Boehringer Ingelheim Animal Health France v Juan Castro

WIPO Case No. D2023-2439

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim Animal Health France v. Juan Castro

Case No. D2023-2439

1. The Parties

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

France.

The Respondent is Juan Castro, United States of America

2. The Domain Name and Registrar

The disputed domain name <frontlinepestexperts.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 6, 2023. On June 6, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 6, 2023, 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 (Contact Privacy Inc. Customer 7151571251) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 7, 2023, 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 13, 2023.

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 13, 2023. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2023.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on August 30, 2023. 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 70F1.

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4. Factual Background

The Boehringer Ingelheim Animal Health business is a global leader in the animal health industry and part of the family-owned Boehringer Ingelheim company, founded in 1885. The FRONTLINE branded product is indicated for the treatment and prevention of fleas, ticks and chewing lice in dogs and cats, and aids in the control of sarcoptic mange in dogs.

The Complainant has proven to have rights in the FRONTLINE trademarks, which enjoy protection through several registrations.

The Complainant has rights, inter alia, in the following trademarks:

International trademark registration no. 621912 for FRONTLINE (device), registered on June 9, 1994;
International trademark registration no. 1245236 for FRONTLINE (word), registered on January 30, 2015.

The disputed domain name <frontlinepestexperts.com> was registered on June 1, 2023, and is currently inactive

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the
Policy require that the Complainant must demonstrate to the Panel that:

(i)           the disputed domain name 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 disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant has established rights in the FRONTLINE trademarks.

The disputed domain name reproduces the FRONTLINE trademark in its entirety combined with the words
“pest” and “experts”.

Pursuant to section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which states: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”

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The inclusion of the terms “pest” and “experts” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s FRONTLINE trademark.

The generic Top-Level Domain (“gTLD”) “.com” can be ignored when assessing confusing similarity as it is a standard registration requirement.

Therefore, the Panel finds the disputed domain name to be confusingly similar to the FRONTLINE trademark in which the Complainant has rights.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.

The Respondent does not appear to be commonly known by the name “frontlinepestexperts” or by any similar name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark.

The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In fact, there is no active website available at the disputed domain name.

In addition, the Respondent does not appear to be commonly known by the disputed domain name or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain name.

The absence of a response by the Respondent allows the Panel to draw inferences, and under the circumstances, the absence of a response leaves the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name unrebutted.

Finally, the nature of the disputed domain name is inherently misleading as it effectively suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 6(a)(ii) of the Policy.

C. Registered or Used in Bad Faith

The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions existence of the Complainant and its activity.

that the disputed domain name was registered in bad faith and that it has been used in bad faith.

The Complainant has established a strong reputation and goodwill in its FRONTLINE trademark, and this has also been confirmed by past panels in previous decision such as in Boehringer Ingelheim Animal Health France v. chen xiu hong, WIPO Case No. D2020-2591 where it was affirmed that: “Through extensive use and advertising, the Complainant’s FRONTLINE trade mark is known throughout the world.”).

In addition, the Respondent, by registering a domain name that incorporates the Complainant’s renowned trademark in its entirety combined with the term “pest”, which clearly relates to the Complainant’s products, and the term “experts”, has intentionally created a domain name that is confusingly similar to the Complainant’s trademark. As such, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business.

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This Panel believes that the above shows that the Respondent’s choice of the disputed domain name cannot be a coincidence, and thus indicates the Respondent’s knowledge of the Complainant’s trademark and activity when registering the disputed domain name.

Furthermore, the Panel finds that the inactive use of the disputed domain name in this case would not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Overview 3.0. In the circumstances of this proceeding, the construction of the disputed domain name, and the lack of the Respondent’s participation in this proceeding, the Panel finds that the non-use of the disputed domain name does not prevent a finding of bad faith

Finally, it is relevant to note that, if the Respondent did have legitimate purposes in registering and using the disputed domain name, it could have responded to the allegations made by the Complainant in this proceeding, but the Respondent chose not to do so.

Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name 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, <frontlinepestexperts.com>, be transferred to the Complainant.

/Fabrizio Bedarida/
Fabrizio Bedarida
Sole Panelist
Date: September 13, 2023
1 It has been necessary for the previously appointed Panelist to recuse himself from the case.