WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim Pharma GmbH & Co.KG v. Pan Jing

Case No. D2017-0660

1. The Parties

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

The Respondent is Pan Jing of Beijing, China.

2. The Domain Names and Registrar

The disputed domain names <combivent.club> and <combivent.online> are registered with EJEE Group Holdings Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2017. On March 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 1, 2017, 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 April 18, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On April 20, 2017, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on 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 proceedings commenced on April 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2017.

The Center appointed Sok Ling MOI as the sole panelist in this matter on May 29, 2017. 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 German pharmaceutical company founded in 1885. It has 140 affiliated companies worldwide employing some 46,000 employees. Its two main business areas are human pharmaceuticals and animal health.

The Complainant develops and sells a multivitamin and mineral supplement under the brand COMBIVENT. COMBIVENT is indicated for use in patients with chronic obstructive pulmonary disease on a regular aerosol bronchodilator (inhaler) who continue to have evidence of bronchospasm (airway narrowing) and who require a second bronchodilator.

The Complainant owns the following trade mark registrations:

The Complainant also owns the following domain name registrations:

The disputed domain names <combivent.club> and <combivent.online> were registered on March 18, 2017, several years after the Complainant’s trade mark COMBIVENT was registered in various jurisdictions including China. According to evidence submitted by the Complainant, the disputed domain names do not resolve to any active websites but are passively held.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical to its trade mark COMBIVENT, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names have been registered and are being used in bad faith.

The Complainant requests for the transfer of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, 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.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated fairly and given a fair opportunity to present their respective case.

The language of the Registration Agreement for the disputed domain names is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.

On the record, the Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) The disputed domain names <combivent.club> and <combivent.online> are registered in Latin characters, rather than Chinese script;

(b) A reverse WhoIs search conducted independently by the Panel using the Respondent’s email address shows that the Respondent has registered several other domain names consisting of Latin characters and English terms, for example <icefresh.site>, <alienware.sale>, <researchnow.top>, <transferwise.site>, <michelin.website>, <virginmedia.site>, <loreal.online>, <velcro.website> and <jcdecaux.online>;

(c) The Center has notified the Respondent of the proceeding in both Chinese and English;

(d) The Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but has failed to do so; and

(e) The Center informed the Respondent that it would accept a response in either English or Chinese.

Considering the above circumstances, the Panel finds 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 has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and unfairly disadvantage the Complainant. The proceeding would be unnecessarily delayed.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; and (ii) English shall be the language of the proceeding and the decision will be rendered in English.

6.2 Substantive Matters

Paragraph 4(a) of the Policy directs that the complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:

(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark 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 has been registered and is being used in bad faith.

On the basis of the evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in COMBIVENT by virtue of its use and registration worldwide of the same as a trade mark. The disputed domain names incorporate the Complainant’s trade mark COMBIVENT in their entirety without any adjunction of letter or word. The addition of the new generic Top-Level Domains (“gTLD”) “.club” and “.online” does not serve to distinguish the disputed domain names from the Complainant’s trade mark, and may be disregarded for the purpose of the similarity assessment.

Consequently, the Panel finds that the disputed domain names are identical with the Complainant’s trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii), the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it of the dispute, 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; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd, WIPO Case No. D2013-0974.)

The Respondent’s name does not bear any resemblance to the term “combivent”. There is no evidence suggesting that the Respondent is commonly known by the disputed domain names or that it has any rights in the term “combivent”. The Complainant has confirmed that the Respondent is not in any way related to or affiliated with the Complainant or otherwise authorized or licensed to use the COMBIVENT trade mark or to seek registration of any domain name incorporating the trade mark. According to evidence submitted by the Complainant, the disputed domain names do not resolve to any active websites. There is no evidence to suggest that the Respondent has made any preparations to use the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose.

The Panel is therefore satisfied that the Complainant has made out a prima facie caseshowing that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production thus shots to the Respondent to establish its rights or legitimate interests in the disputed domain names. Since the Respondent has failed to respond, the prima facie case has not been rebutted.

Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

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 a disputed domain name in bad faith, namely:

(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark 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 disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed 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 the 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 Panel notes that, as of the date of this decision, the disputed domain names <combivent.club> and <combivent.online> do not resolve to any active websites. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.2.

Being an invented name, COMBIVENT is indeed distinctive. The Complainant has submitted evidence to show that its trade mark COMBIVENT enjoy a strong online presence and a cross-border reputation. A cursory Internet search would have disclosed the COMBIVENT trade mark and its extensive use by the Complainant. Thus a presumption arises that the Respondent was aware of the Complainant’s COMBIVENT trade mark and related domain names when it registered the disputed domain names, particularly given that the disputed domain names are identical to the Complainant’s mark. Registration of a domain name that incorporates a complainant’s distinctive trade mark suggests opportunistic bad faith.

As the Respondent had also registered several other domain names comprising trade marks belonging to other well-known brands (such as Michelin, Virgin Media, Loreal, TransferWise and JC Decaux), there is prima facie evidence that the Respondent is engaged in a pattern of cybersquatting and has registered the disputed domain names in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name.

The Respondent has not denied the Complainant’s allegations of bad faith. In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain names, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain names in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy.

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, <combivent.club> and <combivent.online>, be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: June 18, 2017