WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boehringer Ingelheim Pharma GmbH & Co. KG v. Whois Privacy Services Pty Ltd / Dzone Inc., Yeonju Hong
Case No. D2013-0116
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 Whois Privacy Services Pty Ltd of Queensland, Australia / Dzone Inc., Yeonju Hong of Gwangju, Republic of Korea.
2. The Domain Names and Registrar
The disputed domain names <boehringerdomain.com>, <boehringerdomains.com>, <boehringernic.com>, and <wwwboehringer.com> are registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2013. On January 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 18, 2013, 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 January 21, 2013 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 amendment to the Complaint on January 23, 2013.
The Center verified that the Complaint together with the amendment to 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 January 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2013
The Center appointed Knud Wallberg as the sole panelist in this matter on February 20, 2013. 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 belongs to the family-owned Boehringer Ingelheim pharmaceutical group of companies (“Boehringer”) with roots going back to 1885. Boehringer has become a global pharmaceutical enterprise and has today about 145 affiliated companies world-wide with roughly 42,000 employees. The two main business areas of Boehringer are human pharmaceuticals and animal health. In 2011, net sales of the Boehringer amounted to about EUR 13.2 billion.
Documentary evidence from the official online registers of WIPO and the United States Patent and
Trademark Office (USPTO) was presented to the Panel showing that the Complainant is the owner of numerous registered trademarks world-wide in BOEHRINGER, as well as of numerous domain names relating to the trademark BOEHRINGER, all registrations of which predate the disputed domain names.
According to the publicly available WhoIs database, all four of the disputed domain names were created on June 14, 2012.
5. Parties’ Contentions
The Complaint is based on the following grounds
(1) According to the Complainant it is prima facie obvious that the disputed domain names are confusingly similar to the Complainant’s trademark BOEHRINGER. The disputed domain names fully comprise the Complainant’s registered trademark BOEHRINGER, and numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is confusingly similar to a registered trademark. The addition of a generic or descriptive term or geographical wording to a trademark in a domain name such as the addition of the terms “domain”, “domains” and “nic” (as an abbreviation for “Network Information Center”) as well as the prefix “www” for “World Wide Web” is not at all capable to dispel the confusing similarity arising from the incorporation of the Complainant’s BOEHRINGER trademark into the disputed domain names.
(2) The Complainant has not granted the Respondent any license or has otherwise permitted the Respondent to use the trademark BOEHRINGER or even to apply for any domain names incorporating said trademark.
To the best of the Complainant’s knowledge and information, the Respondent is not now making, has not in the past made, nor has he undertaken demonstrable preparations to make use whatsoever of the disputed domain names or any name corresponding to the disputed domain names in connection with a bona fide offering of goods and services.
Further the Complainant asserts that the Respondent is using the disputed domain names to redirect Internet users to automatically generated, sponsored advertising “Parking Sites” or “Landing Sites” at “www.boehringerdomain.com”, “www.boehringerdomains.com”, “www.boehringernic.com” and “www.wwwboehringer.com”, which provide for numerous “Related Links” (“Weitere Links”) as well as “Popular Categories” (“Beliebte Kategorien”), which are not at all specifically tailored to the Complainant, but redirect, inter alia, to commercially active websites of other companies in the pharmaceutical industry such as Clarins, Sana Expert and formoline, some of which are even the Complainant’s competitors on the pharmaceutical market.
The Respondent’s making use of the disputed domain names, which are confusingly similar to the Complainant’s trademark BOEHRINGER, in order to redirect Internet users interested in the Complainant’s products to websites offering a vast variety of products partially in competition with those of the Complainant cannot be seen as a bona fide offering of services pursuant to paragraph 4(c)(iii) of the Policy. The Respondent is seeking so-called “pay-per-clicks” (PPC) or “click- through-commissions” from those diverted Internet users who were trying to reach the Complainant’s website at e.g. “www.boehringer.com’’, but due to the confusing similarity between the disputed domain name and the Complainant’s trademark BOEHRINGER ended up with the Respondent’s Internet presence.
According to the Complainant this is supported by the fact that the Respondent registered a whole number of domain names surrounding the Complainant’s BOEHRINGER trademark which shows that Respondent has been well aware of the Complainant’s BOEHRINGER trademark at the time of the registration of the disputed domain names and intentionally registered at least one typo-squatted version thereof in order to run PPC websites for commercial gain.
