The Complainant is Boehringer Ingelheim Pharma GMBH & CO. KG., Germany, represented by Nameshield, France.
The Respondent is Contact Privacy Inc. Customer 1248720033, Canada / Reproductive Partners Medical Group, 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 November 23, 2020. On November 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 23, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 24, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 24, 2020. The Center verified that the Complaint together with the amended 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 November 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2020. The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on January 7, 2021. 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 belonging to a multinational pharmaceutical group. The Complainant owns the following trademark registrations, among others: Trademark International Registration Number Registration Date Classes Jurisdiction BOEHRINGER-INGELHEIM 221544 July 2, 1959 1, 2, 3, 4, 5, 6, 16, 17, 19, 29, 30, 32 AT, BX, CH, DE, EG, ES, FR, HU, IT, LI, MA, MC, ME, PT, RS, SM BOEHRINGER INGELHEIM 568844 March 22, 1991 1, 2, 3, 4, 5, 9, 10, 16, 30, 31 AL, AM, AT, AZ, BA, BG, BT, BX, BY, CH, CN, CU, CZ, DZ, EG, ES, FR, HR, HU, IT, KE, KG, KP, KZ, LI, LR, MA, MC, MD, ME, MK, MN, MZ, PT, RO, RS, RU, SD, SI, SK, SL, SM, TJ, UA, VN The Complainant owns the domain name The disputed domain name The Complainant asserted the following: That it was founded in 1885 by Albert Boehringer in Ingelheim am Rhein, Germany, and has become a global research-driven pharmaceutical company, which has today approximately 51,000 employees. That its three main business areas are: human pharmaceuticals, animal health and biopharmaceuticals. The disputed domain name is identical or confusingly similar to the Complainant’s trademark. That the disputed domain name That the incorporation of the letter “e” into the trademark BOEHRINGER-INGELHEIM in the disputed domain name and the use of the gTLD “.com” do not change the overall impression of association with the Complainant. That the disputed domain name The Respondent has no rights or legitimate interests in the disputed domain name. That once the Complainant makes a prima facie case that the Respondent lacks rights to or legitimate interests in the disputed domain name, the Respondent carries the burden of demonstrating such rights to or legitimate interests. That the Respondent is not identified in the WhoIs database as the Registrant of the disputed domain name. That the Respondent is not affiliated with nor authorized by the Complainant in any way. That the Complainant does not have any business with the Respondent. That no license or authorization has been granted to the Respondent to make any use of the Complainant’s trademarks. That the disputed domain name That the disputed domain name resolves to an inactive website since the date of registration thereof. The disputed domain name was registered and is being used in bad faith. That the Complainant is one of the world’s 20 leading pharmaceutical companies. That given the distinctiveness of the Complainant’s trademark and its reputation, it is reasonable to infer that the Respondent registered the disputed domain name with full knowledge of the Complainant’s trademark. That registering the disputed domain name with the misspelling of the Complainant’s registered trademark was intentionally designed to confuse users, and that such actions have been declared as evidence of bad faith by previous UDRP panels. That the disputed domain name resolves to an inactive website. That the Respondent has not demonstrated any activity in respect of the disputed domain name, and that it is not possible to conceive any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate. That the failure to make an active use of a domain name evidences bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and In view of the Respondent’s failure to submit a Response, the Panel may decide this proceeding on the basis of the Complainant’s undisputed factual allegations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules Rules (see Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009; Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com,WIPO Case No. D2001-0784; and International Hospitality Management IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683; and Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487). A. Identical or Confusingly Similar The Complainant has filed evidence showing that it owns registrations for the trademark BOEHRINGER-INGELHEIM in various jurisdictions. The disputed domain name The addition of the gTLD “.com” to the disputed domain name constitutes a technical requirement of the Domain Name System (“DNS”), and therefore has no legal significance in the present case (see CARACOLITO S SAS v. Nelson Brown, OXM.CO,WIPO Case No. D2020-0268; SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services,WIPO Case No. D2015-0565; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919). The first element of the Policy has been met. