Boehringer Ingelheim Animal Health France v Contact Privacy Inc

WIPO Case No. D2022-0242

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim Animal Health France v. Contact Privacy Inc.
Customer 12412023801 / Gabriel James Keller

Case No. D2022-0242

1. The Parties

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

France.

The Respondent is Contact Privacy Inc. Customer 12412023801, Canada / Gabriel James Keller, United

States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <getfrontlineplus.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 January 25, 2022. On January 25, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 26, 2022, 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 January 26, 2022 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 January 28, 2022.

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 January 31, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2022.

The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on March 9, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant is active in the animal health industry.

The Complainant commercializes antiparasitics for the treatment and prevention of fleas, ticks, and chewing lice in dogs and cats under the brand names FRONTLINE and FRONTLINE PLUS.

The Complainant is the owner of, among others, the following trademark registrations:

- FRONTLINE, International trademark registration number 621912 registered on June 9, 1994 in
class 5;

- FRONTLINE PLUS, United States trademark registration number 2763796 registered on
September 16, 2003 in class 5.

The Complainant has also registered numerous domain names, including <frontlineplus.com> registered in
2002.

The disputed domain name <getfrontlineplus.com> was registered on January 21, 2022, and resolves to an inactive website.

The MX records (i.e. the mail exchanger records specifying the mail server responsible for accepting email messages) for the disputed domain name, suggest that it is or was possibly used for email communication.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademarks. The addition of the term “get” in the disputed domain name does not change the overall impression of the designation as being connected to the Complaint’s trademarks. The Complainant also

contends that that the Top-Level Domain (“TLD”) in the disputed domain name (namely “.com” in this case)
should be disregarded for the confusing similarity test.

The Complainant contends that the Respondent has no rights and legitimate interest in the disputed domain name for the following reasons: (i) the Respondent is not commonly known by the disputed domain name; (ii) the Respondent is not affiliated nor authorized by the Complainant in any way; specifically no license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademarks, or apply for registration of the disputed domain name; (iii) the disputed domain name resolves to an inactive website, which confirms, according to the Complainant, that the Respondent has no demonstrable plan to use the disputed domain name.

The Complainant further contends that the disputed domain name was registered and used in bad faith, for the following reasons: (i) the Respondent registered the disputed domain name many years after the Complainant has established a strong reputation and goodwill in its trademarks; (ii) the Respondent knew of the Complainant’s brand and business and yet registered the disputed domain name that is confusingly similar to the Complainant’s trademarks; (iii) the Respondent has not demonstrated any activity in respect of the disputed domain name as it resolves to an inactive website.

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B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:

(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service

mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name registered by the respondent has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for the word marks FRONTLINE and FRONTLINE PLUS.

The disputed domain name reproduces the Complainant’s trademark FRONTLINE PLUS in its entirety with no alteration and combines this trademark with the term “get”.

UDRP panels consider that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element of paragraph 4(a) of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In the present case, the trademark FRONTLINE PLUS is clearly recognizable in the disputed domain name. The mere addition of the term “get” does not change the overall impression produced by the disputed domain name and does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

UDRP panels also accept that a TLD, such as “.com”, should be disregarded when assessing whether a domain name is identical or confusing similar to a trademark (see section 1.11 of the WIPO Overview 3.0).

The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Based on the information submitted by the Complainant, the Respondent does not appear to have rights or
legitimate interests in respect of the disputed domain name, nor has the Complainant granted to the
Respondent any authorization to use the disputed domain name.

There is also no evidence that the Respondent has used or is planning to use the disputed domain name for a bona fide offering of goods or services.

Finally, the Respondent did not file a response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy.

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C. Registered and Used in Bad Faith

D2021-2505 and Boehringer Ingelheim Animal Health France v. chen xiu hong, WIPO Case No. D2020-2591. The Complainant has also submitted Google search results showing that a Google search for “frontline plus” results in hits concerning only the Complainant’s products. While both words “FRONTLINE” and “PLUS” are dictionary words, the combination of these two terms has no particular meaning, such that the combination of these two elements can hardly be coincidental. Against this background, the Panel accepts that the Respondent most probably knew of the Complainant’s trademark when he registered the disputed domain name.

UDRP panels have recognized in past decisions the widespread use and renowned character of the No.

The Respondent does not appear to have used the disputed domain name in connection with an active website.

In certain circumstances, UDRP panels have held that passive holding of a domain name could amount to use in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the

complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to
which the domain name may be put (section 3.3 of the WIPO Overview 3.0).

In the case at hand, the trademark FRONTLINE PLUS is distinctive. The Respondent failed to submit a Response or to allege any actual or contemplated use of the disputed domain name. Also, it is difficult to imagine what legitimate use the Respondent could make of the disputed domain name, given the fact that there is no relationship between the Respondent and the Complainant. If the disputed domain name was connected to an active website, consumers would be likely to mistakenly assume that such website is operated or endorsed by the Complainant, when such is not the case.

The MX records relating to the disputed domain name suggest finally that it may be or has been used for email communication, possibly for phishing purposes.

On the other hand, the Respondent did not provide inaccurate contact details to the Registrar of the disputed domain name: Indeed, the DHL shipment of the Written Notice (as defined in paragraph 1 of the Rules), informing the Respondent of the commencement of an administrative proceeding under the Policy, was delivered.

Weighing all the above factors, the Panel finds that the provision of accurate contact details to the Registrar is not, in itself, sufficient to avoid a finding of passive holding in bad faith. The Respondent was informed of the UDRP proceedings (as the delivery of the Written Notice by DHL was successful) but it chose to refrain from filing a Response. This corroborates the implausibility of a good faith holding of the disputed domain name by the Respondent.

For the reasons set out above, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in paragraph 4(a)(iii) of the Policy.

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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 <getfrontlineplus.com> be transferred to the Complainant.

/Anne-Virginie La Spada/
Anne-Virginie La Spada
Sole Panelist
Date: March 23, 2022