WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim Animal Health France v. 马海建 (Ma Hai Jian)

Case No. DCN2021-0034

1. The Parties

The Complainant is Boehringer Ingelheim Animal Health France, France, represented by Nameshield, France.

The Respondent is 马海建 (Ma Hai Jian), China.

2. The Domain Name and Registrar

The disputed domain name <nexgard.com.cn> is registered with 广州云讯信息科技有限公司 (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2021. On September 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 26, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the complete contact details. The Center sent an email communication to the Complainant on September 27, 2021 providing the registrant and complete contact information disclosed by the Registrar. The Complainant filed an amended Complaint in English on the same day.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the China ccTLD Dispute Resolution Policy (the “Policy”), the China ccTLD Dispute Resolution Policy Rules (the “Rules”), and the WIPO Supplemental Rules for China ccTLD Dispute Resolution Policy and China ccTLD Dispute Resolution Policy Rules (the “WIPO Supplemental Rules”).

In accordance with the Rules, Articles 5 and 6, and Articles 14 to 16, and the WIPO Supplemental Rules, Paragraph 4(d), the Center formally notified the Respondent in Chinese and English of the Complaint, and the proceedings commenced on September 30, 2021. In accordance with the Rules, Articles 17 and 49, the due date for Response was October 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2021.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on December 1, 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, Article 29.

4. Factual Background

The Complainant is a company headquartered in France and operating in the veterinary pharmaceutical industry. The Complainant claims to be the number one global player in the pet and equine pharmaceutical markets. The Complainant provides evidence that it is currently commercializing a line of veterinary flea and tick prevention products under the brand name Nexgard.

The Complainant owns a trademark portfolio protecting the mark NEXGARD, including, amongst others, the following trademark registrations, international trademark registration number 1166496 registered on May 29, 2013, and designating, amongst others, China and Norway; and European Union trademark registration number 11855061 registered on October 9, 2013. The Complainant also provides evidence that it owns a China country code Top Level Domain (“ccTLD”) domain name, namely <nexgard.cn>, registered on April 13, 2017.

The disputed domain name was registered on September 7, 2021, and is linked to an active website in Chinese and English, which offers the disputed domain name for sale.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name is identical to its trademark for NEXGARD, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.

The Complainant provides evidence of its company and marketing materials, including the content of its official website. Moreover, the Complainant provides evidence that the disputed domain name is linked to an active webpage where the disputed domain name is offered for sale. The Complainant essentially contends that such use does not confer any rights or legitimate interests onto the Respondent in respect of the disputed domain name, and constitutes use in bad faith.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

6.1. Preliminary Issue: Language of the Proceeding

Pursuant to Article 6 of the Policy, Article 8 of the Rules and Paragraph 18 of the WIPO Supplemental Rules, unless otherwise agreed by the Parties, or determined by the Panel under exceptional circumstances, the language of the administrative proceeding shall be Chinese.

The Complainant filed its Complaint and its amended Complaint in English, including a request that the language of the proceeding be English. On September 30, 2021, the Center formally notified the Respondent in Chinese and English of the Complaint, of the amended Complaint, and of the commencement of the proceeding, including that the Complaint and the amended Complaint were filed in English. The Center also notified the Respondent in Chinese and English of its right to file a Response in either Chinese or English, and comment on the language of the proceeding in its Response. Nevertheless, the Respondent did not submit any response or comment in this administrative proceeding.

The present Panel, which is familiar with both English and Chinese, has carefully considered all elements of this case, in particular, the Complainant’s request that the language of the proceeding be English, the lack of comment on the language of the proceeding and the lack of response on the merits of the Respondent (the Panel notes that the Respondent was duly invited to respond in either Chinese or English); the evidence produced by the Complainant which proves that the website linked to the disputed domain name is bilingual (in both Chinese and English), from which the Panel deducts that the Respondent appears to be able to understand English; and the fact that Chinese as the language of the proceeding could lead to unwarranted delays and costs for the Complainant. In view of these exceptional circumstances, the Panel grants the Complainant’s request, and decides that the language of this administrative proceeding shall be English.

6.2. Discussion and Findings on the merits

The Policy requires Complainant to prove three elements:

(a) the disputed domain name is identical or confusingly similar to the Complainant’s name or mark in which the Complainant has civil rights or interests;

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name or major part of the disputed domain name; and

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar to the Complainant’s Name or Mark in which the Complainant has Civil Rights or Interests

The Panel finds that the Complainant has shown that it has valid rights in the sign NEXGARD based on its use and registration of the same as a trademark in several jurisdictions, including in China.

Moreover, as to whether the disputed domain name is identical or confusingly similar to the Complainant’s aforementioned trademark, the Panel finds that the disputed domain name consists of only the Complainant’s registered trademark NEXGARD, combined with the suffix “.com.cn”. The applicable TLD and the second-level portion of a domain name (here “.com.cn”) may be disregarded by the Panel under the first element test. Accordingly, the Panel finds that the disputed domain name is identical to the Complainant’s trademark in which the Complainant has civil rights or interests and the first element required by the Policy is fulfilled.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel finds that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, is not a bona fide provider of goods or services under the disputed domain name and is not making legitimate noncommercial use or fair use of the disputed domain name. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent. However, no evidence or arguments have been submitted by the Respondent in reply.

Moreover, upon review of the facts, the Panel notes that the website linked to the disputed domain name currently only displays an invitation to submit financial offers for the sale of the disputed domain name, which cannot be considered as use of the disputed domain name, or a corresponding name, in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use.

The Panel therefore considers that none of the circumstances of rights or legitimate interests envisaged by Article 10 of the Policy apply. The Panel also notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the requirements for the second element under the Policy.

C. Registered or Used in Bad Faith

The registration of the disputed domain name, which is identical to the Complainant’s trademarks, is clearly intended to mislead and divert consumers away from the Complainant’s official website, to the disputed domain name. Given the distinctiveness and fame of the Complainant’s trademark and the Complainant’s domain name <nexgard.cn>, the Panel finds that the registration of the disputed domain name was obtained in bad faith. Moreover, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant has owned registered trademarks in NEXGARD and has used these extensively. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain name.

As to use of the disputed domain name in bad faith by the Respondent, the website linked to the disputed domain name currently only displays an invitation to submit financial offers for the sale of the disputed domain name, with a hyperlink to the website “https://www.4.cn/buyer/apply-brokerage/DomainName/nexgard.com.cn”, which specifies “your maximum investment limit is the highest price you would be willing to offer for the domain (min. $750 USD or 5000 RMB)”. The Panel deducts from these elements that the Respondent is requesting a minimum price of 750 USD or 5,000 RMB for the sale of the disputed domain name, which is most likely an amount in excess of the out-of-pocket costs related to the disputed domain name. This leads the Panel to conclude that the Respondent is using the disputed domain name to try to sell it to the Complainant, who is the owner of the corresponding trademark for NEXGARD, or to a competitor of the Complainant, and to obtain unjustified benefits through such sale. This constitutes direct evidence of bad faith of the Respondent under Article 9(a) of the Policy.

Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore finds that the Complainant has satisfied the requirements of the third element under the Policy.

7. Decision

For the foregoing reasons, in accordance with Articles 14 of the Policy and 40 of the Rules, the Panel orders that the disputed domain name <nexgard.com.cn> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelis
Date: December 15, 2021