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name: (i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or The Complainant has affirmed that it has not granted any license or authorization to the Respondent to use its trademark BOEHRINGER-INGELHEIM, and that the said the Respondent has not been known by the disputed domain name. The Respondent did not contest these allegations. There is no evidence in the case file showing that the Respondent has been commonly known by the disputed domain name, nor that it is in any way associated with the Complainant’s trademark BOEHRINGER-INGELHEIM (see Beyoncé Knowles v. Sonny Ahuja,WIPO Case No. D2010-1431; and Six Continents Hotels, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0272). The disputed domain name, which consists of a typosquatted version of the Complainant’s trademark BOEHRINGER-INGELHEIM, shows that the Respondent has targeted the Complainant, its trademark and its business. Therefore, the Respondent’s conduct cannot be considered a legitimate noncommercial or fair use of the disputed domain name (see Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 and Edmunds.com, Inc. v. Digi Real Estate Foundation WIPO Case No. D2006-1043). The Complainant claims that the Respondent has not demonstrated any activity in respect of the disputed domain name. There is no evidence in the case file related to the use or demonstrable preparations to use the disputed domain name, in connection with a bona fide offering of goods or services. Therefore, the Complainant made a prima facie case asserting that the Respondent lacks rights to or legitimate interests in the disputed domain name. The Respondent has not submitted any evidence or arguments to challenge the Complainant’s assertions. Accordingly, the Complainant has satisfied the requirements of the second element of the Policy. C. Registered and Used in Bad Faith Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith: (i) circumstances indicating that the respondent has registered or has 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 documented out-of-pocket costs directly related to the domain name; or The Complainant ascertained its rights over the BOEHRINGER-INGELHEIM trademark in diverse jurisdictions. The dates of registrations of the Complainant’s trademarks significantly precede the date of registration of the disputed domain name. Based on the evidence filed by the Complainant, this Panel agrees with previous panels appointed under the Policy in the sense that the trademark BOEHRINGER-INGELHEIM is well-known (see Boehringer Ingelheim Pharma GmbH & Co. KG v. Marius Graur,WIPO Case No. D2019-0208; and Boehringer Ingelheim Pharma GmbH & Co.KG v. Kate Middleton,WIPO Case No. D2016-0021). Taking the above into consideration, and that the Complainant has a strong presence internationally, it is reasonable to find that the Respondent knew about the Complainant, its trademark BOEHRINGER-INGELHEIM and its business on the date of registration of the disputed domain name. This suggests that the Respondent has registered the disputed domain name with the purpose of taking advantage of the well-known trademark of the Complainant, which constitutes opportunistic bad faith (see section 3.2.1 of the WIPO Overview 3.0; see also L’Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter,WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot,WIPO Case No. D2019-0980; and Boehringer Ingelheim Pharma GmbH & Co. KG v. Marius GraurWIPO Case No. D2019-0208). Furthermore, panels previously appointed under the Policy have decided that typosquatting amounts to bad faith registration of a domain name (see Lexar Media, Inc. v. Michael Huang,WIPO Case No. D2004-1039; Wal-Mart Stores, Inc. v. Longo,WIPO Case No. D2004-0816; Admiral Group Plc and EUI Limited v. Cimpress Schweiz, Cimpress Schweiz GmbH,WIPO Case No. DCO2017-0043; MouseSavers, Inc. v. Mr. Henry Tsung d/b/a www.wwwmousesavers.com,WIPO Case No. D2004-1034; and Boehringer Ingelheim Pharma GmbH & Co. KG v. Martin Hughes As to the use of the disputed domain name, notwithstanding its inactivity, the consensus view amongst panels appointed under the Policy is that the fact that a domain name is not active does not prevent a finding of bad faith (see section 3.3 of the WIPO Overview 3.0 “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding; see also Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; and “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc.,WIPO Case No. D2017-0246). In the present case, the following facts have been found: - That the Complainant’s trademark BOEHRINGER-INGELHEIM is well known; In light of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate under the Policy (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; and CBS Broadcasting Inc. v. Dennis Toeppen,WIPO Case No. D2000-0400). Therefore, the third element of the Policy has been met. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and15 of the Rules, the Panel orders that the disputed domain name Kiyoshi Tsuru
(ii) the Respondent has no rights or legitimate interests with respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it did no acquire 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.
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
- That said trademark refers specifically to the Complainant’s BOEHRINGER-INGELHEIM company name coined by its founder 136 years ago;
- That the disputed domain name incorporates a misspelling of said trademark;
- That the Respondent has not filed any evidence or arguments to explain why it registered the disputed domain name.
Sole Panelist
Date: January 26, 2021
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