The Complainant is Boehringer Ingelheim Pharma GmbH & Co. Kg., Germany, represented by Nameshield, France.
The Respondent is Mark Williams, Germany.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2021. On October 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 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 December 10, 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 in English on December 13, 2021.
On December 10, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On December 13, 2021, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Japanese of the Complaint, and the proceedings commenced on December 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2022.
The Center appointed Kaya Köklü as the sole panelist in this matter on January 12, 2022. 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 an internationally active pharmaceutical company with its registered seat in Germany. Its roots date back to the year 1885.
The Complainant is owner of the widely-known BOEHRINGER INGELHEIM trademark, which is registered in a large number of jurisdictions. For instance, the Complainant is the owner of the International Trademark Registration No. 568844, registered on March 22, 1991, covering protection for a large variety of goods as protected in classes 1, 2, 3, 4, 5, 9, 10, 16, 30 and 31 (Annex 4 to the Complaint).
The Complainant further owns and operates numerous domain names comprising its BOEHRINGER INGELHEIM trademark, such as
The disputed domain name was registered on October 27, 2021.
The Respondent is reportedly an individual from Germany.
Previously, the disputed domain name resolved to a website with general information on an open-source computing platform (Annex 6 to the Complaint). Additionally, an active mail exchange (“MX”) email server for the disputed domain name was configured (Annex 7 to the Complaint).
At the time of the decision, the disputed domain name no longer resolves to an active website.
5. Parties’ Contentions A. ComplainantThe Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to its BOEHRINGER INGELHEIM trademark.
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
In addition, the Complainant is convinced that the Respondent has registered and is using the disputed domain name in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Preliminary Issue: Language of the ProceedingThe Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of this administrative proceeding shall be English.
Although the language of the Registration Agreement of the disputed domain name is Japanese, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceeding in Japanese and to request a Japanese translation of the Complaint while the Respondent has failed to raise any objection or even to respond to the Center’s communication about the language of the proceeding, even though communicated in Japanese and English. The Panel particularly notes that the Respondent was given the opportunity to respond in Japanese and that this opportunity remained unused by the Respondent.
Consequently, the Panel is convinced that the Respondent will not be prejudiced by a decision being rendered in English.
6.2. Substantive IssuesAccording to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) the 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.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd.,
WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.
A. Identical or Confusingly SimilarTo begin with, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights in BOEHRINGER INGELHEIM (Annex 4 to the Complaint).
The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered BOEHRINGER INGELHEIM trademark. As stated at section 1.9 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, misspellings would not prevent a finding of confusing similarity.
In the present case, the Panel notes that disputed domain name incorporates an apparent misspelling of the Complainant’s BOEHRINGER INGELHEIM trademark by the mere addition of a further letter “r”, which in view of the Panel, still makes the Complainant’s BOEHRINGER INGELHEIM well recognizable within the disputed domain name.
Hence, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s BOEHRINGER INGELHEIM trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsWhile the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name to meet the requirements of paragraph 4(a)(ii) of the Policy. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003-0455.
With its Complaint, the Complainant has provided prima facie evidence that the Respondent has no rights or legitimate interests, particularly no license or alike to use the Complainant’s BOEHRINGER INGELHEIM trademark in a confusingly similar way within the disputed domain name. There is also no indication in the current record that the Respondent is commonly known by the disputed domain name.
In the absence of a Response, the Respondent has failed to demonstrate any of the nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c), or provide any other evidence of rights or legitimate interests in the disputed domain name. On the contrary and bearing in mind that the Respondent has configurated an MX email server for the disputed domain name, the Panel cannot exclude that the disputed domain name may already have been used in connection with possibly fraudulent or illegitimate activities by the Respondent.
Noting the composition of the disputed domain name, there is particularly no doubt that the Respondent was well aware of the Complainant and its BOEHRINGER INGELHEIM trademark before registering and using the disputed domain name. The Panel is convinced that the Respondent deliberately has chosen the disputed domain name to cause confusion with the Complainant and its business among Internet users.
Bearing all this in mind, the Panel does not see any basis for assessing a bona fide offering of goods or services by the Respondent.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel believes that the Respondent deliberately attempted to create confusion among Internet users for possible illegitimate purposes, particularly for the following reasons.
The Panel is convinced that the Respondent was aware of the Complainant’s widely-known trademark when he registered the disputed domain name in October 2021. At the date of registration, the Complainant’s BOEHRINGER INGELHEIM trademark was already registered, used, and widely known for many years. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a famous or widely-known trademark by an unaffiliated person or entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. Additionally, it is obvious to the Panel, that the Respondent has chosen the disputed domain name to target and mislead Internet users who particularly are searching for information on the Complainant and its business. Consequently, the Panel has no doubt that the Respondent has registered the disputed domain name in bad faith.
Furthermore, the Panel finds that the Respondent is using the disputed domain name in bad faith, even though the disputed domain name was previously linked to a general landing page only (Annex 6 to the Complaint) and is currently not linked to an active website. In line with the opinion of numerous UDRP panels before (cf. Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003) and section 3.3 of the WIPO Overview 3.0, the Panel believes that the non-use of a domain name does not prevent a finding of bad faith use.
Applying the passive holding doctrine as summarized in section 3.3 of the WIPO Overview 3.0, the Panel assesses the Complainant’s trademark BOEHRINGER INGELHEIM as sufficiently distinctive, so that any good-faith use of the Complainant’s trademark in the disputed domain name by the Respondent appears to be unlikely. Furthermore, the Panel accepts the failure of the Respondent to submit a response to the Complainant’s contentions as an additional indication for bad faith. Also, the Panel believes that the active MX email server for the disputed domain name creates a real or implied ongoing threat to the Complainant, since the disputed domain name, even if not associated to an active website, may be used by the Respondent to mislead customers looking for the Complainant in their false belief that any email sent from the disputed domain name origins from the Complainant, possibly for fraudulent activities.
All in all, the Panel cannot conceive of any plausible and legitimate use of the disputed domain name that would be in good faith, except with an authorization of the Complainant.
Taking all facts of the case into consideration, the Panel believes that this is a typical typosquatting case. The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, 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
Kaya Köklü
Sole Panelist
Date: January 26, 2022