WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boehringer Ingelheim Pharma GmbH & Co.KG v. Kate Middleton
Case No. D2016-0021
1. The Parties
The Complainant is Boehringer Ingelheim Pharma GmbH & Co.KG, of Ingelheim, Germany, represented by Nameshield, France.
The Respondent is Kate Middleton of Oakland, California, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <boehringeringelheimltd.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2016 naming as the Respondent Registration Private, Domains By Proxy, LLC. On January 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 7, 2016, the Registrar transmitted by email to the Center its verification response naming the registrant as Kate Middleton., The Center sent an email communication to the Complainant on January 8, 2016 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 on January 12, 2016 naming as the Respondent Kate Middleton.
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 of the Complaint, and the proceedings commenced on January 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2016.
The Center appointed Alan L. Limbury as the sole panelist in this matter on February 12, 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
Founded in1885, the Complainant is a research-driven pharmaceutical company with about 140 affiliated companies world-wide with roughly 46,000 employees. Its main businesses are human pharmaceuticals and animal health. Net sales in 2013 amounted to about EUR 14.1 billion. It is the registered proprietor of the trademark BOEHRINGER INGELHEIM in numerous countries, including International registrations Nos. 221544 dated July 2, 1959 and 1160936 dated March 25, 2013 and European Community registration No. 2493195 dated May 20, 2003. It is also the registrant of numerous domain names incorporating that trademark, including in particular <boehringer-ingelheim.com>.
The Domain Name was registered on August 16, 2015, since when it has resolved only to an inactive web page headed “Error 404”.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its BOEHRINGER INGELHEIM trademark and that the Respondent has no right or legitimate interest in respect of the Domain Name, which was registered and is being used in bad faith.
As to confusing similarity, the Complainant says the Domain Name includes the BOEHRINGER INGELHEIM mark in its entirety. The addition of the generic Top-Level Domain (“gTLD”) “.com” and the term “ltd” (for “limited”) is not sufficient to escape the finding that the Domain Name is confusingly similar to the trademark and does not change the overall impression of the designation as being connected to a trademark of the Complainant.
As to legitimacy, the Complainant says the Respondent is not related in any way to the Complainant’s business and the Complainant does not carry out any activity for, nor has any business with the Respondent. According to the WhoIs information regarding the Domain Name, the Respondent is not known as “Boehringer Ingelheim”. The website in relation to the Domain Name has not been used (“Error 404” page) since its registration. Indeed, the Respondent could not have used the Domain Name without infringing the Complainant’s intellectual property rights. Furthermore, given the distinctiveness of the Complainant's trademark and reputation, the Complainant contends that the Respondent 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.
As to bad faith, the Complainant says that given the distinctiveness of the Complainant’s trademark and reputation, it is reasonable to infer that the Respondent registered the Domain Name with full knowledge of the Complainant’s trademark. The Respondent is identified as Kate Middleton, with the email address “[..]@boehringer-ingelheim.com”. The Complainant has no employee known as Kate Middleton. The Complainant suspects that the Respondent is using a false identity and has attempted to create a likelihood of confusion by using that email address. Moreover, the website to which the Domain Name resolves has been inactive since its registration (“error 404” page). Prior UDRP panels have held that the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, to obtain transfer of the Domain Name, the Complainant must prove the following three elements: (i) the Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in the Domain Name; and (iii) the Respondent has registered the Domain Name and is using it in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant. See Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.
A. Identical or Confusingly Similar
The Complainant has produced copies of registration certificates establishing that it has rights in many countries in the trademark BOEHRINGER INGELHEIM. The Domain Name wholly incorporates that mark, together with the suffix “ltd”, which signifies a limited liability company, and the gTLD “.com”, which is generally regarded as irrelevant for the purpose of determining whether the Domain Name is identical or confusingly similar: 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.
The Panel finds that the addition of the suffix “ltd” and the gTLD “.com” does nothing to detract from the distinctiveness of the BOEHRINGER INGELHEIM mark and that, accordingly, the Domain Name is confusingly similar to that mark.
The Complainant has established this element.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate the Respondent’s rights to or legitimate interests in the Domain Name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or 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; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Panel finds that the BOEHRINGER INGELHEIM mark is distinctive and well known. The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that the Respondent does have rights or legitimate interests in the Domain Name. See Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753. The Respondent has made no attempt to do so.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant has established this element.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy sets out the conjunctive requirement that the Complainant establish both that the Respondent has registered the Domain Name in bad faith and that the Respondent is using the Domain Name in bad faith.
Paragraph 4(b) of the Policy sets out illustrative circumstances, which, though not exclusive, shall be evidence of both bad faith registration and bad faith use for the purposes of paragraph 4(a)(iii). Under paragraph 4(b)(ii) registration of a domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name shall be evidence of both bad faith registration and use provided there has been a pattern of such conduct. There is no evidence in this case of any such pattern, nor does the Complainant seek to rely on paragraph 4(b)(ii) or any of the other circumstances set out in paragraph 4(b), since the Complainant’s assertion that the Domain Name was registered in order to prevent the Complainant from registering a corresponding domain name was made in relation to the issue of legitimacy.
Accordingly the Panel addresses separately the issues of bad faith registration and bad faith use.
As to registration, given the distinctiveness and reputation of the BOEHRINGER INGELHEIM mark, the Panel accepts the Complainant’s assertion that the Respondent must have had the Complainant’s mark in mind when registering the Domain Name. At the time, the Respondent registered the Domain Name in the name of a privacy service, Registration Private, Domains By Proxy, LLC, thereby concealing the Respondent’s identity. The contact details of the Respondent revealed by the Registrar following the filing of the initial Complaint appear to be false (as it happens, the Complainant has no employee at the email address “[…]@boehringer-ingelheim.com”). In the absence of any Response, these circumstances lead the Panel to conclude that the Domain Name was registered in bad faith.
As to use, this requirement has been found not to require positive action, inaction being within the concept: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Barney’s, Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case No. D2000-0400.
The Panel adopts the approach of the learned panellist in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, at 7.11:
“in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith”.
The Panel considers the following to be relevant circumstances of the Respondent’s behaviour in this case:
(i) the Complainant’s trademark has a strong reputation and is well known;
(ii) the Respondent has provided no evidence of any actual or contemplated good faith use of the Domain Name;
(iii) the Respondent concealed its true identity by using a privacy service;
(iv) the contact details of the Respondent appear to be false, and
(v) it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
In light of these circumstances, the Panel concludes that the Respondent is using the Domain Name in bad faith.
The Complainant has established this element.
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, <boehringeringelheimltd.com> be transferred to the Complainant.
Alan L. Limbury
Date: February 14, 2016