The Complainant is Boehringer Ingelheim Pharma GMBH & CO. KG, Germany, represented by Nameshield, France.
The Respondent is Young Mason, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2019. On October 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 30, 2019, 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 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 October 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2019. The Center appointed Gareth Dickson as the sole panelist in this matter on November 27, 2019. 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 Complainant is a pharmaceutical company operating around the world under the BOEHRINGER INGELHEIM trade mark (the “Mark”). It is the owner of several trade mark registrations, including International trade mark registration number 221544, BOEHRINGER-INGELHEIM which was registered on July 2, 1959. The Complainant is also the owner of the domain name The Domain Name was registered on October 26, 2019. It does not currently resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is confusingly similar to the Mark notwithstanding the addition of “hq” and the use of the generic Top-Level Domain (“gTLD”) suffix “.com”. The Complaint argues that the Respondent has no rights or legitimate interests in respect of the Domain Name since it is, evidently, not known as the Domain Name; it is not affiliated with nor authorized or licensed by the Complainant in any way; and it is not making a bona fide noncommercial (or any) use of the Domain Name. Finally, the Complainant submits that, since past panels have confirmed that the Mark is distinctive and has a reputation, it can be inferred that the Respondent registered and has used the Domain Name with knowledge of the Mark. Furthermore, there is no conceivable legitimate use of the Domain Name by the Respondent. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that: (i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied. A. Identical or Confusingly Similar The Panel accepts that the Complainant is the owner of and has rights in the Mark. Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Panel therefore finds that the Domain Name is confusingly similar to the Mark, since the Mark is recognisable within the Domain Name. The addition of “hq” in the Domain Name will be interpreted as a reference to the Complainant’s headquarters and therefore does not in any way distinguish the Domain Name from the Mark nor prevent a finding of confusing similarity. Similarly the addition of the gTLD suffix “.com” does not affect this finding. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the disputed domain name, this does not mean that it has to prove a negative to succeed in its complaint. As explained in section 2.1 of the WIPO Overview 3.0, the consensus view is that where a complainant establishes 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 disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. In the current proceeding, the Complainant has established its prima facie case, having alleged that it has not authorised the Respondent to use the Mark, whether in the Domain Name or otherwise, and that the Respondent is not commonly known as the Domain Name. Furthermore, there is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the Domain Name in any descriptive manner. Finally, the Respondent is not making any use of the Domain Name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith In the absence of evidence from the Respondent that the similarity of the Domain Name to the Mark is coincidental or unintended, the Panel concludes that the Respondent knew of the Complainant’s rights in the Mark when it registered the Domain Name and accepts that the Domain Name was chosen by reference to the Mark. The Panel therefore finds that the Respondent’s registration of the Domain Name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark. The Panel notes that the Respondent is not using the Domain Name to provide access to an active website. However, domain names pointing to holding or inactive web pages, or to no pages at all, can still be found to have been used in bad faith under the doctrine of passive holding. In particular, section 3.3 of the WIPO Overview 3.0 states that relevant factors to finding bad faith in passive holding “include: (i) the degree of distinctiveness or reputation of the complainant’s mark; The Panel notes that the Mark has already been found by previous UDRP panels to be distinctive and to have a reputation, rather than being a descriptive or generic term, and further notes that the Respondent has not participated in these proceedings or sought to explain their registration and use of the Domain Name. There is also no conceivable use of the Domain Name by the Respondent that would not be illegitimate. Consideration of these and other factors militates in favour of a finding of bad faith. As a result of the above, the Panel finds that the Domain Name was registered and is 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 Domain Name, Gareth Dickson
(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use;
(iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and
(iv) the implausibility of any good faith use to which the domain name may be put”.
Sole Panelist
Date: December 11, 2019
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