WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boehringer Ingelheim Animal Health France v. chen xiu hong
Case No. D2020-2591
1. The Parties
The Complainant is Boehringer Ingelheim Animal Health France, France, represented by Nameshield, France.
The Respondent is chen xiu hong, China.
2. The Domain Name and Registrar
The disputed domain name <1frontlineflea.com> is registered with Bizcn.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2020. On October 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 9, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 9, 2020.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2020.
The Center appointed Rachel Tan as the sole panelist in this matter on December 1, 2020. 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 operating in the animal health industry and it is part of the family-owned business, Boehringer Ingelheim founded in 1885. Sanofi’s animal health business (Merial) was integrated with the Complainant in 2017.
The Complainant is using the FRONTLINE mark on products for the treatment and prevention of fleas, ticks and chewing lice in dogs and cats, and aids in the control of sarcoptic mange in dogs. The Complainant owns several trade mark registrations for the FRONTLINE mark, including International Trademark Registration No. 1245236 registered on January 30, 2015 in International classes 3 and 5.
The Respondent is chen xiu hong, China.
The disputed domain name was registered on October 3, 2020 and does not at the date of this decision resolve to an active webpage. According to the screen captures provided by the Complainant, the disputed domain name previously first resolved to an inactive website and then a news website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its FRONTLINE trade mark. The addition of the term “flea”, the number “1” and the generic Top-Level Domain (“gTLD”) “.com” does not change the overall impression of the destination as being connected to the Complainant’s FRONTLINE trade mark nor prevent the likelihood of confusion between the disputed domain name and the Complainant and its trade mark.
The Complainant further alleges that the Respondent is not commonly known by the disputed domain name. The Respondent is not affiliated with nor authorized by the Complainant in any way. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant does not carry out any activity for, nor has any business with the Respondent. Neither license nor authorization has been granted by the Complainant to the Respondent to make any use of the Complainant’s trade mark or apply for registration of the disputed domain name. The Respondent used the dispute domain name in a way that fails to confer rights or legitimate interests, as it is used to promote unrelated services.
The Complainant finally asserts that the disputed domain name has been registered many years after the Complainant has established a strong reputation and goodwill in its mark. The addition of the word “flea” in the disputed domain name references the Complainant’s products Frontline from which it is reasonable to infer that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trade mark. It is unconceivable that the Respondent chose to register the disputed domain name without the Complainant and its trade mark in mind. The Respondent attempts to attract Internet users by creating a likelihood of confusion with the Complainant’s trade mark. The Respondent is obtaining commercial gain from its use of the disputed domain name and the resolving website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the FRONTLINE mark.
The Panel notes the disputed domain name is comprised of the FRONTLINE trade mark in its entirety. The positioning of the FRONTLINE trade mark in the middle of the disputed domain name makes it instantly recognizable. In cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, the additional elements “1” and “flea” do not preclude a finding of confusing similarity between the FRONTLINE trade mark and the disputed domain name. It is accepted by previous UDRP panels that the addition to the complainant’s trade marks of words or terms that describe or refer to part of the complainant’s business in the disputed domain name does not affect the similarity of the domain name from the registered trademark under the first element of the Policy. Accordingly, the inclusion of the word “flea” does not affect the similarity of the disputed domain name from the Complainant’s FRONTLINE trade mark. See section 1.8 of the WIPO Overview 3.0.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
In circumstances where the Complainant possesses exclusive rights to the FRONTLINE trade mark, whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0.
The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “frontline”. Further, there is no indication to show that the Respondent is commonly known by the disputed domain name or otherwise has rights or legitimate interests in it. In addition, the Complainant has not granted the Respondent a license or authorization to use the Complainant’s FRONTLINE trade mark or register the disputed domain name. None of the circumstances in paragraph 4(c) of the Policy are present in this case.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s FRONTLINE trade mark had been registered in 2015 which was well before the registration of the disputed domain name. Through extensive use and advertising, the Complainant’s FRONTLINE trade mark is known throughout the world. Moreover, the term “frontline” is not merely a name. Search results using the key word “frontline” on the Baidu and Google search engines direct Internet users to the Complainant and its products, which indicates that an exclusive connection between the FRONTLINE mark and the Complainant has been established. As such, the Respondent either knew or should have known of the Complainant’s FRONTLINE trade mark when registering the disputed domain name or has exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith”. See eBay Inc. v. Renbu Bai, WIPO Case No. D2014-1693; Barclays Bank PLC v. Andrew Barnes, WIPO Case No. D2011-0874.
Section 3.1.4 of the WIPO Overview 3.0 states that “mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain name incorporates the Complainant’s famous FRONTLINE mark plus the descriptive term “flea” creating a presumption of bad faith.
In addition, the Panel finds that the inactive use of the disputed domain name in this case would not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Overview 3.0. The Panel also finds that the previous use of the disputed domain name for a news website constitutes bad faith.
The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the Respondent’s lack of rights or legitimate interests, current passive holding of the disputed domain name and by continuing to hold the disputed domain name, the Panel is led to conclude that the disputed domain name was registered and is being used in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) 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 <1frontlineflea.com> be transferred to the Complainant.
Date: December 14, 2020