well and it would be difficult for it to handle the case in Chinese.
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 filed a Response in Chinese. From the Response, it is clear that the Respondent has understood the claim made against it and has been able to defend itself. The Panel will render its decision in English.
B. Identical or Confusingly Similar
The disputed domain name <ofev.wang> is other than the gTLD ".wang" identical to the Complainant's trademark OFEV.
The ownership of a trademark is generally considered to be a threshold standing issue. The location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. However, such factors may bear on a panel's determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP. See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The first part of paragraph 4(a) of the Policy is therefore satisfied.
C. Rights or Legitimate Interests / Registered and Used in Bad Faith
The real issue in this case is whether the Respondent has rights or legitimate interests in the disputed domain name and whether it has registered and used the disputed domain name in bad faith.
The Panel has considered all the evidence and determined that the Complainant has not satisfied its burden of proving that the Respondent registered the disputed domain name in bad faith.
The argument that the Complainant relies on to establish the disputed domain name was registered in bad faith is that it has trademark rights in OFEV for pharmaceutical products.
The trademark OFEV is a made up of four letters only and is a specialist product. In order to make a finding that a respondent registered the domain name with an intention of disrupting or trading of the complainant's goodwill, there needs to be some evidence of a link between the registration and/or use of the domain name and the trademark holder. For well-known consumer marks it is possible to make an inference that the domain name registrant must have known of the trademark. However, in the present case without some other evidence showing that the domain name holder was or should have been aware of the trademark, the burden tends to be higher. While the explanation given by the Respondent is not particularly credible or satisfactory, the burden remains on the Complainant to make out its case.
There is, therefore, insufficient evidence for the Panel to determine the Respondent knew of the Complainant's trademark rights when it registered the disputed domain name. The Complainant has therefore not satisfied the burden of proving the disputed domain name was registered in bad faith.
This determination is made without prejudice to the Complainant bringing another UDRP complaint should it obtain evidence of registration in bad faith of the disputed domain name not available at the time of the filing of this Complaint. Given this, and so as to not to cause conflicting decisions, the Panel declines to make findings as to whether the Respondent has rights or legitimate interests in the disputed domain name or has used the disputed domain name in bad faith. This should not be interpreted to mean that the Panel considers the Respondent does not have rights or legitimate interests or that it used the disputed domain in bad faith (or vice versa). The Panel makes its decision solely on the basis that the current evidence does not support a find that the disputed domain name was registered in bad faith and accordingly the Panel has elected to consider only this part of the Policy.
The Panel would add that it does not consider the argument that because the Complainant did not register the disputed domain name <ofev.wang> during the sunrise period indicates an abandonment of the Complainant's rights. All intellectual property holders need to make decisions as to what rights to register within limited budgets. It is not necessary to apply to register every possible domain name.
For all the foregoing reasons, the Complaint is denied.
Date: June 22, 2016