Boehringer Ingelheim Pharma GmbH & Co.KG v Tatyana Burdzenidze

WIPO Case No. D2023-4613

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim Pharma GmbH & Co.KG v. Tatyana Burdzenidze

Case No. D2023-4613

1. The Parties

The Complainant is Boehringer Ingelheim Pharma GmbH & Co.KG, Germany, represented by Nameshield,

France.

The Respondent is Tatyana Burdzenidze, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <micardis.pro> (the “Domain Name”) is registered with Registrar of Domain

Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on

November 7, 2023. On November 8, 2023, the Center transmitted by email to the Registrar a request for
registrar verification in connection with the Domain Name. On November 14, 2023, the Registrar transmitted
by email to the Center its verification response, disclosing registrant and contact information for the Domain
Name which differed from the named Respondent (Redacted For Privacy, Private Person), and contact
information in the Complaint. The Center sent an email communication to the Complainant on November 22,
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
November 23, 2023.

On November 22, 2023, the Center informed the Parties in Russian and English, that the language of the registration agreement for the Domain Name is Russian. On November 23, 2023, the Complainant submitted the request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the with the Rules, paragraph 5, the due date for Response was December 19, 2023. The Respondent did not

submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2023.

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on January 5, 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 is a pharmaceutical company founded in 1885. In 2022, the Complainant achieved the net sales of EUR 24.1 billion.

One of the Complainant’s products is a medication under the brand name MICARDIS. It is used to treat

hypertension.

The Complainant is the owner of numerous MICARDIS trademark registrations, including:

-	the International Trademark Registration for MICARDIS (word) No. 691750, registered on March 13,
1998; and
-	the International Trademark Registration for MICARDIS (figurative) No. 523578, registered on May 18, 1988.

The Domain Name was registered on September 22, 2023.

At the time of submitting the Complaint and as of the date of this Decision, the Domain Name has resolved to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name.

First, the Complainant contends that the Domain Name is identical to the MICARDIS trademark in which the

Complainant has rights.

Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the

Domain Name.

Third, the Complainant submits that the Domain Name was registered and is being used in bad faith.

B. Respondent

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

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6. Discussion and Findings

6.1. Preliminary Matters – Language of the Proceeding

The language of the Registration Agreement for the Domain Name is Russian. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint was filed in English. The Complainant requests that the language of the proceeding be English for several reasons. First, the Complainant submits that the English language is the most widely used language in international relations. It is also one of the working languages of the Center. Second, the Complainant notes that the Domain Name is composed of the Latin characters. Third, the Complainant contends that in order to proceed in Russian, the Complainant would have to retain specialized translation services at a cost very likely to be higher than the overall cost of these proceedings. It would, thus, impose significant burden on the Complainant.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all

relevant circumstances of the case, including matters such as the parties’ ability to understand and use the

proposed language, time and costs. See section 4.5.1 of the WIPO Overview of WIPO Panel Views on

Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel finds that substantial additional expense and delay would likely be incurred if the Complainant had to be translated into Russian. Moreover, the Panel notes that the Respondent did not comment or let alone

object to the Complainant’s arguments concerning the language of the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

6.2. Substantive Matters – Three Elements

Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows:

(i)        the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii)       the Respondent has no rights or legitimate interests in the Domain Name; and

(iii)      the Domain Name has been registered and is being used in bad faith.

The requested remedy may only be granted if the above criteria are met. At the outset, the Panel notes that

the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the

evidence”. See section 4.2 of the WIPO Overview 3.0.

A. Identical or Confusingly Similar

Under the first element, the Complainant must establish that the Domain Name is identical or confusingly similar to the trademark in which the Complainant has rights.

The Complainant holds valid MICARDIS trademark registrations. The Domain Name incorporates this
trademark in its entirety. As numerous UDRP panels have held, incorporating a trademark in its entirety is
sufficient to establish that a domain name is identical or confusingly similar to that trademark (see PepsiCo,
Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case
No. D2003-0696).

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The generic Top-Level Domain (“gTLD”) “.pro” in the Domain Name is viewed as a standard registration

requirement and as such is disregarded under the first element test. See section 1.11.1 of the

WIPO Overview 3.0.

Given the above, the Panel finds that the Domain Name is identical to the Complainant’s MICARDIS

trademark for purposes of the Policy. Thus, the Complainant has satisfied the requirements under

paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under the second element, the Complainant must prove that the Respondent has no rights or legitimate interests in the Domain Name.

The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i)        that it has used or made preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to the dispute; or

(ii)       that it is commonly known by the Domain Name, even if it has not acquired any trademark rights; or

(iii)      that it is making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case.

On the contrary, it results from the evidence on record that the Complainant’s MICARDIS trademark registrations predate the Respondent’s registration of the Domain Name. There is no evidence in the case

record that the Complainant has licensed or otherwise permitted the Respondent to use the MICARDIS
trademark or to register the Domain Name incorporating this trademark. There is also no evidence to

suggest that the Respondent has been commonly known by the Domain Name.

Moreover, it results from the evidence on record that the Respondent does not make use of the Domain
Name in connection with a bona fide offering of goods or services, nor does it make a legitimate
noncommercial or fair use of the Domain Name. On the contrary, at the time of submitting the Complaint
and as of the date of this Decision, the Domain Name has resolved to an inactive website. In fact, it does not
result from the case evidence that the Domain Name has been used in any active way to date.

Furthermore, the composition of the Domain Name, wholly incorporating the MICARDIS trademark by itself, carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.

Given the above, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Name.

Thus, there is no evidence in the case file that refutes the Complainant’s prima facie case. The Panel

concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under the third element, the Complainant must prove that the Domain Name has been registered and is being used in bad faith.

Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s trademark. See section 3.1 of the WIPO Overview 3.0.

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Under paragraph 4(b) of the Policy, evidence of bad faith registration and use includes without limitation:

(i)        circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of- pocket costs directly related to the domain name; or

(ii)       circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or

(iii)      circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv)      circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

As indicated above, the Complainant’s rights in the MICARDIS trademark predate the registration of the

Domain Name. This Panel finds that the Respondent was or should have been aware of the Complainant’s

trademark at the time of registration. This finding is supported by the composition of the Domain Name consisting exclusively of the MICARDIS trademark and the gTLD. Moreover, it has been proven to the

Panel’s satisfaction that the Complainant’s MICARDIS trademark is well known and unique to the

Complainant. Thus, the Respondent could not likely reasonably ignore the reputation of product under this trademark. In sum, the Respondent in all likelihood registered the Domain Name with the expectation of

taking advantage of the reputation of the Complainant’s MICARDIS trademark.

Moreover, as of the date of this Decision, as well as at the time of submitting the Complaint, the Domain

Name has not resolved to an active website. Considering the overall circumstances of this case, the Panel

finds that the Respondent’s passive holding of the Domain Name does not prevent a finding of bad faith. As

numerous UDRP panels have held, passive holding, under the totality of circumstances of the case, would not prevent a finding of bad faith under the Policy. See section 3.3 of the WIPO Overview 3.0. Here, given

the well-known nature of the Complainant’s trademark and the implausible good faith use to which the

Domain Name may be intrinsically put, the Panel agrees with the above.

Finally, the Respondent’s use of privacy services that concealed registrant information constitutes additional

evidence of bad faith.

For the reasons discussed above, the Panel finds that the Complainant has proved the requirements under paragraph 4(a)(iii) 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 Domain Name, <micardis.pro>, be transferred to the Complainant.

/Piotr Nowaczyk/

Piotr Nowaczyk

Sole Panelist
Date: January 16, 2024