WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boehringer Ingelheim Pharma GMBH & CO.KG v. Domain Administrator, Fundacion Privacy Services LTD
Case No. D2021-0439
1. The Parties
The Complainant is Boehringer Ingelheim Pharma GMBH & CO.KG, Germany, represented by Nameshield, France.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.
2. The Domain Names and Registrars
The disputed domain name <boehringererinhelheimpetrebates.com> is registered with Media Elite Holdings Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2021. On February 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2021, 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 March 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2021.
The Center appointed Colin T. O’Brien as the sole panelist in this matter on April 9, 2021. 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 pharmaceutical group of companies established as early as 1885 in Ingelheim am Rhein, Germany, by Albert Boehiringer. The Complainant has approximately 51,000 employees worldwide and its 2019 sales amounted to EUR 16 billion. The Complainant’s business specializes in three main areas: human pharmaceuticals, animal health, and biopharmaceuticals.
The Complainant owns the following trademark registrations:
BOEHRINGER-INGELHEIM (International Trademark Registration Number 221544, registered July 2, 1959), and covering chemical and pharmaceutical materials and services in classes 01, 02, 03, 04, 05, 06, 16, 17, 19, 29, 30, and 32;
BOEHRINGER-INGELHEIM (International Trademark Registration Number 568844, registered on March 22, 1991), covering chemical and pharmaceutical materials and services in classes 01, 02, 03, 04, 05, 09, 10, 16, 30, and 31.
The Complainant owns multiple domains consisting of the wording “Boehringer Ingelheim” including its registered domain name <boehringeringelheimpetrebates.com> on August 14, 2019.
The Respondent registered <boehringererinhelheimpetrebates.com> (“Disputed Domain Name”) on February 11, 2021.
5. Parties’ Contentions
Apart from the “.com” generic Top-Level Domain (“gTLD”), which is inherent to the operation of the domain name system, the addition of the letters “er,” the substitution of the letter “g” by the letter “h” to the domain name, and the removal of a hyphen to the trademark, the Disputed Domain Name is identical to the Complainant’s name, trademarks, and domain name.
The Complainant further contends that the addition of the terms “pet rebates” is not sufficient to escape the finding that the Disputed Domain Name is confusingly similar to the BOEHRINGER INGELHEIM trademark.
The Disputed Domain Name, which incorporates most of the Complainant’s trademark, sufficiently establishes confusing similarity to the Complaint’s trademark.
The Complainant’s rights predate the registration date of the Disputed Domain Name.
BOEHRINGER-INGELHEIM is not a generic term but a registered distinctive trademark owned by the Complainant.
At the recent time of the registration of the Disputed Domain Name, the Respondent was not known as “Boehringer Ingelheim” whereas the Complainant had long-standing rights in BOEHRINGER-INGELHEIM. There appears to be no legitimate reason why the Respondent would incorporate most of the Complainant’s well-known mark, company name, and domain name in the Disputed Domain Name.
The Respondent has no genuine activity under the name “Boehringer Ingelheim”. This is corroborated by the fact that the Disputed Domain Name is not redirecting toward any active website.
The Respondent has no rights, no offering of goods or services or legitimate use in the Disputed Domain Name.
The Complainant has never licensed or otherwise authorized in any way the Respondent to use BOEHRINGER-INGELHEIM and there is no commercial or any relationship between the Respondent and the Complainant.
The Complainant was extensively using BOEHRINGER-INGELHEIM globally before the registration of the Disputed Domain Name. The Complainant’s trademark is well-known worldwide, and the Complainant has a long-standing worldwide operating website under the <boehringer-ingelheim.com> domain name. It is obvious that the Respondent has no legitimate reason to register the Disputed Domain Name except to act in bad faith by taking advantage of the voluntary confusion created by its fraudulent registration.
It is not possible to conceive a plausible situation in which the Respondent could have ignored the existence of the Complainant’s trademarks, as it is also not possible to conceive plausible circumstance in which the Respondent could legitimately use the Disputed Domain Name.
The Respondent failed to submit a Response to the Complainant’s Complaint.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated it owns registered trademark rights in the BOEHRINGER-INGELHEIM trademark worldwide. The addition of the letters “er,” the substitution of the letter “g” by the letter “h” in the domain name, and the removal of a hyphen to the trademark are insufficient to avoid a finding of confusing similarity and they support a finding of intentional misspelling of a registered mark. Further the addition of the term “petrebates” does not prevent a finding of confusing similarity. See sections 1.8 and 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”).
Accordingly, the Disputed Domain Name is confusingly similar to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has presented a prima facie case that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and has not at any time been commonly known by the Disputed Domain Name.
After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel notes that because the Respondent failed to submit a Response, it provided no evidence of any rights or legitimate interests in the Disputed Domain Name. The available facts suggest that the Respondent registered the Disputed Domain Name to make an undue profit based on the Complainant’s rights. See, e.g., Bottega Veneta SA v. ZhaoJiafei, WIPO Case No. D2013-1556. In addition, the Panel notes the composition of the Disputed Domain Name, and that it does not resolve to an active website created by the Respondent, but to a parking site.
In the absence of any evidence rebutting the Complainant’s prima facie case indicating the Respondent’s lack of rights or legitimate interests in respect of the Disputed Domain Name, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Disputed Domain Name was registered many years after the Complainant first used its famous BOEHRINGER-INGELHEIM trademark. Further, a simple Internet search for “Boehringer Ingelheim” reveals Complainant operates a website at “https://www.boehringer-ingelheim.com” that advertises its pharmaceutical products and services. The evidence on the record provided by the Complainant with respect to the extent of use of its BOEHRINGER-INGELHEIM trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the Disputed Domain Name was registered, the Respondent undoubtedly knew of the Complainant’s BOEHRINGER-INGELHEIM trademark, and knew that it had no rights or legitimate interests in the Disputed Domain Name.
There is prima facie no non-benign reason for the Respondent to have registered the Disputed Domain Name containing BOEHRINGERER INHELHEIM and the term “pet rebates,” particularly given the fact the Respondent is not affiliated or licensed by the Complainant to use the BOEHRINGER-INGELHEIM trademark, and the fact that the Disputed Domain Name leads to a parking site, with no legitimate use. Respondent’s actions were not fair competition and are clearly in bad faith.
Accordingly, 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)-(iii) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <boehringererinhelheimpetrebates.com>, be transferred to the Complainant.
Colin T. O’Brien
Date: April 23, 2021