WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim Pharma GmbH & Co.Kg. v. 杨智超 (Zhichao Yang)

Case No. D2021-0842

1. The Parties

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

The Respondent is 杨智超 (Zhichao Yang), China.

2. The Domain Names and Registrar

The disputed domain names <boehringereringeheimperebates.com> and <boehringeringelheimptetrebates.com> (the “Disputed Domain Names”) are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2021. On March 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 24, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 25, 2021 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 in English on March 25, 2021.

On March 25, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on March 25, 2021. The Respondent did not comment on the language of the proceeding.

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 in English and Chinese of the Complaint, and the proceedings commenced on April 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2021.

The Center appointed Kar Liang Soh as the sole panelist in this matter on May 25, 2021. 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, Boehringer Ingelheim Pharma GmbH &Co.Kg, is a family-owned pharmaceutical group of companies established in 1885. The Complainant has approximately 51,000 employees worldwide with net sales of about EUR 19 billion in 2019. The Complainant owns the following trademark registrations including the terms “Boehringer Ingelheim”:

Past UDRP panels have found the Complainant’s trademark to be well known (e.g., Boehringer Ingelheim Pharma GmbH & Co.KG v. Kate Middleton, WIPO Case No. D2016-0021). Further, the Complainant operates a website under the domain name <boehringeringelheimpetrebates.com> (registered on August 14, 2019) to offer rebates on pet health products.

The Disputed Domain Names were registered on March 18, 2021 and resolved to parking sites. In particular, the website resolved from the Disputed Domain Name <boehringeringelheimptetrebates.com> displays only prominent links with titles like “Super Course en Ligne”, “Examen Entrepreneur” and “Code de la Route 2021” and essentially no other content. The links direct Internet users to third party sites.

In the absence of a response, information regarding the Respondent does not extend much beyond that found in the WhoIs record of the Disputed Domain Names. The Respondent appears to be an individual based in China. The Respondent’s phonetic name correspond to that of respondents named in past UDRP proceedings.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

1) The Disputed Domain Names are confusingly similar to the Complainant’s trademark. The addition of the letters “er” and the deletion of the letter “l” in the Disputed Domain Name <boehringereringeheimperebates.com> are not sufficient to escape the finding that it is confusingly similar to the Complainant’s trademark. The addition of the terms “pe rebates” and “ptet rebates” added to the Disputed Domain Name <boehringeringelheimptetrebates.com> is not sufficient to escape the finding that the Disputed Domain Names are confusingly similar to the Complainant’s trademark;

2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Respondent is not affiliated with nor authorized by the Complainant. The Complainant does not carry out any activity for, or has any business with the Respondent. Neither license nor authorisation has been granted to the Respondent to make any use of the Complainant’s trademark or apply for registration of the Disputed Domain Names; and

3) The Disputed Domain Names were registered and are being used in bad faith. The Complainant’s trademark is distinctive and well known. The Respondent registered the Disputed Domain Names with full knowledge of the Complainant’s trademark. The Respondent has attempted to attract Internet users for commercial gain to his own websites.

B. Respondent

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

6. Discussion and Findings

6.1 Language of Proceeding

The default language of the proceeding is Chinese as the Registration Agreement for the Disputed Domain Names is Chinese. Nevertheless, the Panel may determine the language of the proceeding to be otherwise under paragraph 11(a) of the Rules having regard to all the circumstances.

The Complainant has requested that the language of the proceeding be in English and the Panel agrees. In making this determination, the Panel has taken into consideration the following circumstances:

(a) The Disputed Domain Names resolve to websites that have exclusively non-Chinese content at the time of this Decision;

(b) The Disputed Domain Names include English words;

(c) The Complainant has confirmed that it would incur the burden of substantial translation expenses should the proceeding be in Chinese;

(d) The Respondent has neither objected to the Complainant’s language request nor filed a Response;

(e) No apparent benefit to the proceeding would be served by insisting that the language of the proceeding remains as Chinese; and

(f) The Panel is bilingual and is competent to handle the proceeding in English and Chinese.

6.2 Discussion

The Complainant in this proceeding is required show that all three limbs of paragraph 4(a) of the Policy are met on the evidence, namely:

(i) the Disputed Domain Names are confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) the Disputed Domain Names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

In view of the trademark registrations for the trademark BOEHRINGER INGELHEIM by the Complainant, the Complainant clearly has rights in it. As rightly pointed out by the Complainant, the only differences between the Complainant’s trademark and the Disputed Domain Name <boehringereringeheimperebates.com> are the addition of the letters “er” after the initial letters “boehringer”, the deletion of the letter “l” in “ingelheim”, and the addition of the suffix letters “perebates” in the Disputed Domain Name. Similarly, the only difference between the Complainant’s trademark and the Disputed Domain Name <boehringeringelheimptetrebates.com> is the addition of the suffix letters “ptetrebates”.

