DECISION

Boehringer Ingelheim Chemicals, Inc. v. Tsoi Pochung

Claim Number:  FA0308000190513

PARTIES

Complainant is Boehringer Ingelheim Chemicals, Inc., Petersburg, VA, USA (“Complainant”) represented by Timothy X. Witkowski. Respondent is Tsoi Pochung, Hong Kong, China (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bici.com>, registered with Enom, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 25, 2003; the Forum received a hard copy of the Complaint on August 26, 2003.

On September 2, 2003 , Enom, Inc. confirmed by e-mail to the Forum that the domain name <bici.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On September 2, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 22, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@bici.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 10, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <bici.com> domain name is identica to Complainant’s B.I.C.I. mark.

2. Respondent does not have any rights or legitimate interests in the <bici.com> domain name.

3. Respondent registered and used the <bici.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Boehringer Ingelheim Chemicals, Inc., manufactures fine chemicals for sale in both the United States and the global market. Complainant obtained a registration for the B.I.C.I. mark (an acronym of the Boehringer Ingelheim Chemicals, Inc trade name) with the Commonwealth of Virginia (File No. 2,948) on December 27, 2002, and claimed first use of the mark in commerce in August of 1999.

Respondent, Tsoi Pochung, registered the <bici.com> domain name on November 10, 2002. Respondent has made no use of the disputed domain name since registration, other than to post an “under construction” type webpage.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

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

Identical and/or Confusingly Similar

Complainant has established rights in the B.I.C.I. mark through registration of the mark with the Commonwealth of Virginia. See Desktop Media, Inc. v. Desktop Media, Inc., FA 96815 (Nat. Arb. Forum Apr. 12, 2001) (“[F]or the limited purposes of the domain name dispute resolution process[,] a low threshold of proof is all that is required to meet the first element ….”); see also Lee Enters., Inc. v. Polanski, FA 135619 (Nat. Arb. Forum Jan. 22, 2003) (finding evidence that Complainant had established rights in the BILLINGS GAZETTE mark through registration with the Montana and Wyoming state trademark officials); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that Complainant’s trademark registrations in Pennsylvania and New Jersey operated as evidence that Complainant had sufficient standing to bring a claim under the UDRP).

Respondent’s <bici.com> domain name is identical to Complainant’s B.I.C.I. mark. The subject domain name removes the periods from Complainant’s mark, a change that is irrelevant under the Policy. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark).

Accordingly, the Panel finds that the <bici.com> domain name is identical to Complainant’s B.I.C.I. mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not submitted a Response to the Complaint. Thus, the Panel chooses to consider the allegations contained within the Complaint in a light most favorable to Complainant, and considers Respondent’s lack of response as an admission that it lacks rights or legitimate interests in the disputed domain name. See Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s failure to respond: (1) Respondent does not deny the facts asserted by Complainant, and (2) Respondent does not deny conclusions which Complainant asserts can be drawn from the facts); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Respondent does not use the disputed domain name, but rather hosts an “under construction” webpage. Without a submission from Respondent evidencing a demonstrable preparation to use the disputed domain name, Respondent’s non-use cannot be considered to fall under the safe harbor protections of Policy ¶ 4(c)(i). Respondent’s failure to use the disputed domain name also prevents it from being afforded the protections of Policy ¶ 4(c)(iii). See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute and the domain name did not resolve to a website); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established).

As Respondent lists its name as “Tsoi Pochung” in its WHOIS contact information, and is not authorized by Complainant to use the B.I.C.I. mark, the Panel has no evidence that Respondent is “commonly known by” the disputed domain name. Thus, Policy ¶ 4(c)(ii) cannot apply to Respondent. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <bici.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant alleges, and Respondent does not controvert, that Respondent registered the disputed domain name in an attempt to capitalize on the goodwill surrounding the B.I.C.I. mark. Given Complainant’s rights in the mark, and the fact that there is no evidence to the contrary, the Panel infers that Respondent was aware of Complainant’s rights in the relevant mark at registration. Under these circumstances, Respondent’s passive holding of an infringing domain name evidences bad faith use and registration under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).

The Panel thus finds that Respondent registered and used the <bici.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <bici.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  October 20, 2003

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