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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim Pharma Gmbh & Co.Kg v. Domain Admin, Whois Privacy Corp.

Case No. D2021-0546

1. The Parties

Complainant is Boehringer Ingelheim Pharma Gmbh & Co.Kg, Germany, represented by Nameshield, France.

Respondent is Domain Admin, Whois Privacy Corp., Bahamas.

2. The Domain Name and Registrar

The Disputed Domain Name <boehringeringelheimpetrrbates.com> is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2021. On February 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 23, 2021, 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 March 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 25, 2021.

The Center appointed Richard W. Page as the sole panelist in this matter on April 15, 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

Complainant is a family-owned pharmaceutical group of companies with roots going back to 1885, when it was founded by Albert Boehringer (1861-1939) in Ingelheim am Rhein. Since then, BOEHRINGER INGELHEIM has become a global research-driven pharmaceutical enterprise and has today about roughly 51,000 employees. The three business areas of BOEHRINGER INGELHEIM are human pharmaceuticals, animal health and biopharmaceuticals. In 2019, net sales of the BOERHINGER INGELHEIM group amounted to EUR 19 billion.

Complainant owns a large portfolio of trademarks including the terms “boehringer ingelheim” in several countries (the “BOEHRINGER INGELHEIM Marks”) including:

- the international trademark BOEHRINGER-INGELHEIM No. 221544, registered July 2, 1959; and
- the international trademark BOEHRINGER INGELHEIM No. 568844 registered March 22, 1991.

Furthermore, Complainant owns multiple domain names consisting of the wording “boehringer ingelheim” such as <boehringeringelheimpetrebates.com> registered and used since August 14, 2019.

The Disputed Domain Name was registered February 19, 2021 and resolves to a parking page with commercial links.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Name is confusingly similar with the BOEHRINGER INGELHEIM Marks pursuant to paragraph 4(a)(i) of the Policy.

Complainant further contends that the addition of the letters “rr” to “pet rrbates” to the Disputed Domain Name is not sufficient to escape the finding that the Disputed Domain Name is confusingly similar to the BOEHRINGER INGELHEIM Marks. Complainant further contends that this change does not change the overall impression of the designations as being connected to Complainant’s trademarks and is typosquatting by Respondent of the term “pet rebates” which is a descriptive term in Complainant’s industry.

Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

Complainant further alleges that Respondent is not commonly known by the Disputed Domain Name. Complainant further alleges that Respondent is not affiliated with nor authorized by Complainant to use the BOEHRINGER INGELHEIM Marks and does not carry out any activity for, nor have any business with Respondent. Complainant further alleges that the Disputed Domain Name resolves to a parking page with commercial links, hence not considered a bona fide offering of goods or services or a legitimate non-commercial use.

Complainant argues that Respondent registered and is using the Disputed Domain Name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

Complainant further argues that it is one of the world’s leading pharmaceutical companies, with roughly 51,000 employees worldwide and EUR 19 billion in net sales.

Complainant further argues that Respondent chose to register the Disputed Domain Name to intentionally create confusion with the Complainant’s domain name <boehringeringelheimpetrebates.com>, used by Complainant to offer rebates on pet health products. Complainant further argues that given its strong market presence and given the distinctiveness of the BOEHRINGER INGELHEIM Marks, it is reasonable to infer that Respondent has registered and used the Disputed Domain Name with full knowledge of Complainant’s trademark rights.

Complainant concludes that the allegation that the Disputed Domain Name resolves to a parking page with commercial links supports the finding that Respondent has attempted to attract Internet users for commercial gain to its own websites using the BOEHRINGER INGELHEIM Marks, which is additional evidence of bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the BOEHRINGER INGELHEIM Marks in which Complainant has rights; and,

ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,

iii) that the Disputed Domain Name has been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Complainant contends that it has numerous registrations of the BOEHRINGER INGELHEIM Marks. Section 1.2.1 of the WIPO Overview 3.0 states that registration of a trademark is prima facie evidence of Complainant having enforceable rights in the BOEHRINGER INGELHEIM Marks.

Respondent has not contested Complainant’s trademark registrations. Therefore, the Panel finds that Complainant has enforceable trademarks for purposes of this proceeding.

Complainant contends that Respondent is typosquatting by the addition of the letters “rr” to “pet rebates” in the Disputed Domain Name.

See Section 1.0 of the WIPO Overview 3.0 which says that a domain name which consists of a common, obvious or intentional misspelling of a trademark is considered by UDRP panels to be confusingly similar to the relevant mark for purposes of the first element.

Also see Section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in a domain name will be considered confusingly similar. The Panel finds that the entirety of the BOEHRINGER INGELHEIM Marks is contained within the Disputed Domain Name.

Also see Section 1.8 of the WIPO Overview 3.0 instructs that the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not prevent a finding of confusing similarity. Also see Section 1.11.1 of the WIPO Overview 3.0 instructs that the generic Top-Level-Domain (“gTLD”) may be disregarded for purposes of assessing confusing similarity.

The Panel finds that the term “pet rebates” is descriptive and non-distinctive. The Panel also finds that the gTLD “.com” is not significant for purposes of confusing similarity.

Therefore, the Disputed Domain Name is confusingly similar to the BOEHRINGER INGELHEIM Marks and Complainant has shown the necessary elements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the BOEHRINGER INGELHEIM Marks or service mark at issue.

Complainant alleges that Respondent is not commonly known by the Disputed Domain Name. Complainant further alleges that Respondent is not affiliated with nor authorized by Complainant to use the BOEHRINGER INGELHEIM Marks and does not carry out any activity for, nor have any business with Respondent. Complainant further alleges that the Disputed Domain Name resolves to a parking page with commercial links, hence not considered a bona fide offering of goods or services or a legitimate non-commercial use.

The Panel finds that Complainant has made a prima facie showing that Respondent has not rights or legitimate interests in the Disputed Domain Name. Respondent has failed to contest Complainant’s arguments.

Therefore, the Panel finds that Complainant has satisfied the required elements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the BOEHRINGER INGELHEIM Marks or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the BOEHRINGER INGELHEIM Marks from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the BOEHRINGER INGELHEIM Marks as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.

Complainant further argues that it is one of the world’s leading pharmaceutical companies, with roughly 51,000 employees worldwide and EUR 19 billion in net sales.

Complainant further argues that Respondent chose to register the Disputed Domain Name to intentionally create confusion with the Complainant’s domain name <boehringeringelheimpetrebates.com>, used by Complainant to offer rebates on pet health products. Complainant further argues that given its strong market presence and given the distinctiveness of the BOEHRINGER INGELHEIM Marks, it is reasonable to infer that Respondent has registered and used the Disputed Domain Name with full knowledge of Complainant’s trademark rights.

Complainant concludes that the allegation that the Disputed Domain Name resolves to a parking page with commercial links supports the finding that Respondent has attempted to attract Internet users for commercial gain to its own websites using the BOEHRINGER INGELHEIM Marks, which is additional evidence of bad faith.

The Panel further notes that UDRP panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith.

The Panel finds that Complainant has shown the necessary elements of paragraph 4(b)(iv) of the Policy, thus showing Respondent’s registration and use of the Disputed Domain Name in bad faith in satisfaction of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <boehringeringelheimpetrrbates.com> be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: April 28, 2021

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