Boehringer Ingelheim Animal Health France v ji lin yang, yangji lin

WIPO Case No. D2024-0016

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim Animal Health France v. ji lin yang, yangji lin

Case No. D2024-0016

1. The Parties

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

France.

The Respondent is ji lin yang, yangji lin, China.

2. The Domain Name and Registrar

The disputed domain name <discountfrontlineplus.com> is registered with Web Commerce Communications

Limited dba WebNic.cc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2024. On January 4, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 4, 2024, 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 (Whoisprotection.cc) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 5, 2024, 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 8, 2024.

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 sent notification to the Respondent of the Complaint, and the proceedings commenced on January 11, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2024. The Respondent did not submit any response. Accordingly, the Center sent the notification of the Respondent’s default on February 1, 2024.

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The Center appointed Petra Pecar as the sole panelist in this matter on February 7, 2024. 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 Animal Health, is a part of Boehringer Ingelheim, founded in 1885, and operates in the animal health industry. The Complainant's product, FRONTLINE PLUS / FRONTLINE COMBO, is used for the treatment and prevention of fleas, ticks, and chewing lice in dogs and cats, and

prevents the development of immature stages of fleas and controls sarcoptic mange in dogs.

The Complainant has a portfolio of trademarks that includes the term FRONTLINE, among others the following trademarks:

- International trademark FRONTLINE Reg. no. 621912, registered on June 9, 1994, in several
jurisdictions, including China, and

- United Kingdom trademark FRONTLINE PLUS Reg. No. UK00003090065, registered on April 24,
2015.

The Complainant also owns domain name <frontlineplus.com> which incorporate FRONTLINE PLUS.

The disputed domain name <discountfrontlineplus.com> was registered on January 2, 2024, and it revolves to an inactive webpage.

The Respondent is located in China.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for the transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name <discountfrontlineplus.com> is confusingly similar to the trademarks FRONTLINE and FRONTLINE PLUS in which the Complainant has rights. The disputed domain name includes the trademark FRONTLINE and FRONTLINE PLUS in its entirety, and the addition of the additional term “discount” does not significantly change its similarity or reduce the likelihood of confusion. The Complainant contends that the inclusion of a generic Top-Level Domain (gTLD), such as “.com”, is not considered when assessing if the disputed domain name is identical or confusingly similar to the Complainant’s trademarks.

The Complainant asserts that the Respondent holds no rights or legitimate interests in the disputed domain name. This assertion is supported by the absence of any connection between the Respondent and the disputed domain name in WhoIs data, and the lack of any affiliation, authorization, or commercial connection between the Complainant and the Respondent regarding the disputed domain name. Furthermore, the disputed domain name points to an inactive webpage, which confirms the Respondent’s lack of intent for its legitimate use.

The Complainant argues that the registration and use of the disputed domain name, which closely resembles
its renowned trademarks FRONTLINE and FRONTLINE PLUS, was deliberately chosen with knowledge of
these trademarks. This assertion is supported by the trademarks' widespread recognition, as affirmed in
prior UDRP decisions. The fact that the disputed domain name directs to an inactive webpage serves as
further evidence of bad faith. The Complainant contends there is no legitimate reason for the Respondent’s

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registration and use of the disputed domain name that would not result in the infringement of trademark
rights or consumer protection norms.

The Complainant further supports their position by pointing to precedent cases where a domain name incorporating a well-known trademark leads to an inactive webpage, which has been recognized as a sign of bad faith. This comparison underscores the Complainant's view that the registration and inactive use of the disputed domain name are deliberate actions intended to infringe upon their trademark rights. Such actions, due to the Complainant, clearly demonstrate the Respondent's bad faith in both the registration and use of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Even if the Respondent did not file a Response to the Complainants’ contentions, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in
accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, as
indicated in paragraph 15(a) of the Rules.

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a FRONTLINE and FRONTLINE PLUS trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The FRONTLINE trademark registration predates the disputed domain name registration for almost 30 years while the trademark FRONTLINE PLUS for 9 years.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of additional term “discount”, used to describe a reduction in the price of a product, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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Furthermore, it is well accepted practice by UDRP panels that a gTLD, such as “.com”, is typically ignored when assessing whether a domain name is identical or confusingly similar to a trademark (see section 1.11.1 of the WIPO Overview 3.0). For that reason, the Panel accepts not to take gTLD “.com” when assessing confusing similarity of the disputed domain name.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

According to the Complainant, it seems that the Respondent is not associated or connected with the Complainant in any way, and the Complainant has not granted the Respondent any license or authorization to use or register any domain name that includes the Complainant’s trademarks. The Respondent has further failed to provide a response to the Complaint, thereby failing to present any information or factors that could potentially justify prior rights or legitimate interests in the disputed domain name. Additionally, there appears to be no evidence of the Respondent engaging in any legitimate or genuine use of the disputed domain name, whether for noncommercial or bona fide activities since the disputed domain name at the time of the Complaint filing revolved to an inactive webpage.

WIPO Overview 3.0).

The Panel finds that the nature of the disputed domain name, which consists of the Complainant’s indicates the affiliation with the Complainant and for that reason a fair use cannot be constituted when the disputed domain name effectively impersonates or suggests affiliation with the Complainant (see section 2.5.1 of the

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent’s disputed domain name comprises a combination of the Complainant’s FRONTLINE and FRONTLINE PLUS trademark, and the additional part “discount” which is closely associated with the Complainant’s business. The Complainant has also an online presence through the domain name <frontlineplus.com>. The website hosted on this domain name

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<frontlineplus.com> provides information about the company and its activities. The registration of the
domain name which comprise the Complainant FRONTLINE and FRONTLINE PLUS trademarks, descriptive
term “discount” and gTLD “.com”, reflects that the Respondent was familiar with the Complainant and
FRONTLINE and FRONTLINE PLUS trademarks. With regard to the bad faith at the time of registration, the
Panel finds that it is likely that the Respondent was aware of the Complainant’s rights and reputation in the
FRONTLINE and FRONTLINE PLUS trademarks at the time the disputed domain name was registered.
Therefore, the Panel holds that the disputed domain name was registered in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, 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, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the reputation of the Complainant’s trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

The Complainant’s FRONTLINE and FRONTLINE PLUS trademarks should be observed as a trademarks that are sufficiently distinctive and that enjoy a certain level of reputation based on longstanding use. The Respondent has failed to provide any response to the Complaint and has therefore failed to provide any

justification for the registration and use of the disputed domain name. Based on the foregoing reasons, the

Panel finds that the disputed domain name in the present case should be observed as use in bad faith.

The disputed domain name does not resolve to an active website.

The Panel finds that the Complainant has established the third element of the Policy.

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 <discountfrontlineplus.com> be transferred to the Complainant.

/Petra Pecar/ Petra Pecar Sole Panelist Date: February 21, 2024