The Panel notes that the Complainant’s trademark comprises a long string of 19 letters. The insertion or omission of one or two letters within such a long string of letters (i.e., the insertion of the letters “er” or omission of the letter “l” as presented by the Disputed Domain Names) do not detract from the overall impression that the Complainant’s trademark is recognizable in the Disputed Domain Names.

The Panel also accepts that the letter combinations “perebates” or “ptetrebates” are obvious misspellings of the words “pet rebates”. Putting aside the fact that the Complainant promotes pet rebate services on its website operated under the domain name <boehringeringelheimpetrebates.com>, past UDRP panels have established a consensus view that descriptive words such as these, albeit typographically misspelled, do not have the effect of preventing a finding of confusing similarity between a disputed domain name and a complainant’s trademark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). The Panel does not see any special circumstances in this case to depart from the consensus.

In conclusion, the Panel holds that the insertion into or omission of letters from the Complainant’s trademark, and the addition of descriptive terms as a suffix to the Complainant’s trademark in each of the Disputed Domain Names do not prevent a finding of confusing similarity between the Disputed Domain Names and the Complainant’s trademark.

Therefore, the first limb of paragraph 4(a) of the Policy has been made out by the Complainant in this case.

B. Rights or Legitimate Interests

The Complainant has confirmed that it has no relationship with the Respondent, including any affiliations, licenses, authorisations, activities or business dealings. The Complainant has also specifically confirmed that it has not authorised the Respondent to use the Complainant’s trademark or register the Disputed Domain Names. There is also no evidence before the Panel even remotely suggesting that the Respondent is commonly known by the Disputed Domain Names. On the contrary, the Respondent is an individual with a name that bears zero resemblance to the Disputed Domain Names. Parking sites are common placeholder webpages often implemented automatically by domain hosts, service providers or registrants themselves. In the absence of clear indication to the contrary (such as an appropriate response), the Panel is of the view that the parking sites resolved from the Disputed Domain Names cannot be regarded as a use of each of these Disputed Domain Names that could serve to support the existence of any rights or legitimate interests.

As such, the Panel is satisfied that the Complainant has shown prima facie that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names. The prima facie case has not been rebutted by the Respondent and the Panel holds that the second limb of paragraph 4(a) of the Policy is established.

C. Registered and Used in Bad Faith

Based on the evidence provided, the Panel accepts that the trademark BOEHRINGER INGELHEIM is a distinctive term and is sufficiently well known for purposes of the Policy. The Panel finds that it is inconceivable that the Respondent could have registered the Disputed Domain Names without the knowledge of the Complainant’s trademark and pet rebate services of the Complainant offered at the website under the domain name <boehringeringelheimpetrebates.com> which pre-dates the registration of the Disputed Domain Names. The Panel finds the resemblance between the Disputed Domain Names and the Complainant’s domain name so uncanny that any typographical differences could only have been deliberate.

Further, the Panel finds it inconceivable that the Respondent could have registered the Disputed Domain Names other than for the purpose of creating an impression of association with the Complainant as described in paragraph 4(b)(iv) of the Policy, which states:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

There is no evidence before the Panel which could suggest the possibility of any other explanation for the registration of the Disputed Domain Names. On the contrary, the parking sites resolved from the Disputed Domain Names, in the usual nature of parking sites, present prominent links to online resources operated apparently by commercially oriented third parties. On the face, the parking sites demonstrate a purpose of commercial gain, whether for the Respondent, or for the online resources connected to the links. It is clear to the Panel that the Disputed Domain Names are intended to attract Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the websites. The Panel therefore holds that the Disputed Domain Names were registered and are being used in bad faith exemplified by paragraph 4(b)(iv) of the Policy.

The Respondent’s failure to respond to the Complainant’s serious allegations supported by cogent evidence (including the reasonable possibility that the Respondent has a track record of being entangled as a respondent in past domain name disputes) convinces the Panel to the effect that the Respondent is unable to justify that the Disputed Domain Names were neither registered nor used in bad faith.

In view of the above, the third limb of paragraph 4(a) of the Policy is also met by the circumstances.

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 <boehringereringeheimperebates.com> and <boehringeringelheimptetrebates.com> be transferred to the Complainant.

Kar Liang Soh
Sole Panelist
Date: June 21, 2021