WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim Pharma GmbH & Co. KG. v. Williams Shorell

Case No. D2016-0823

1. The Parties

The Complainant is Boehringer Ingelheim Pharma GmbH & Co. KG. of Ingelheim, Germany, represented by Nameshield, France.

The Respondent is Williams Shorell of New York, New York, United States of America.

2. The Domain Names and Registrar

The disputed domain names <aggrenox.top> and <combivent.top> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 26, 2016. On April 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 27, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 25, 2016.

The Center appointed Anthony R. Connerty as the sole panelist in this matter on June 1, 2016. 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 family-owned pharmaceutical group of companies founded in 1885 by Albert Boehringer, it is based in Ingelheim am Rhein, Germany.

The Complainant is the owner of the trademarks AGGRENOX and COMBIVENT registered in many countries, such as:

The Complainant is also the owner of domain names which include the trademarks AGGRENOX and COMBIVENT: <aggrenox.net> was registered on November 5, 2007; <combivent.com> was registered on March 13, 1998.

Each of the two disputed domain names was registered on March 12, 2016.

5. Parties' Contentions

A. Complainant

The Complainant is a global research-driven pharmaceutical enterprise that has about 140 affiliated companies world-wide with roughly 46,000 employees. The two main business areas of the Complainant are Human Pharmaceuticals and Animal Health. In 2013 net sales of the Boehringer group of companies amounted to about EUR 14.1 billion.

AGGRENOX is primarily used for platelet inhibition in patients suffering from, or at risk of, acute coronary events such as stroke. COMBIVENT is a prescription medication used to prevent symptoms associated with chronic obstructive pulmonary disease (COPD).

The Complainant contends that the Respondent is in the business of the sale of pharmaceuticals, and has registered and used the disputed domain names in order to deceive Internet users seeking the Complainant's products; and that the Respondent is using the disputed domain names to direct Internet traffic to a for-profit online pharmacy that sells pharmaceuticals that directly compete with the Complainant's products.

The Complainant's contentions are that:

a) The disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights;

b) The Respondent has no rights or legitimate interests in the disputed domain names;

c) The Respondent registered and is using the disputed domain names in bad faith.

The Complainant seeks the transfer of the disputed domain names to itself.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

The Rules state that the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate: paragraph 15 of the Rules. Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain names for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.

For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a
non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.

A. Identical or Confusingly Similar

The Complainant contends that the disputed domain names are identical to the Complainant's trademarks AGGRENOX and COMBIVENT: "Indeed, the domain name includes in its entirety the Complainant's trademarks without any adjunction of letter or word. Furthermore, the new [generic Top-Level Domain] gTLD ".TOP" [is] not sufficient to escape the finding that the domain names are identical to the trademarks and does not change the overall impression of the designation as being connected to the trademarks of the Complainant".

The panel in Missoni S.p.A. v. Chen Zhu, Chen Guang Yao, Cheng-Hong Wu, WIPO Case No. D2014-0420, said that the disputed domain names "incorporate in the entirety the Complainant's registered MISSONI marks, i.e. M-MISSONI, MISSONI HOME and MISSONI with the addition of the generic
Top-Level Domains such as '.biz', '.info', '.net', '.mobi' and/or '.name'. It is a well-accepted principle that the addition of Top-Level Domain suffixes such as '.biz', '.info', '.net', '.mobi' and/or '.name' is not a distinguishing factor". The same principle must apply to the gTLD ".top".

The Panel finds the disputed domain names to be confusingly similar to the Complainant's mark, and is satisfied that the Complainant has brought itself within the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names and "is not related in any way with the Complainant. The Complainant does not carry out any activity for, nor has any business with the Respondent. Neither licence nor authorization has been granted to the Respondent to make any use of the Complainant's trademarks, or apply for registration of the disputed domain name by the Complainant".

The Respondent was entitled to deal with the Complainant's allegations, and was entitled to demonstrate any right or interest in the disputed domain name by way of the circumstances listed in paragraph 4(c) of the Policy. The Respondent has not done so. It is for the Complainant to prove the three elements of paragraph 4(a) of the Policy. However, it is established that, once the Complainant has made out a prima facie case, it is then a matter for the Respondent to answer that case: whether or not a respondent has rights or legitimate interests in a domain name is a question which a respondent can answer better than a complainant.

The Panel is therefore satisfied that the Complainant has shown compliance with the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant states that the disputed domain name <aggrenox.top> redirects to a page "http://safecanadianshop.com/products/cholesterol/aggrenox/order/. On this page, the Respondent sells [the drug] 'AGGRENOX'." And the disputed domain name <combivent.top> redirects to "http://safecanadianshop.com/products/anti_allergic_asthma/combivent/order/. On this page, the Respondent sells [the drug] 'COMBIVENT'."

The Complainant's contention is that the Respondent was seeking to use the disputed domain names only to divert consumers to his website:

"Thus, the Respondent is in the business of the sale of pharmaceuticals, and no doubt knew of the Complainant's trademarks at the time of registration of the disputed domain [names], and deliberately sought to use their goodwill to attract Internet users seeking the Complainant's product. The Respondent has registered and used the disputed domain names in order to deceive Internet users seeking the Complainant's product, so as to generate revenue from selling unrelated or competing pharmaceuticals. This constitutes bad faith registration and use within the meaning of the Policy. There is also evidence of bad faith use, in that the Respondent is using the disputed domain names to direct Internet traffic to a for-profit on-line pharmacy that sells pharmaceuticals that directly compete with Complainant".

The use without authorization of domain names which consist of well-known trademarks may be evidence of registration and use in bad faith. This may be particularly the case where the disputed domain names lead to a website consisting of links to products competitive with those of the trademark owner: see for example Intel Corporation v. Pentium Fund, WIPO Case No. D2009-0156.

The Complainant in this case contends that Respondent uses the disputed domain names to direct Internet traffic to his websites. The Respondent had the opportunity to answer the Complainant's case by submitting a Response under paragraph 5 of the Rules, but has chosen not to do so. The basis of that case falls within the circumstances of paragraph 4(b)(iv) of the Policy, namely that, "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location".

The Panel is satisfied that the Complainant has proved 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 names <aggrenox.top> and <combivent.top> be transferred to the Complainant.

Anthony R. Connerty
Sole Panelist
Date: June 9, 2016