Complainant is Boehringer Ingelheim Pharma GmbH & Co. KG of Ingelheim am Rhein, Germany, represented by Schiedermair Rechtsanwälte, Germany.
Respondent is Klinik Sari Padma, BAKTI HUSADA of Mataram, Nusa Tenggara Barat, Indonesia. 2. The Domain Names and Registrar
The disputed domain names and are registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2014. On February 27, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 27, 2014 and March 6, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 1, 2014.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on April 16, 2014. 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
Complainant is a company dedicated to researching, developing, manufacturing and marketing pharmaceuticals, having as its two main business areas, human pharmaceuticals and animal health.
Complainant owns numerous registrations worldwide for trademarks containing the term “Boehringer Ingelheim”, some of which date back to the year 1912, as the word mark Boehringer Ingelheim registered before the German Patent and Trademark Office, DPMA 158470, as per Annex C7 of the Complaint.
Complainant also owns several domain names bearing the term “Boehringer Ingelheim”, among which are (since July 4, 2004), (since July 11, 2006) and (since August 24, 2006).
According to the Registrar’s verification response, the disputed domain name was registered by Klinik Sari Padma on July 1, 2013 and the disputed domain name was registered by BAKTI HUSADA on September 23, 2013.
The Panel notes that Klinik Sari Padma and BAKTI HUSADA share the same contact details, as confirmed by the Registrar and displayed on the publicly available WhoIs. 5. Parties’ Contentions A. Complainant
Complainant argues that this dispute is a classic case of cyber-squatting. Complainant is a global pharmaceutical enterprise under the name of Boehringer Ingelheim, which is part of the company’s name since its foundation, in 1885, and the disputed domain names are composed of this expression.
Complainant further claims that the name/trademark Boehringer Ingelheim is protected worldwide by hundreds of trademark registrations in favor of Complainant, and alleges that it is clear that the disputed domain names are identical or at least confusingly similar with Complainant’s trademark BOEHRINGER INGELHEIM since both contain the referred trademark in its entirety.
Moreover, Complainant also holds that the mere addition of a Top-Level Domain (“TLD”) suffix is impertinent in an examination of identity, as per previous WIPO cases, such as Credit Management Solutions, Inc. v. Collex Resource Management,WIPO Case No. D2000-0029.
Complainant states that the disputed domain name consists of a type of typo-squatting, since it arises from the reverse order of Complainant’s trademark, namely “IngelheimBoehringer” instead of Boehringer Ingelheim.
Complainant also claims that Respondent has registered and is using the disputed domain names in bad faith since Respondent has used the trademark BOEHRINGER INGELHEIM intentionally to attract, for commercial gain, Internet users to its websites, by creating likelihood of confusion with the BOEHRINGER INGELHEIM trademark, owned by Complainant.
Additionally, Complainant points that Respondent intended to sell the disputed domain names to Complainant, for an amount of USD 10,000 each, which clearly exceeds the costs that in fact occurred in connection with the disputed domain names’ registrations, characterizing bad faith as well.
Lastly, Complainant affirms that it has neither granted Respondent any license nor has it otherwise permitted Respondent to use the trademark BOEHRINGER INGELHEIM or even to apply for any domain names incorporating said trademark. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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 faith.
The burden of proving these elements is on Complainant. A. Identical or Confusingly Similar
Complainant has duly proven the first element under paragraph 4(a) of the Policy by attesting that it is the legitimate owner of several trademark registrations for BOEHRINGER INGELHEIM worldwide. The Panel finds that such trademark is identical to the disputed domain name and the TLD is generally disregarded for the purposes of the identical/similar test under the UDRP.
In addition, the Panel also considers that the disputed domain name is confusingly similar to Complainant’s trademark, since it is composed by the exact same terms, “Boehringer Ingelheim”, only written in reverse order.
The Panel understands that a domain name containing a trademark in its entirety is sufficient to cause confusion and create false associations between Complainant and Respondent, misguiding consumers into believing that Respondent’s activities are related to the products and services provided under the BOEHRINGER INGELHEIM trademark.
Therefore, the Panel finds that the disputed domain names and are respectively identical and confusingly similar to Complainant’s BOEHRINGER INGELHEIM trademark. B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”) as follows: “[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case, Complainant has provided sufficient prima facie evidence of Respondent’s lack of rights or legitimate interests in the disputed domain names, so the burden of production shifts to Respondent. As Respondent has not filed any response, that burden has not been discharged, and the Panel has considered Complainant’s prima facie evidence to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain names and .
The Panel acknowledges that Complainant has never entered in any agreement, authorization or license whatsoever with Respondent, regarding the use of the trademark BOEHRINGER INGELHEIM.
Furthermore, it is clear that there is no trademark registered, in the name of Respondent, that consists of, or contains, the terms “Boehringer Ingelheim”, and that it has no rights on an unregistered basis to such a mark. On that account, the Panel is also of the same opinion that “Boehringer” is not a generic term, nor descriptive of Complainant’s products, being a traditional family name, introduced by Albert Boehringer precisely, Complainant’s founder.
Also, the Panel concurs that Respondent is not commonly known under the disputed domain names, but it is preferably exploiting other parties’ success and recognition, such as Complainant’s.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect to the disputed domain names (Policy, paragraph 4(a)(ii)). C. Registered and Used in Bad Faith
The Panel finds it is highly unlikely that Respondent had no knowledge of Complainant’s company name and legal rights to the trademark BOEHRINGER INGELHEIM at the time of registration of the disputed domain names, considering its notorious status and success in the pharmaceutical field.
The Panel acknowledges that Respondent registered the disputed domain names with the purpose of selling them to Complainant for the amount of USD 10,000 each, in accordance with Annex C9 of the Complaint.
The Panel considers that this fact alone proves that the disputed domain names were registered and are being used in bad faith, given that, according to paragraph 4(b)(i) of the Policy, “circumstances indicating that you [the respondent] have registered or you [the respondent] have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your [the respondent’s] documented out-of-pocket costs directly related to the domain name”, are considered evidence of the registration and use of a domain name in bad faith.
Moreover, it is clear to the Panel that the disputed domain names may create false associations between Complainant and Respondent, misleading consumers into believing that Respondent is an authorized retailer of Complainant’s products, which Complainant has confirmed not to be true.
Accordingly, the Panel concludes that the disputed domain names were registered and are being used 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 names and be transferred to Complainant.
Gabriel F. Leonardos
Sole Panelist
Date: April 28, 2014
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