The Complainant is Boehringer Ingelheim Pharma GmbH & Co. KG., Germany, represented by Nameshield, France.
The Respondent is Contact Privacy Inc. Customer 12410731443, Canada / Jamie Eden, United States of America.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2021. On August 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2021, 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 August 9, 2021, 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 August 10, 2021.
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 August 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2021. The Respondent did not submit any response. On August 24, 2021, a third party contacted the Center to inform that the Respondent’s physical address is not correct, because no one under the Respondent’s name lives there.
The Center notified the Respondent’s default on September 7, 2021.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on September 29, 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 BackgroundThe Complainant is a family-owned pharmaceutical group of companies founded in 1885 with around 52,000 employees. The three business areas of the Complainant are human pharmaceuticals, animal health and biopharmaceuticals.
The Complainant owns trademark registrations in various jurisdictions; including the International trademark BOEHRINGER-INGELHEIM (Reg. No. 221544, registered on July 2, 1959) and the International trademark BOEHRINGER INGELHEIM (Reg. No. 568844, registered on March 22, 1991).
The Complainant further holds the domain name
The disputed domain name was registered on July 28, 2021 and resolves to an inactive page.
5. Parties’ Contentions A. ComplainantThe Complainant alleges that it has satisfied all elements of the Policy, paragraph 4.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsBased on the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows:
A. Identical or Confusingly SimilarThe Complainant has submitted sufficient evidence to demonstrate its registered rights in the BOEHRINGER-INGELHEIM and BOEHRINGER INGELHEIM trademarks.
The BOEHRINGER-INGELHEIM and BOEHRINGER INGELHEIM trademarks are reproduced in the disputed domain name.
A domain name is “identical or confusingly similar” to a trademark for the purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of other terms in the domain name (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). As stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, “[w]here 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 nature of such additional term(s) may however bear on assessment of the second and third elements”. Hence, the Panel holds that the addition of the term “careers-” to the Complainant’s BOEHRINGER-INGELHEIM and BOEHRINGER INGELHEIM trademarks does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks.
The Complainant has thus fulfilled the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThere are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name. The Complainant contends that the Respondent is neither affiliated with the Complainant nor making any bona fide use of the disputed domain name.
Furthermore, the composition of the disputed domain name, wholly incorporating the Complainant’s trademarks and the term “careers-”, cannot constitute fair use in these circumstances as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
The Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithPanelists have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. The totality of the circumstances in each case will be examined, and factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (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 of its identity or use of false contact details, and (iv) the implausibility of any good faith use to which the domain name may be put (see WIPO Overview 3.0, section 3.3).
Under the circumstances of this case, including the composition of the disputed domain name and reputation of the Complainant’s trademarks, the Panel finds that the Respondent was most likely aware of the Complainant’s trademarks when registering the disputed domain name. The email communication received by the Center on August 24, 2021 from a third party indicates that the Respondent provided false address details. The Panel sees no plausible good faith use to which the disputed domain name may be put. The Respondent has therefore registered and is using the disputed domain name in bad faith.
Accordingly, the Complainant has also fulfilled paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Tobias Zuberbühler
Sole Panelist
Date: October 13, 2021