The Complainant is Boehringer Ingelheim Animal Health France, France, represented by Nameshield, France.
The Respondent is hwang gyu sun, Republic of Korea.
The disputed domain name <nexgard.net> is registered with Gabia, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2021. On March 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 3, 2021, the Registrar sent an email communication to the Center regarding domain name expiry. On March 4, 2021, the Center sent an email communication to the Parties regarding domain name expiry. On March 5, 2021, the Registrar confirmed renewal of the disputed domain name and transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to the Parties on March 11, 2021 regarding language of proceedings. The Complainant filed its request for language of proceedings on March 11, 2021. The Respondent did not file any comment.
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 March 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 9, 2021.
The Center appointed Andrew J. Park as the sole panelist in this matter on April 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.
The Complainant, Boehringer Ingelheim is a global group of companies which was founded in 1885. As a global player in the pet and equine markets, the Boehringer Ingelheim Animal Health Business Unit helps provide longer and healthier lives for companion animals. Improving the health and quality of life of humans and animals is the main goal of the research-driven pharmaceutical company Boehringer Ingelheim.
“NEXGARD,” one of the animal health products provided by the Complainant, is indicated for the treatment of fleas and ticks. The Complainant owns a large portfolio of trademarks that include the term “NEXGARD,” including the following:
|
Jurisdiction |
Trademark |
Registration No. |
Registration Date |
|
International |
NEXGARD |
1166496 |
May 29, 2013 |
|
European Union |
NEXGARD |
11855061 |
October 9, 2013 |
The disputed domain name <nexgard.net> was registered by the Respondent on February 23, 2020 and resolves to a parking page with commercial links.
The Center informed the Complainant that expiry date of the disputed domain name appeared to have been set prior to the filing of this Complaint and in this instance, the Center would not typically proceed to formally notify the filed case in particular because the registrant identity and status of the disputed domain name might be unclear. The Center also advised that the Complainant might renew or restore the disputed domain name under the same commercial terms as the registrant to keep the disputed domain name registration active and subject to the UDRP proceeding. The Complainant informed and asked the Center to undertake and proceed with this matter.
The Complainant, following the filing of the Complaint with the Center, requested that the language of proceedings be English.
The Complainant contends that the disputed domain name should be transferred to the Complainant because:
(1) the disputed domain name <nexgard.net> is identical to the Complainant’s trademarks in which the Complainant has rights. The Complainant argues that the Complainant’s trademark NEXGARD is included in the disputed domain name in its entirety and the addition of the generic Top-Level Domain suffix “.net” does not change the overall impression of the designation as being connected to the trademark NEXGARD. It does not prevent the likelihood of confusion between the disputed domain name and the Complainant, its trademarks, and its associated domain names.
(2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that the Respondent lacks any right or legitimate interest in the disputed domain name because the Complainant does not carry out any activity for, nor has any business with the Respondent. The Complainant has not licensed or granted any authorization to the Respondent to make use of its registered trademarks, or to apply for registration of the disputed domain name. The Complainant has not found any evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. There is also no indication of the Respondent’s use of the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name resolves to a parking page with commercial links and the Respondent has not been commonly known by the disputed domain name.
(3) the disputed domain name was registered and is being used in bad faith. The Complainant argues that the Respondent intentionally registered the disputed domain name, which is identical to the Complainant’s famous and widely known trademarks. The term “NEXGARD” is known especially in relation with the Complainant and its animal health products. Given the distinctiveness of the Complainant’s trademarks and reputation, the Respondent must have registered the disputed domain name with full knowledge of the Complainant’s trademarks and used it for the purpose of misleading and diverting Internet users. Furthermore, the disputed domain name resolves to a parking page with commercial links. The Complainant contends that the Respondent has attempts to attract Internet users for commercial gain to its own website thanks to the Complainant’s trademarks which confirms the bad faith.
The Respondent did not reply to the Complainant’s contentions.
The Registration Agreement for the disputed domain name is in Korean. 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 proceeding shall be the language of the Registration Agreement, i.e., Korean, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraphs 10 and 11(a) of the Rules. In coming to this decision, the Panel has taken the following into account:
1) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean;
2) The Panel is proficient in both English and Korean, capable of reviewing all the documents and materials in both languages and giving full consideration to the Parties’ respective arguments;
3) The Complainant and the Respondent use different languages, and neither of them likely understands the language of the other party. The Complainant is located in France while the Respondent is from the Republic of Korea. Therefore, English would be a fair language for both Parties;
4) The website at the disputed domain name includes links in English and French; and,
5) The disputed domain name itself is comprised of ASCII letters forming what amounts to an English, i.e., not Korean, word.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English and the Respondent’s communication in Korean if there were any; (2) consider any relevant materials in Korean; and (3) issue a decision in English.
This element consists of two parts: first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.
The Panel finds that the Complainant has established registered rights in the trademark NEXGARD and that the disputed domain name is identical to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety, and the use of the gTLD extension “.net” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (see Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182).
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is identical to the Complainant’s trademark.
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case.
The Panel finds that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. The Respondent has shown no actual intention to use the disputed domain name for more than 1 year since it registered the disputed domain name in February 2020. The domain which the disputed domain name resolved to a website has resolved to a parking page which included commercial links. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:
(i) circumstances indicating that the respondent has registered or acquired the 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(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; or
(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 the respondent’s website or location.
The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(iv) by registering the disputed domain name in order to attempt to attract, for commercial gain, Internet users to the Respondent’s website which the disputed domain name resolves to by creating a likelihood of confusion with the Complainant’s trademarks.
As stated previously, the Respondent did not file any response to the Complaint, failing thereby to rebut the Complainant’s allegations of the Respondent’s bad faith registration and use of the disputed domain name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).
The Panel finds the Respondent intentionally registered the disputed domain name – which is identical to the Complainant’s trademarks – in bad faith for several reasons. First, the Complainant’s commencement of its business and its first use of the NEXGARD trademark since 2013 far predate the registration date of the disputed domain name in 2020. Second, the website to which the disputed domain name resolves contains only commercial links and otherwise has been inactive since its initial registration and there is no evidence whatsoever that the Respondent is currently using or is commonly known by, has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the disputed domain name.
The Complainant and the trademark NEXGARD are well known for their products for animal health care efforts worldwide, and the Respondent has not put forward any reason for having registered the disputed domain name that would not trade off this mark. This fact clearly shows that the Respondent had knowledge of the Complainant’s trademark and business when it registered the disputed domain name and that it tried to falsely imply that there was a business relationship between the disputed domain name and the Complainant by creating a likelihood of confusion. Thus, it is clear that the Respondent registered the disputed domain name in bad faith with the knowledge of the Complainant’s trademarks and business.
Accordingly, the evidence shows that the Respondent likely knew of and had sought to take unfair advantage of the similarity, and indeed likelihood of confusion between the disputed domain name and the Complainant’s trademarks. The Panel finds that the Respondent has tried to create a false association between the disputed domain name and the mark NEXGARD, and has tried to attract Internet users to its website for commercial gain by creating a likelihood of confusion due to such association.
As the conduct described above falls squarely within paragraph 4(b)(iv) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).
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 <nexgard.net> be transferred to the Complainant.
Andrew J. Park
Sole Panelist
Date: May 10, 2021