GmbH & Co. Kg v 深圳市梵凝科技有限公司 (shen zhen shi fan ning ke ji you

WIPO Case No. D2025-0019

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim International GmbH, Boehringer Ingelheim Pharma
GmbH & Co. Kg v. 深圳市梵凝科技有限公司 (shen zhen shi fan ning ke ji you
xian gong si)

Case No. D2025-0019

1. The Parties

The Complainants are Boehringer Ingelheim International GmbH (“the Complainant A”) and Boehringer

Ingelheim Pharma GmbH & Co. Kg (“the Complainant B”), Germany, represented by Nameshield, France.

The Respondent is 深圳市梵凝科技有限公司 (shen zhen shi fan ning ke ji you xian gong si), China.

2. The Domain Names and Registrar

The disputed domain names <trajenta4.site> and <pradaxa4.site> are registered with DNSPod, Inc. (the

“Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2025. On January 3, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 6, 2025, the Registrar 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 Complainant on January 7, 2025, providing the additional registrant and contact information disclosed by the Registrar.

On January 7, 2025, the Center informed the Parties in Chinese and English, that the language of the Registration Agreements for the disputed domain names is Chinese. On January 7, 2025, the Complainants filed an amended Complaint and requested English to be the language of the proceeding. The Respondent did not submit any comment on the Complainants’ submission.

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 in Chinese and English of the Complaint, and the proceedings commenced on January 8, 2025. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2025.

The Center appointed Karen Fong as the sole panelist in this matter on January 31, 2025. 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 Complainants are both subsidiaries of the Boehringer Ingelheim group of companies and are affiliated entities under common control. The Boehringer Ingelheim group is a family-owned pharmaceutical group of companies. In 2023 the group’s net sales was approximately EUR 25.6 billion. The Complainant A is the owner of the trade mark TRAJENTA. TRAJENTA is used to treat type 2 diabetes. The Complainant B is the owner of the trade mark PRADAXA. PRADAXA is an oral anticoagulant from the class of direct thrombin inhibitors. The Complainants own trade mark registrations for TRAJENTA and PRADAXA in different jurisdictions including the following:

- International Trade Mark Registration No. 935517 for TRAJENTA registered since August 3, 2007, designating various countries including China; and

- International Trade Mark Registration No. 807503 for PRADAXA registered since July 9, 2003,

designating various countries including China;

(collectively referred to as the Trade Marks).

The Complainants also own a large portfolio of domain names comprising the Trade Marks including

<trajenta.com> and <pradaxa.com>.

The Respondent registered <trajenta4.site> on December 20, 2024 and <pradaxa4.site> on December 19,
2024 respectively. Both of the disputed domain names resolve to a pay-per-click (“PPC”) webpages with

commercial links to third party websites (the “Websites”).

5. Parties’ Contentions

A. Complainants

The Complainants contend that they have satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Notably, the Complainants contend that the disputed domain names are confusingly similar to the Trade Marks in which they have rights, that the Respondent has no rights or legitimate interests with respect to the disputed domain names, and that the disputed domain names were registered and are being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

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6. Discussion and Findings

6.1 Preliminary Issues

A. Consolidation: Multiple Complainants

The Complainants request the consolidation of the Complaint against the two disputed domain names in a single proceeding pursuant to paragraph 10(e) of the Rules.

The Respondent did not comment on the Complainants’ request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.

In addressing the Complainants’ request, the Panel will consider whether (i) the Complainants have a specific common grievance against the Respondent, or the Respondent has engaged in common conduct that has affected the Complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1.

As regards common grievance and common conduct, the Panel notes the following:

- Each Complainant is a subsidiary of the Boehringer Ingelheim group of companies and are affiliated entities under common control;

- Both of the disputed domain names comprise the main Trade Marks of each of the Complainants;

- The arguments made in the Complaint are virtually identical for both of the disputed domain names;

- The Complainants share a common legal interest and complaint against the Respondent;

- The Respondent’s acts have affected the rights and interests of each of the Complainants in a similar

fashion.

