The Complainant is Boehringer Ingelheim Pharma GmbH & Co. KG of Ingelheim, Germany, represented by Nameshield, France.
The Respondent is Azura Abendroth of Heidelberg, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2015. On April 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 2015, 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. In response to a request for confirmation by the Center, the Complainant filed an amended Complaint on May 5, 2015.
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 5, 2015. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2015.
The Center appointed Brigitte Joppich as the sole panelist in this matter on June 1, 2015. 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant is a family-owned pharmaceutical group of companies with roots going back to 1885, when it was founded by Albert Boehringer (1861-1939) in Ingelheim am Rhein, Germany. The Complainant has since become a global research-driven pharmaceutical enterprise and has about 140 affiliated companies world-wide with roughly 46,000 employees. In 2013, net sales of the Complainant’s group of companies amounted to about EUR 14.1 billion.
The Complainant owns a number of trademarks for BOEHRINGER INGELHEIM, inter alia European Community Trademark registration no. 002493195 BOEHRINGER INGELHEIM, registered on May 20, 2003 (hereinafter referred to as the “BOEHRINGER INGELHEIM Mark”). In addition, the Complainant owns multiple domain names comprising the trademark BOEHRINGER INGELHEIM”, inter alia , registered on September 1, 1995.
The disputed domain name was registered on January 22, 2015 and is used in connection with a pay-per-click (“PPC”) parking website. Furthermore, the disputed domain name is offered for sale for the amount of USD 7,000. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case:
(1) The disputed domain name is identical to the BOEHRINGER INGELHEIM Mark as it includes such trademark in its entirety and as the addition of the country code Top-Level Domain (“ccTLD”) “.tv” is not sufficient to hinder a finding of identity.
(2) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is not related to the Complainant in any way. It further argues that it does not carry out any activity for, nor has any business relationship to the Respondent, that neither license nor authorization has been granted to the Respondent to make any use, or apply for registration of the disputed domain name, and that the disputed domain name was used in connection with a parking website and has been registered only in order to be sold to a third party.
(3) The Complainant states that the BOEHRINGER INGELHEIM Mark is famous and well-known, especially in Germany, where the Respondent is located, and that the Respondent registered the disputed domain name in bad faith. The Complainant further argues that the Respondent acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the out-of-pocket costs directly related to the disputed domain name. 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 must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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. A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s BOEHRINGER INGELHEIM Mark and is identical to such trademark. It is well established that the specific Top-Level Domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name, it is the consensus view among UDRP panelists that a complainant has to make a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in a domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way and therefore failed to come forward with any evidence of any rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. In particular, the Respondent’s use of the disputed domain name, i.e. a PPC parking page, does not constitute a bona fide offering of goods and services under paragraph 4(c)(i) of the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant’s BOEHRINGER INGELHEIM Mark as such trademark is highly distinctive and has been used actively for decades in Germany, where the Respondent is located. Previous decisions under the UDRP found that the Complainant’s BOEHRINGER INGELHEIM Mark is “famous” and enjoys a “notorious status” (cf. Boehringer Ingelheim Pharma GmbH & Co. KG v. Reps, Inc.,WIPO Case No. D2006-0459 ( et al.); Boehringer Ingelheim Pharma GmbH & Co. KG v. Klinik Sari Padma, BAKTI HUSADA,WIPO Case No. D2014-0306 ( et al.)).
As to bad faith use, by fully incorporating the BOEHRINGER INGELHEIM Mark into the disputed domain name and by using such domain name in connection with a PPC parking website, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy.
This inference of bad faith use is further supported by the fact that the Respondent publicly offered to sell the disputed domain name at a price of USD 7,000, which exceeds any out-of-pocket costs directly related to the disputed domain name likely incurred by the Respondent.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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.
Brigitte Joppich
Sole Panelist
Date: June 10, 2015
Full & Egal Universal Law Academy