Also, the Complainant notes that all of the disputed domain names are apparently offered for sale under the same contact information of […]@gmail.com.
Moreover, to the best of the Complainant’s knowledge and information, there is no evidence given that the Respondent is commonly known by the disputed domain names. On the contrary, the Respondent obviously neither owns trademark rights nor any other rights in BOEHRINGER or any similar variations thereof.
Finally, to the best of the Complainant’s knowledge and information, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. It is in fact evident that the Respondent is seeking PPC or “click- through-commissions” from those diverted Internet users who were trying to reach information on the Complainant, but due to the confusing similarity of the disputed domain names to the Complainant’s trademark BOEHRINGER ended up with the Respondent’s Internet presence at “www.boehringerdomain.com”, “www.boehringerdomains.com”, “www.boehringernic.com” and “www.wwwboehringer.com”, respectively.
(3) The Complainant claims that there can be no doubt that the disputed domain names were registered and are being used in bad faith.
The disputed domain dames redirect to typical PPC websites, and the Respondent will thus be profiting from the consumers’ initial confusion as they may be tempted to click on any of the various advertisements featured by the Respondent’s PPC websites. Accordingly, it has been held in many previous decisions by WIPO panelists that such exploitation of trademarks to obtain commercial gain by “click- through commissions” from the diversion of Internet users is clearly a registration and making use of the respective domain name in bad faith.
Moreover, since all of the disputed domain names are apparently offered for sale under the contact information of […]@gmail.com, the Complainant has reason to believe that the Respondent has acquired the disputed domain names for the ultimate purpose of selling them to the Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to disputed domain names which again are circumstances that according to the Policy shall be evidence for the conjunctive requirement of registration and use of the disputed domain names in bad faith, namely as provided for by Policy, paragraph 4(b)(i).
Further, it should be noted that the Respondent did not react upon any of the Complainant’s pre-procedural attempts to communicate with the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(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) the disputed domain names have been registered or are being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.
A. Identical or Confusingly Similar
The disputed domain names all contain the Complainant’s distinctive and reputed trademark BOEHRINGER with the addition of the generic and in this connection descriptive prefix “www” and suffixes “domain”, “domains” and “nic” respectively. Neither the adding of a descriptive term to a trademark in a domain name nor the generic top-level domain (“gTLD”) designations such as “.com” dispel a finding of confusing similarity between a trademark and a domain name, so for the purpose of this proceeding, the Panel finds that the disputed domain names are confusingly similar to the mark in which the Complainant has rights.
The Panel therefore finds that the conditions in paragraph 4(a)(i) of the Policy are fulfilled.
B. Rights or Legitimate Interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has not rebutted this, and the way the Respondent is using the disputed domain names makes it inconceivable to the Panel that any rights or legitimate interests may exist on the part of the Respondent.
Consequently the Panel finds that the conditions in paragraphs 4(a)(ii) and 4(c) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain names in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the domain name holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the domain name holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name holder has engaged in a pattern of such conduct; or
(ii) the domain name holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the domain name holder has intentionally attempted to attract, for commercial gain, Internet users to the domain name holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the domain name holder’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain names have been registered and are being used in bad faith.
Given the distinctive nature of the Complainant’s trademark BOEHRINGER and the global reputation of the mark, it is inconceivable to the Panel that the Respondent registered the disputed domain names without prior knowledge of the Complainant or without the intention of targeting the Complainant.
The Panel therefore finds that the disputed domain names were registered in bad faith.
Also, the Respondent has been using the disputed domain names actively for what appears to be a standardized PPC parking pages. In addition to this content, the Panel finds that the Complainant has established that the disputed domain names are all indeed offered for sale. This type of setup by the Respondent is a clear indication of bad faith use as previously stated in other UDRP decisions such as The Procter & Gamble Company v. Names2000.com, WIPO Case No. D2010-0357, and Representaciones De Materias Primas Industriales Ltda. v. Names2000.com, WIPO Case No. D2011-0029.
Noting that the disputed domain names incorporate a registered and reputed trademark, that no Response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain names, and considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) and 4(b) of the Policy are also fulfilled in this case.
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 <boehringerdomain.com>, <boehringerdomains.com>, <boehringernic.com> and <wwwboehringer.com> be transferred to the Complainant.
Date: March 3, 2013