WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boehringer Ingelheim Pharma Gmbh & Co.Kg v. Domain Administrator, Fundacion Privacy Services LTD
Case No. D2020-2819
1. The Parties
The Complainant is Boehringer Ingelheim Pharma Gmbh & Co.Kg, Germany (hereinafter “Complainant”), represented by Nameshield, France.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama (hereinafter “Respondent”).
2. The Domain Name and Registrar
The disputed domain name <boehringeringelmeimpetrebates.com> is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2020. On October 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 28, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2020. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2020.
The Center appointed M. Scott Donahey as the sole panelist in this matter on December 18, 2020. 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
Complainant is a family-owned pharmaceutical group of companies founded in 1885 by Albert Boehringer in Ingelheim am Rhein. Today Complainant has more than 50,000 employees and three areas of business: human pharmaceuticals, animal health, and biopharmaceuticals. In 2019, Complainant had net sales of approximately EUR 19 million. Complaint, Annex 3.
Complainant owns a large portfolio of trademarks which feature the company name, BOEHRINGER-INGELHEIM (with and without hyphen, both hereinafter as “BOEHRINGER-INGELHEIM”). The trademarks registrations issued internationally at least as early as July 2, 1959. Complaint, Annex 4. Complainant also owns a number of domain names featuring its BOEHRINGER-INGELHEIM trademark, including the domain name <boehringeringelheimpetrebates.com>. Complaint, Annex 5. This domain name was registered and has been in use since August 14, 2019.
Respondent registered the disputed domain name <boehringeringelmeimpetrebates.com> on October 23, 2020, more than a year after Complainant registered his domain name that is Annex 5 and more than 60 years after the BOEHRINGER-INGELHEIM trademark was registered internationally. Annexes 1 and 4. The disputed domain name resolves to a “parking page” which purports to forward the user to other commercial entities’ sites, such as Booking and Nespresso. Complaint, Annex 6. Respondent very likely receives income from the sites the users are directed.
5. Parties’ Contentions
Complainant alleges that the disputed domain name is confusingly similar to its trademark. Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name <boehringeringelmeimpetrebates.com>. Complainant asserts that the disputed domain name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
“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.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is 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 domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name begins with a sequence of letters (boehringeringelmeim) that is virtually identical to Complainant’s longstanding trademark BOEHRINGER-INGELHEIM. The only difference is that the beginning of the disputed domain name substitutes an “m” for the “h” in the name “Ingelheim” and does not include the dash that is present in some of Complainant’s trademarks.
The addition of the terms “pet rebates” in the disputed domain name is not sufficient to prevent a finding of confusing similarity with Complainant’s trademark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case, Complainant alleges and has made a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name; whereas Respondent has failed to assert any such rights or legitimate interests. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
In addition to the mimicry of Complainant’s trademark of long-standing in a portion of the disputed domain name, the disputed domain name is virtually identical to a domain name registered by Complainant more than a year before Respondent’s registration, the domain name <boehringeringelheimpetrebates.com>. Respondent is using the disputed domain name to resolve to a parking page which displays the names of other retain operations as links, the use of which links by the Internet user very likely results in compensation to Respondent. The Panel finds that the fact that such links seem to be generated by a third party, and even if the Respondent itself had not directly profited, would not by itself prevent a finding of bad faith. WIPO Overview 3.0, section 3.5. Therefore, the Panel finds that the disputed 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 disputed domain name, <boehringeringelmeimpetrebates.com>, be transferred to Complainant.
M. Scott Donahey
Date: December 19, 2020