The Complainant is BOEHRINGER Ingelheim Pharma GmbH & Co. KG of Ingelheim, Germany, represented by Nameshield, France.
The Respondent is Martin Hughes of Hamburg, Germany. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Center of Ukrainian Internet Names (UKRNAMES) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2016. On July 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 29, 2016, 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 Registrar informed the Center that the language of the Registration Agreement for the Domain Name was Russian. On August 2, 2016, the Center sent the the language of the proceedings document in both English and Russian, and invited the Complainant to state its position on this issue by August 5, 2016, and the Respondent by August 7, 2016. On August 9, 2016, the Complainant informed the Center by email that the Complainant requests English as the language of the proceeding. The Respondent did not submit any comments on the language issue.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2016. No formal Response was filed with the Center.
The Center appointed Olga Zalomiy as the sole panelist in this matter on September 15, 2016. 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.
On August 19, 2016 a communication was received by the Center by fax from a third party. The Center acknowledged receipt of the communication on August 24, 2016. 4. Factual Background
The Complainant is German pharmaceutical group of companies. The Complainant owns trademark registrations for the BOEHRINGER trademark, international registration number 799761 registered December 2002 and for the BOEHRINGER-INGELHEIM trademark, international registration number 221544, registered July 2, 1959. The Complainant owns the , , , , , , and domain names that were registered between 1995 and 2006.
The Respondent registered the Domain Name on April 25, 2016. The Domain Name does not currently resolve to any website.
On June 17, 2016, the Complainant’s representative sent Respondent a cease and desist letter advising the Respondent about the Complainant’s rights to the BOEHRINGER and to the BOEHRINGER-INGELHEIM trademarks and demanded that the Respondent transferred his rights in the Domain Name to the Complainant. The Respondent never responded to the letter.
On August 19, 2016, a patent attorney from Hamburg, Germany, sent a facsimile correspondence to the Center stating that one of his firms’ clients received a letter addressed to the Respondent. The delivered letter was the Center’s August 16, 2016 notification of the Complaint and was mailed and purportedly delivered to the address that was stated in the Respondent’s contact information. According to the patent attorney, that address was also the address of his client’s company. However, neither the Respondent, nor Respondent’s phone number or Respondent’s email address specified in the August 16, 2016 notification, belonged to his client’s company. 5. Parties’ Contentions A. Complainant
The Complainant claims that it is a family-owned pharmaceutical group of companies which was founded in the end of the XIX century in Germany. The Complainant alleges that it owns a portfolio of brands, which also includes the BOEHRINGER and the BOEHRINGER-INGELHEIM trademarks. The Complainant alleges that it owns several domain names incorporating its trademarks.
The Complainant claims that the Domain Name is confusingly similar to its well-known BOEHRINGER-INGELHEIM trademark. The Complainant contends that use of the letter “a” instead of the letter “e” in the term “ingelheim” and the generic top-level domain “.com” is not sufficient to avoid confusing similarity between the Domain Name and the Complainant’s trademarks. The Complainant alleges that this is a case of typosquatting, where the Domain Name contains an obvious misspelling of the Complainant’s trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name because it is not affiliated with the Complainant and the Complainant has no business with the Respondent. The Complainant claims that it has not granted either a license or authorization to the Respondent to use or register the Domain Name. The Complainant argues that the Respondent is not using the Domain Name in connection with bona fide offering of goods or services, nor it is making a legitimate noncommercial or fair use of the Complainant’s trademark. The Complainant alleges that the Domain Name was suspended by its hosting provider. The Complainant claims that the Respondent registered the Domain Name to create a likelihood of confusion with the Complainant’s trademarks, corporate name and domain names as to the source, sponsorship, affiliation or endorsement for commercial gain.
The Complainant contends that the Domain Name was registered and is being used in bad faith. The Complainant claims that its trademarks are well-known. The Complainant claims that the Respondent, who, like the Complainant, is located in Germany, was aware of the Complainant at the moment of the Domain Name registration. The Complainant contends that the Respondent registered the Domain Name intentionally to attract, for commercial gain, Internet users or its website or other online location, by creating confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location, or product, or service on its website or location. The Complainant claims that the registration of the Domain Name is a case of typosquatting. The Complainant alleges that it sent the Respondent a cease and desist letter, to which the Respondent did not reply. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the proceeding
Paragraph 11(a) of the Rules provides that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Because the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding would be Russian. However, the Complainant requested that the language of the proceeding be English because the Domain Name was registered in Roman characters, the English language is the most widely used language in international relations and is one of the working languages of the Center, and both the Complainant and the Respondent are residents of Germany. The Complainant argues that to proceed with the case in Russian, the Complainant would have to retain a translation at a cost that would likely be higher than the cost of the UDRP proceeding and that it would impose a financial burden on the Complainant. The Complainant contends that the Center contacted the parities in both English and Russian and that it provided the Respondent with an opportunity to respond in Russian.
