WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boehringer Ingelheim International GMBH v. Mori Nao
Case No. D2016-1235
1. The Parties
The Complainant is Boehringer Ingelheim International GMBH of Ingelheim, Germany, represented by Nameshield, France.
The Respondent is Mori Nao of Aomori, Japan.
2. The Domain Name and Registrar
The disputed domain name <pharmaton.xyz> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 17, 2016. On June 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 20, 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 June 21, 2016, the Center transmitted an email to the parties in English and Japanese regarding the language of the proceedings. On June 22, 2016, the Complainant submitted its request that English be the language of the proceedings. The Respondent did not comment on the language of proceedings.
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 English and Japanese, and the proceedings commenced on June 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 19, 2016.
The Center appointed Erica Aoki as the sole panelist in this matter on July 26, 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 owns numerous trademarks and domain names including the word "pharmaton" in several countries. The trademark PHARMATON is also registered in the Trademark Clearinghouse since November 5, 2012.
The Complainant states that the disputed domain name is identical to its trademarks and domain names.
The Respondent registered the disputed domain name <pharmaton.xyz> on May 31, 2016.
5. Parties' Contentions
The Complainant is a family-owned pharmaceutical group of companies with roots going back to 1885, founded by Albert Boehringer (1861-1939) in Ingelheim am Rhein. Boehringer is a global research-driven pharmaceutical enterprise and has about 140 affiliated companies world-wide with roughly 46,000 employees. The net sales of the Boehringer group in 2013 amounted to about EUR 14.1 billion.
PHARMATON is a multivitamin and mineral supplements brand developed to enhance people's physical and mental well-being. PHARMATON contains a unique blend of vitamins, minerals and trace elements and the standardized Ginseng G115 extract. Main target indications are: exhaustion, tiredness, decreasing concentration and mental alertness.
The Complainant owns a portfolio of brands including the word "pharmaton" in several countries, including the Japanese trademark PHARMATON number 4011964 registered on December, 5, 1997; Japanese trademark GINKOBA PHARMATON number 4621159 registered on November 15, 2002; International trademark PHARMATON number 304716 registered on November 6, 1965; European trademark PHARMATON number 010943991 registered on November 5, 2012.
Furthermore, the Complainant is the owner of several domain names that include the wording "pharmaton" such as: <pharmaton.jp> registered on March 26, 2001; <pharmaton.asia> registered on November 22, 2007; <pharmaton.com> registered on February 11, 1996; <pharmaton.at> registered on March 3, 2003; <pharmaton.de> registered on February 10, 2006; <pharmaton.eu> registered on July 30, 2006; <pharmaton.info> registered on July 31, 2001 and <pharmaton.net> registered on April, 27, 1999.
The Complainant contends the disputed domain name is identical to its trademarks. The Complainant states that the disputed domain name includes in its entirety the trademark PHARMATON and the addition of gTLD ".xyz" is not sufficient to escape the finding that the disputed domain name is identical to the Complainant's trademarks.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states that the Respondent has not been licensed, authorized by the Complainant to make any use of the trademark PHARMATON and the disputed domain name points to a website displaying sponsored links on the words which refer to the Complainant's trademarks and products.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant states that the disputed domain name points to a website displaying sponsored links and an offer to sell the disputed domain name, and the Respondent is using the disputed domain name for commercial gain by confusion with the Complainant's trademarks.
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 name is Japanese.
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 proceedings shall be the language of the registration agreement.
Paragraph 11(a) allows the Panel to determine the language of the proceedings having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceedings. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceedings.
The Complainant has requested that English be the language of the proceedings, for the following reasons:
(1) The Complainant is located in Germany and has no knowledge of Japanese since its international business is operated primarily in English and is not able to communicate in Japanese.
(2) The disputed domain name is an English domain name registered in Latin script and not in Japanese and is identical to the Complainant's trademark;
(3) If required to submit the Complaint and Annexes in Japanese, the Complainant would incur substantial translation costs and the proceedings would be delayed;
(4) The content of the website attached to the disputed domain name is written in English;
(5) The choice of language is presumably related to the combined fact that English is the language most widely used in international relations and is one of the working languages of the Centre.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including the fact that the Respondent did not comment on the language of the proceedings and matters such as the Parties' ability to understand and use the proposed language, time and costs.
The Panel considers the facts the Respondent has not filed a Response and has a website in English connected to the disputed domain name and considering all the other matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceedings shall be English.
A. Identical or Confusingly Similar
Based on the facts presented by the Complainant, the Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights, as required under paragraph 4(a)(i) of the Policy. The Panel finds that the disputed domain name is confusingly similar to the Complainant's registered trademark, as the disputed domain name is identical to the Complainant's PHARMATON trademarks.
The ".xyz" extension is disregarded under the first UDRP element confusing similarity test.
Accordingly, the Panel finds that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
The Panel finds the following on the record in this proceeding:
- The Respondent is in default and thus has made no affirmative attempt to show any rights or legitimate interests in the disputed domain name;
- The Policy indicates that a Registrant may have a right or legitimate interest in a domain name if it is using the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute;
- The Respondent is in no way connected with the Complainant and has no authorization to use any of the Complainant's trademarks; and
- There is no evidence that the Respondent is or was commonly known by the disputed domain name as an individual, business or other organization.
- The evidence shows that the Respondent has intentionally registered and used the disputed domain name for the purpose of attracting, for commercial gain, users to the Respondent's website to which the disputed domain name is resolved.
Thus, in the Panel's view, the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence of 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.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.
In the Panel's view, there is no doubt that the Respondent was aware of the Complainant's rights in the PHARMATON trademarks at the time the disputed domain name was registered, indicating that such registration was made in bad faith.
The disputed domain name resolves to a website displaying sponsored links related to the Complainant's trademark and products and to its competitors, and likely confuses consumers as to the source of the goods being offered under the Complainant's trademark. The Panel finds that the Respondent is using the disputed domain name in bad faith.
Accordingly, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, 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 <pharmaton.xyz> be transferred to the Complainant.
Date: August 11, 2016