WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boehringer Ingelheim Pharma GmbH & Co. KG v. Name Redacted
Case No. D2012-0890
1. The Parties
The Complainant is Boehringer Ingelheim Pharma GmbH & Co. KG of Ingelheim am Rhein, Germany, represented by Schiedermair Rechtsanwälte, Germany.
The Respondent is Name Redacted of Indiana, United States of America.
2. The Domain Name and Registrar
The disputed domain name <boerhinger.com> (the Domain Name) is registered with Melbourne IT Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 27, 2012, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2012. Between May 5, 2012 and May 31, 2012, the person against whom the Complaint was filed claimed in a series of email communications that it was not the registrant of the Domain Name and a third party fraudulently used its identity to register the Domain Name.
On May 31, 2012, the Center informed the parties that pursuant to paragraph 6 of the Rules, the Center would proceed to panel appointment.
The Center appointed Jon Lang as the sole panelist in this matter on June 11, 2012. 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. Preliminary matter – Identity Theft
Between May 5, 2012 and May 31, 2012, the person against whom the Complaint was filed, sent a number of email communications to the Center stating that it was not the owner of the Domain Name, that someone had used its name to register it and that the telephone number and email address appearing in the WhoIs did not belong to him. Its name and postal address were the same, however.
The Panel has reviewed the correspondence between the Center and the person against whom the Complaint was filed and is satisfied, on the balance of probabilities, that that person is not the proper Respondent to this Complaint but that his name and address have been used, wrongly, by another unknown person. The Panel is satisfied that the person against whom the Complaint was filed has no interest in the Domain Name or what might become of it. In short, this appears to be a case of identity theft. In the circumstances, references to the Respondent in this Decision (and the findings of the Panel set out hereafter) do not refer or have application to the person against whom the Complaint was filed. This Decision is directed to and affects the unknown third party registrant of the Domain Name who wrongly used the name of another person.
Given the circumstances, the Panel has decided that no useful purpose is to be served by referring to the name of the individual against whom the Complaint was filed and has therefore not included its name in the heading or body of this Decision. The Panel has, however, attached as an Annex to this Decision an instruction to the Registrar regarding transfer of the Domain Name that does include the name of the person against whom the Complaint was filed so as to enable effect to be given to the order contained herein. To this end the Panel authorises the Center to transmit the Annex to the Registrar and the parties but further directs the Center and Registrar, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that the Annex to this Decision shall not be published based on exceptional circumstances.
5. Factual Background
The Complainant is a global pharmaceuticals enterprise. Its name and brand “Boehringer” is protected worldwide by several trademark registrations, for instance, United States Patent and Trademark Office Registration No. 1365035 for the word mark BOEHRINGER (with a registration date of October 8, 1985).
The Complainant is also the owner of numerous domain names relating to the trademark BOEHRINGER, (all of which predate registration of the Domain Name on September 15, 2011), including <boehringer.com>, <boehringer.info>, <boehringer.org> and <boehringer.us>.
The Registrant of the Domain Name is not the person against whom the Complaint has been filed but rather an unknown person as earlier indicated.
6. Parties’ Contentions
A. 1. Identity or confusing similarity of the Domain Name with the Complainant’s trademark BOEHRINGER
The Domain Name is confusingly similar to the Complainant’s trademark BOEHRINGER. The addition of a gTLD suffix is irrelevant in an examination of identity and/or confusing similarity.
The Domain Name comprises the Complainant’s registered trademark BOEHRINGER with the mere reversal of the adjacent letters “h” and “r” such that the Domain Name becomes <boerhinger.com>). The misspelling of the Complainant’s trademark by the reversal of the letters “h” and “r” should not prevent a finding of confusing similarity. Indeed, this “typo-squatting” is intended to be confusing in that Internet users who make common typing errors can be transported to a website other than the website they were hoping to find.
A. 2. The Respondent has no rights or legitimate interests in respect of the Domain Name
The Complainant has not granted the Respondent any license or otherwise permitted the use of the trademark BOEHRINGER, or permitted any application for a domain name incorporating the trademark.
The Respondent is not making a bona fide use of the Domain Name in that to the best of the Complainant’s knowledge and information, the Respondent is not and has not made any demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
The Domain Name resolves to a website at “www.boerhinger.com” which shows only a blank page. When clicking on this blank page however, Internet users are directed to a website at “www.adf.ly” which promotes itself as being a so-called “URL shortener service” providing for online advertisements, and promises of revenues of USD 4.00 per every 1,000 visitors to clicked-on links.
The Respondent is seeking “pay-per-clicks” (PPC) or “click-through commissions” from Internet users trying to reach an Internet presence of the Complainant but who, as a result of the confusing similarity of the Domain Name with the Complainant’s trademark, end up at the Respondent’s PPC Internet presence at “www.boerhinger.com”. This cannot amount to a bona fide offering.