The Panel accepts the Complainant’s arguments. It is established practice to make a decision regarding the language of the proceeding that ensures fairness to the parties and maintains an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. See, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593. Here, the Center advised the Respondent in both English and Russian about an opportunity to object to the Complainant’s request for English or to request Russian to be the language of the proceeding, but the Respondent failed to do so. Therefore, it would not be unfair to the Respondent if the Panel proceeds to this decision in English. In turn, to require the Complainant to translate the documents in this case into Russian will lead to an undue and unnecessary burden. The Panel, therefore, grants the Complainant’s request that English to be the language of this proceeding. 6.2. General Discussion
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)). A. Identical or Confusingly Similar
The evidence on file shows that the Complainant owns trademark registrations for the BOEHRINGER-INGELHEIM and the BOEHRINGER trademarks.
It is well-established that “[a] domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name.”1 Here, the Domain Name consists of the BOEHRINGER-INGELHEIM trademark and the generic Top-Level Domain (“gTLD”) suffix “.com”. The Domain incorporates the Complainant’s BOEHRINGER-INGELHEIM trademark in its entirety. The only difference between the Domain Name and the Complainant’s BOEHRINGER-INGELHEIM trademark is the use of the letter “a” instead of the letter “e” in the term “ingelheim”, which is an obvious misspelling of the Complainant’s trademark. The gTLD suffix “.com” is to be generally disregarded under the confusing similarity test (as TLDs are a technical requirement of registration). Therefore, the Domain Name is confusingly similar to the Complainant’s BOEHRINGER-INGELHEIM trademark.
Therefore, the Panel holds that the first element of the UDRP has been proved. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the UDRP, the Respondent may establish that it has rights or legitimate interests in the Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable 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; or
(ii) the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent 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 or service mark at issue.
Once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name2. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.3
The Complainant contends that the Respondent has no right or legitimate interests in respect of the Domain Name. The Complainant claims that it granted no licenses or authorizations to the Respondent to use its trademarks in connection with the Domain Name. The Complainant contends that the Respondent is neither affiliated, nor conducts any business with the Complainant. The Complainant argues that the Respondent is not using the Domain Name in connection with bona fide offering of goods or services, nor it is making a legitimate noncommercial or fair use of the Complainant’s trademark.
The Panel finds that it is more likely than not that the Complainant’s contentions are true, the Respondent did not dispute the Complainant’s contentions and there is no evidence to the contrary. The evidence on file shows that the Respondent has not been commonly known by the Domain Name and he is not making legitimate commercial or fair use of the Domain Name.
Therefore, the Panel holds that the second element of the UDRP has been satisfied. C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
It is likely that the Respondent registered and is using the Domain Name is bad faith based on cumulative circumstances of the case. The Respondent filed no response to the Complaint, which permits the Panel to accept the Complainant’s reasonable allegations as true. While the Respondent is not using the Domain Name to resolve to any website, it is well-established that “the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well‑known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity.”4 Based on the evidence, it is likely that the Respondent concealed his identity by providing contact information that belonged to a different party when registering the Domain Name. In addition, the registration of the Domain Name which contains obvious misspelling of the Complainant’s BOEHRINGER‑INGELHEIM trademark and which is virtually identical to the Complainant’s domain name constitutes registration and use bad faith. See, Go Daddy Software, Inc. v. Daniel Hadani,WIPO Case No. D2002-0568 (where the panel found that typosquatting is virtually per se registration and use in bad faith). Moreover, the Complainant has provided evidence to indicate that the Domain Name was suspended by the hosting provider, which is further indicative of the Respondent’s bad faith. Therefore, the Panel finds that it is likely that the Domain Name was registered and is being used in bad faith.
The Panel, therefore, finds that the Complainant has satisfied the third UDRP element. 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, be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: September 29, 2016
1 Paragraph 1.10., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
2 Paragraph 2.1., WIPO Overview 2.0.
3 Id.
4 Paragraph 3.2, WIPO Overview 2.0.
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