The evidence submitted points to the fact that the Complainants have a specific common grievance against the Respondent and the Respondent has engaged in common conduct that has affected the Complainants in a similar fashion. The Respondent had the opportunity but did not respond to the Complaint. As regards equity and procedural efficiency, the Panel sees no reason why consolidation of the disputes would be inequitable to any Party and it would in fact be procedurally efficient to consolidate the proceedings.

Accordingly, the Panel decides to consolidate the disputes regarding the two Complainants in a single proceeding.

B. Language of the Proceeding

The language of the Registration Agreements for the disputed domain names is Chinese. 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 Complainants requested that the language of the proceeding be
English for the following reasons:

- the English language is the language most widely used in international relations and is one of the working languages of the Center;

-	The disputed domain names are formed by words in Roman characters (ASCII) and not in Chinese
script;

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- In order to proceed in Chinese, the Complainants would have had to retain specialized translation

services at a cost very likely to be higher than the overall cost of these proceedings. The use of Chinese in
this case would therefore impose a burden on the Complainants which must be deemed significant in view of
the low cost of these proceedings.

The Respondent has not challenged the Complainants’ language request and in fact has failed to file a response in either English or Chinese.

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 WIPO Overview 3.0, section 4.5.1).

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 Issues

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 Trade Marks and the disputed domain names. WIPO Overview 3.0, section 1.7.

Based on the available record, the Panel finds the Complainants have shown rights in respect of a trade mark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The Panel finds that the entirety of each of the Trade Marks is reproduced within each of the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the Trade Marks for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

While the addition of the numeral “4” to each of the disputed domain names 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 names and the Trade Marks for the purposes of the Policy.

WIPO Overview 3.0, sections 1.8.

Based on the available record, 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.

While 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 often impossible 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. 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.

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

Based on the available record, 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 must have been aware of the Trade Marks when it registered the disputed domain names given the reputation of the Trade Marks and the fact that they have no meaning other than in connection with the Complainants’ products.

In the WIPO Overview 3.0, section 3.2.2 states as follows:

“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in
circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a
respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers),
panels have been prepared to infer that the respondent knew, or have found that the respondent should
have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further
factors including the nature of the domain name, the chosen top-level domain, any use of the domain name,
or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s
mark.”

The fact that there is a clear absence of rights or legitimate interests coupled with the Respondent’s choice of the disputed domain names without any explanation is also a significant factor to consider (as stated in WIPO Overview 3.0, section 3.2.1). The disputed domain names fall into the category stated above and the Panel finds that the registration is in bad faith. The fact that the disputed domain names have no meaning other than in connection with the Complainants’ products and that the Respondent registered two disputed domain names that comprise two different Trade Marks belonging to the Complainants further indicates that the Respondent had actual knowledge of and was targeting the Complainants when registering the disputed domain names.

The disputed domain names are also being used in bad faith.

The Websites are PPC sites which have been set up for the commercial benefit of the Respondent. It is comprise the Complainants’ distinctive Trade Marks.
highly likely that Internet users when typing the disputed domain names into their browser or finding them
through a search engine would have been looking for sites operated by the Complainants rather than the
Respondent. The disputed domain names are likely to confuse Internet users trying to find the

The Respondent employs the reputation of the Trade Marks to mislead users into visiting the disputed domain names instead of the Complainants’ websites. From the above, the Panel concludes that the Respondent has intentionally attempted to attract for commercial gain, by misleading Internet users into

believing that the Respondent’s Websites are those of or authorised or endorsed by the Complainants.

The Panel therefore finds that the disputed domain names have been registered and are being used in bad faith under paragraph 4(b)(iv) of the Policy.

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Based on the available record, the Panel finds the third element of the Policy has been established.

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 <trajenta4.site> be transferred to the Complainant A (Boehringer
Ingelheim International GmbH) and the disputed domain name <pradaxa4.site> be transferred to the
Complainant B (Boehringer Ingelheim Pharma GmbH & Co. Kg).

/Karen Fong/ Karen Fong Sole Panelist Date: February 7, 2025