WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim Pharma GmbH & Co. KG v. Contact Privacy Inc. Customer 1249661349 / fcu dwt, yoyaofang

Case No. D2021-1710

1. The Parties

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

The Respondent is Contact Privacy Inc. Customer 1249661349, Canada / fcu dwt, yoyaofang, China.

2. The Domain Name and Registrar

The disputed domain name <hkpradaxa.com> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2021. On June 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2021, 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 June 3, 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 on June 4, 2021.

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 June 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2021.

The Center appointed Daniel Peña as the sole panelist in this matter on July 23, 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 owns a portfolio of brands including the word “pradaxa” in several jurisdictions, such as the international trademark PRADAXA n° 807503 registered on July 9, 2003.

The Complainant is also the owner of numerous domain names, such as the domain name <pradaxa.com>

The disputed domain name <hkpradaxa.com> was registered on March 8, 2021 and resolves to a Chinese website displaying information regarding the PRADAXA branded products and offering to sell them.

5. Parties’ Contentions

A. Complainant

The Complainant is a family-owned pharmaceutical group of companies with roots going back to 1885, when it was founded by Albert Boehringer (1861-1939) in Ingelheim am Rhein.

The Complainant has become a global research-driven pharmaceutical enterprise and has today about roughly 52,000 employees. The three business areas of the Complainant are human pharmaceuticals, animal health, and biopharmaceuticals.

In 2020, net sales of the Complainant group amounted to about EUR 19.6 billion.

The product PRADAXA (with the generic name “Dabigatran”) is an oral anticoagulant from the class of the direct thrombin inhibitors. It is being studied for various clinical indications and in some cases it offers an alternative to warfarin as the preferred orally administered anticoagulant since it cannot be monitored by blood tests for international normalized ratio (INR) monitoring while offering similar results in terms of efficacy.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not related in any way with the Complainant.

The Complainant does not carry out any activity for, nor has any business with the Respondent.

The Complainant contends that the Respondent must have been aware of the Complainant’s trademark PRADAXA at the time the Respondent registered the disputed domain name on March 8, 2021.

The disputed domain name <hkpradaxa.com> resolves to a Chinese website displaying information regarding the PRADAXA products and offering to sell them.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

Considering these requirements, the Panel rules as follows:

A. Identical or Confusingly Similar

The Complainant has produced substantial evidence to demonstrate that it has registered trademark rights and continue to have such rights in the PRADAXA marks.

The disputed domain name comprises (a) an exact reproduction of the Complainant’s trademark PRADAXA and (b) the prefix “hk”. The Panel finds that the Complainant’s PRADAXA mark is recognizable, and it has been reproduced in its entirety in the disputed domain name. The Panel accepts the Complainant’s contention that the prefix “hk” are the initials of Honk Kong, China, and it does not provide additional specification or sufficient distinction from the Complainant or its trademark PRADAXA.

The Panel is satisfied that the disputed domain name is confusingly similar to the Complainant’s mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth.

Refraining from submitting any Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name.

The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name.

The Complainant claims that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner.

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Furthermore, the disputed domain name is being redirected to a website that makes direct reference to the PRADAXA products and the Complainant, and offer these products for sale. Such use for deliberately attracting Internet users to a website in the mistaken belief that it is a website of the Complainant, or otherwise linked to or authorized by the Complainant, supports a finding that the Respondent lacks rights or legitimate interests in the disputed domain name. Noting the Complainant’s name and trademark is incorporated in the disputed domain name together with “hk”, which are the initials of Hong Kong, China, the Panel finds that there is a risk of implied affiliation, see section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location.

In the Panel’s view, a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the Respondent have chosen the disputed domain name in order to deliberately attract Internet users to its website in the mistaken belief that it is a website of the Complainant, or otherwise linked to or authorized by the Complainant.

As such, the Panel is satisfied that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of the products on its website.

Under paragraph 4(b)(iv) of the Policy, this circumstance shall be evidence of the registration and use of a domain name in bad faith.

Thus, the Panel concludes that the disputed domain name was registered and is being used in bad faith.

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 name <hkpradaxa.com> be transferred to the Complainant.

Daniel Peña
Sole Panelist
Date: August 3, 202