WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boehringer Ingelheim Pharma GmbH & Co. KG v. Marius Graur
Case No. D2019-0208
1. The Parties
The Complainant is Boehringer Ingelheim Pharma GmbH & Co. KG of Ingelheim, Germany represented by Nameshield, France.
The Respondent is Marius Graur of Brasov, Romania.
2. The Domain Names and Registrar
The disputed domain names <boehringer-ingelheim.world> and <boehringeringelheim.world> is registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2019. On January 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 29, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 30, 2019 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 31, 2019.
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 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2019.
The Center appointed William van Caenegem as the sole panelist in this matter on March 4, 2019. 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 pharmaceutical company, BOEHRINGER INGELHEIM was first established in 1885 and now has approximately 140 affiliated companies world-wide with close to 50,000 employees. It achieved net sales of 18.1 billion euros in 2017.
The Complainant owns many registered trademarks including the terms “BOEHRINGER INGELHEIM” in several countries, inter alia the international trademark BOEHRINGER-INGELHEIM, No. 221544, registered on July 2, 1959.
The Complainant also owns a number of registered domain names incorporating the terms “BOEHRINGER INGELHEIM”, such as <boehringer-ingelheim.com>, registered on August 31, 1995 and <boehringeringelheim.com> registered and used since July 4, 2004.
The disputed domain names <boehringer-ingelheim.world> and <boehringeringelheim.world> were registered on December 12, 2018 and are inactive.
5. Parties’ Contentions
The Complainant states that the disputed domain names <boehringer-ingelheim.world> and <boehringeringelheim.world> are identical, or at least confusingly similar to its registered trademark. The hyphen in the disputed domain name BOEHRINGER-INGELHEIM is said to be irrelevant for present purposes. Further, the addition of the generic Top-Level Domain (“gTLD") suffix “.WORLD” is not sufficient to escape the finding that the disputed domain names are confusingly similar to the Complainant's trademarks. It does not change the overall impression of the disputed domain names as being connected to the Complainant’s trademark, says the Complainant.
The Complainant also asserts that the Respondent is not affiliated with it and has no authorization to use the mark BOEHRINGER INGELHEIM in any way. The Complainant does not carry out any activity for, nor has any business with the Respondent. The disputed domain names are inactive and the Respondent has never made any use of them. According to the Complainant this absence of any plan to use the disputed domain names demonstrates a lack of legitimate interests.
The Complainant’s trademark BOEHRINGER INGELHEIM is a distinctive, and according to the Complainant well-known trademark. Given the distinctiveness of its trademark and its reputation, the Complainant contends that it is reasonable to infer that the Respondent has registered and used the disputed domain names with full knowledge of the Complainants trademark rights.
The Complainant also asserts that it is not possible to conceive of any active use of the disputed domain names by the Respondent that would not be illegitimate, by amounting to passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
Finally the Complainant contends that, as decided by prior UDRP panels, the incorporation of a famous mark into a domain name, coupled with an inactive website, amounts to bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain names are identical to the registered trademark of the Complainant.
B. Rights or Legitimate Interests
The registered trademark of the Complainant is highly distinctive and has a widespread and longstanding reputation in the field of pharmaceuticals. The Respondent has no authorization or license of any kind to use the Complainant’s trademark or to register a domain name that contains it. The Respondent is not known by the name, and has not made any legitimate use of “Boehringer-Ingelheim”, and did not respond to the present Complaint.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Because of the very distinctive nature of the Complainant’s trademark and its widespread and longstanding use and reputation in the relevant field, it is inconceivable that the Respondent registered the disputed domain name without being aware of the Complainant’s legal rights. The Respondent registered the two very similar disputed domain names on the same day, with clear deliberation. The Respondent has not made any use of the disputed domain names, and such passive holding of domain names in which the registrant has absolutely no conceivable rights or interests has consistently been held to be use in bad faith.
Therefore the Panel holds that under the circumstances of this case, the disputed domain names were registered and 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 disputed domain names <boehringer-ingelheim.world> and <boehringeringelheim.world> be transferred to the Complainant.
William van Caenegem
Date: March 15, 2019