Furthermore, the Respondent is not commonly known by the Domain Name and (apart from registration of the Domain Name) has no link to the “Boehringer” name. The Complainant has, for a number of years, engaged professional trademark watching services and, since 2006, also domain name watching services. The Complainant, however, has received no information on any trademark rights of the Respondent in the “Boehringer” name or any similar variations thereof, such as “Boerhinger”.
Moreover, the Respondent is not 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. The Respondent’s use of the Domain Name in connection with the PPC website cannot be considered as legitimate noncommercial or fair use of the Domain Name. The use of the Domain Name is not noncommercial, because it is predominantly for the purpose of generating advertising revenues and is not fair because Internet users, as a result of confusion, are brought to a general website with information about a wide variety of matters that do not specifically relate to the Complainant.
A. 3. The Domain Name was registered and is being used in bad faith
The Respondent, by using the Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to his or her website, by creating a likelihood of confusion with the Complainant’s trademark BOEHRINGER, which are circumstances under the Policy that evidence registration and use of the Domain Name in bad faith. The Domain Name resolves to a typical PPC website. When the Domain Name is typed into an Internet browser by consumers who make a common typing error (e.g. they type “rh” instead of “hr”) they still expect information on the Complainant and its products. They are thus misled as to the true nature of the Respondent’s website in that they are led to believe that the Respondent is somehow affiliated or linked with the Complainant or that the latter supports somehow, or at least has no objection to, the Respondent’s activities.
Even if consumers realise that there is no lawful affiliation with or connection between the Respondent and the Complainant, the Respondent is still profiting from the consumer’s initial confusion as they may be tempted to click on any of the various advertisements featured on the PPC website.
The Respondent makes a number of other points in relation to the Respondent which, given the circumstances and findings in relation thereto, need not be summarised in this Decision.
The Respondent did not formally respond to the Complaint, however, it made numerous communications to the Center in relation to identity theft as discussed elsewhere in this Decision.
7. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that a respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements.
A. Identical or Confusingly Similar
The Respondent has registered a misspelling of the Complainant’s mark, most likely a common misspelling, a practice known as “typo-squatting”. All that the Respondent has done is reverse the adjacent letters “h” and “r” such that the Domain Name becomes <boerhinger.com>, (the Complainant’s trademark being BOEHRINGER). The result is a Domain Name that is very similar to the trademark of the Complainant, both phonetically and visually, which may well give rise to the possibility, if not likelihood, that Internet users will think that the owner of the Domain Name, is in fact the owner of the Complainant’s mark to which it is similar, or that there is some form of association between the Respondent and the Complainant. This is particularly so given that the Internet user may not even realise, at least initially, that they have mistyped the Complainant’s name.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark (in which it has established rights) for the purposes of the Policy. Thus, this element of paragraph 4 of the Policy has been established.
B. Rights or Legitimate Interests
A respondent can show it has rights to or legitimate interests in a domain name in various ways. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers. However, there is no evidence to suggest that the Respondent is commonly known by the Domain Name and the very practice of typo-squatting is designed to mislead and divert Internet users who make simple typing errors.
A respondent can also show, so as to establish rights or legitimate interests in a domain name, that it is using a domain name in connection with a bona fide offering of goods or services. But promoting goods or services of others using a domain name intentionally constructed to be confusingly similar to a complainant’s mark is not a bona fide offering of goods or services.
The Respondent has certainly not derived any rights or interests from the Complainant who has made out a prima facie case that the Respondent lacks any such rights or interests in the Domain Name. The Respondent therefore carries the burden of demonstrating such rights or legitimate interests, but has provided any evidence of such and has therefore failed to do so. Even if the Respondent co registrant of the Domain Name had made submissions in this regard, in this Panel’s view, it is unlikely that anything he or she could have said would have answered the prima facie case established by the Complainant, given that the very purpose in the Respondent creating and registering the Domain Name was to mislead.
C. Registered and Used in Bad Faith
It seems clear to this Panel that the Respondent must have been aware of the Complainant’s mark when the Domain Name was registered. One way a complainant may demonstrate bad faith registration and use, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. The Panel agrees with the Complainant’s contention, and finds that this appears to be the case here. Accordingly, the Panel finds that, for the purposes of the Policy, the Domain Name has been registered and is being used in bad faith.
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, <boerhinger.com>, be transferred to the Complainant.
For purposes of properly executing this order, the Panel also directs the Registrar’s attention to the Annex hereto that identifies the individual recorded as the registrant of the Domain Name and orders that the Domain Name <boerhinger.com> be transferred from that individual to the Complainant.
The Panel further directs the Center and the Registrar that the Annex to this Decision shall not be published.
Dated: June 19, 2012