Decision for dispute CAC-UDRP-107641

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

The Complainant invokes the following registered trademark in this case:

- JARDIANCE, international trademark No. 981336 registered since September 3, 2008 in class 5, and covering various countries.

The Complainant is part of a family-owned pharmaceutical group of companies with roots going back to 1885. The Complainant’s group has become a global research-driven pharmaceutical enterprise with about 53,500 employees. It is divided into two business areas: Human Pharma and Animal Health. In 2024, net sales of the BOEHRINGER INGELHEIM group amounted to EUR 26,796 million.

The Complainant developed a prescription medicine used along with diet and exercise to lower blood sugar in adults with type 2 diabetes, and also to reduce the risk of cardiovascular death in adults with type 2 diabetes who have known cardiovascular disease. This medicine is sold under the registered word mark JARDIANCE which covers numerous countries all over the world. The Complainant also owns domain names comprising the same term, such as <jardiance.com> registered on April 30, 2008.

 The disputed domain names <jardiance-commercial.cfd>, <jardiance-used-for.cfd> were registered on May 14, 2025, and the disputed domain name <what-is-jardiance-used-for.cfd> was registered on May 23, 2025. According to the Complainant’s evidence, the disputed domain names all resolved to parking pages including sponsored links. The Panel observes that the disputed domain names currently do not resolve to an active website.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain names should be transferred to it.
No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. 

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in Paragraph 4 (a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities. 

Thus, for the Complainant to succeed, it must prove, within the meaning of Paragraph 4(a) of the Policy and on the balance of probabilities that: 

1. The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 
2. The Respondent has no rights or legitimate interests in respect of the disputed domain names; and 
3. The disputed domain names have been registered and are being used in bad faith. 

 The Panel has therefore dealt with each of these requirements in turn.  

1. Identity of confusing similarity 

The Complainant must first establish that there is a trademark or service mark in which it has rights. Since the Complainant shows to be the holder of the registered JARDIANCE mark, it is established that there is a trademark in which the Complainant has rights.

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 names. 

The Panel observes that the disputed domain names all incorporate the Complainant’s JARDIANCE trademark in its entirety, adding terms such as “commercial”, “what-is” and/or “used-for”. In the Panel’s view, such additions do not prevent the Complainant’s trademark from being recognizable within the disputed domain names (see section 1.8 WIPO Overview 3.0; IM PRODUCTION v. Xue Han, CAC Case No. 104877 <isabel-marantus.com>). 

Finally, it is well established that the Top-Level Domains (“TLDs”) such as “.cfd” may be disregarded when considering whether a disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights (see section 1.11 WIPO Overview 3.0).  

Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark. Accordingly, the Complainant has made out the first of the three elements that it must establish. 

2. No rights or legitimate interests 

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain names. 

It is established case law that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no right or legitimate interest in the disputed domain names in order to shift the burden of production to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain names (although the burden of proof always remains on the Complainant)(see section 2.1 WIPO Overview 3.0 and Champion Innovations, Ltd. V. Udo Dussling (45FHH), WIPO case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO case No. 2004-0110). 

The Panel notes that the Respondent has not been commonly known by the disputed domain names and that the Respondent has not acquired trademark or service mark rights. According to the information provided by the Registrar, the Respondent is known as “Clark Smith” from the organization “VEMOBLI”. The Respondent’s use and registration of the disputed domain names was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.  

Fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner. The correlation between a domain name and the complainant’s mark is often central to this inquiry. Generally speaking, UDRP panels have found that where a domain name consists of a trademark plus an additional term, such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 WIPO Overview 3.0). The disputed domain name <jardiance-commercial.cfd> incorporates the Complainant’s JARDIANCE trademark in its entirety, merely adding the descriptive term “commercial”. In the Panel’s view, this combination may be considered as referring to the Complainant’s commercial business or advertisements.  As for the disputed domain names <jardiance-used-for.cfd> and <what-is-jardiance-used-for.cfd>, the Panel finds that these can easily be referring to the purpose or effect of the Complainant’s products. Therefore, the Panel finds that the disputed domain names carry a risk of implied affiliation with the Complainant and cannot constitute fair use.

According to the Complainant’s evidence, all disputed domain names resolved to parking pages including sponsored links. In the circumstances of the present case, the Panel finds that this does not amount to a legitimate non-commercial or fair use of the disputed domain names, or use in connection with a bona fide offering of goods and services.

The Panel observes that the disputed domain names currently do not resolve to any active website. In the Panel’s view, this does not amount to any legitimate noncommercial or fair use or use in connection with a bona fide offering of goods and services either.    

The Respondent had the opportunity to demonstrate rights or legitimate interests but did not do so.  In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.  

Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain names.  In light of the above, the Complainant succeeds on the second element of the Policy.  

3. Bad faith 

The Complainant must prove on the balance of probabilities that the disputed domain names were registered in bad faith and that these are being used in bad faith (see section 4.2 WIPO Overview 3.0 and e.g. Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052). 

According to the Panel, the awareness of a respondent of the complainant and/or the complainant’s trademark rights at the time of registration can evidence bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070).  

In the present case, the Panel finds that the Respondent must have been aware of the Complainant and its trademark rights when it registered the disputed domain names as:  

• the disputed domain names all incorporate the Complainant’s distinctive trademark in its entirety, without any meaningful additions;
• the Complainant’s mark predates the registration of the disputed domain names by more than 15 years.

In the Panel’s view, the use of the disputed domain names described above (parking pages with sponsored, pay-per-click links) indicates that the Respondent has intentionally attempted to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with the Complainant’s trademark (see Simyo GmbH v. Domain Privacy Service FBO Registrant / Ramazan Kayan, WIPO Case No. D2014-2227). 

Moreover, the Panel finds that the Respondent has engaged in a pattern of bad faith conduct of targeting the Complainant’s JARDIANCE trademark by registering at least 4 domain names including the JARDIANCE trademark in its entirety. Through a quick search, the Panel discovered that in addition to the 3 disputed domain names, the Respondent registered yet another domain name including the JARDIANCE mark, which has already been found to be in bad faith (see Boehringer Ingelheim International GmbH v. Clark Smith (VEMOBLI), CAC Case No. 107533 <jardiance-generic.cfd>).

The Complainant also shows that the Respondent targets third party trademarks as well (see Belmont Village, L.P. v. Clark Smith, VEMOBLI, WIPO Case No. D2025-1327, <belmont-village-senior-living.cfd>).

Finally, the Respondent did not formally take part in the administrative proceedings. According to the Panel, this serves as an additional indication of the Respondent’s bad faith.  

Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the disputed domain names were registered and are being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element of the Policy.