WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boehringer Ingelheim Pharma GMBH & Co.KG v. maxi milano
Case No. D2021-3900
1. The Parties
The Complainant is Boehringer Ingelheim Pharma GMBH & Co.KG, Germany, represented by Nameshield, France.
The Respondent is maxi milano, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <boehringer-ingehleim.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2021. On November 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 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.
On November 25, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On November 25, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Japanese of the Complaint, and the proceedings commenced on December 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 2, 2022.
The Center appointed Masato Dogauchi as the sole panelist in this matter on January 19, 2022. 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
Whereas the Respondent has not submitted any formal response, the following information from the Complaint is found to be the factual background of this case.
The 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. Ever since, BOEHRINGER INGELHEIM has become a global research-driven pharmaceutical enterprise and has today about roughly 52,000 employees. The three business areas of BOEHRINGER INGELHEIM are human pharmaceuticals, animal health and biopharmaceuticals. In 2020, net sales of the BOEHRINGER INGELHEIM group amounted to about EUR 19.6 billion.
The Complainant owns a large portfolio of trade marks including the terms BOEHRINGER INGELHEIM in several countries, such as:
- the international trade mark BOEHRINGER-INGELHEIM n°221544, registered since July 2, 1959; and,
- the international trade mark BOEHRINGER INGELHEIM n°568844, registered since March 22, 1991.
Furthermore, the Complainant owns multiple domain names consisting in the wording “BOEHRINGER INGELHEIM”, such as <boehringer-ingelheim.com> registered and used since September 1, 1995.
The disputed domain name <boehringer-ingehleim.com> was registered on November 19, 2021 and resolves to an inactive page. Besides, MX servers are configured.
5. Parties’ Contentions
The Complainant’s contentions are divided into three parts as follows:
First, the Complainant asserts that the disputed domain name is confusingly similar to its trade mark and its domain names associated. The word “ingehleim” in the disputed domain name is an obvious misspelling of a part of the Complainant’s trade mark, INGELHEIM, i.e. the reversal of the letters “L” and “H”. It is characteristic of a typosquatting practice intended to create confusing similarity between the Complainant’s trade mark and the disputed domain name. Previous UDRP panels have found that the slight spelling variations does not prevent a domain name from being confusingly similar to the complainant’s trade mark. The generic Top-Level Domain (“gTLD”) is not relevant in the appreciation of confusing similarity.
Second, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent is not identified in the WhoIs database as the disputed domain name. Past UDRP panels have held that a respondent was not commonly known by a disputed domain name if the WhoIs information was not similar to the disputed domain name. In addition, the Complainant contends that the Respondent is not affiliated with nor authorized by the Complainant in any way. The Complainant also contends that the Complainant does not carry out any activity for, nor has any business with the Respondent. Furthermore, the Complainant also claims that the disputed domain name is a typosquatted version of the trade mark. Moreover, the Complainant contends that, in consideration that the disputed domain name resolves to an inactive page, the Respondent used the disputed domain name in a way that fails to confer rights or legitimate interests.
Third, the Complainant asserts that the disputed domain name has been registered and is being used in bad faith. The Complainant is one of the world’s 20 leading pharmaceutical companies. The Complainant’s trade mark is distinctive and well-known. Therefore, by registering the disputed domain name with the misspelling of the trade mark, the Complainant states that this practice was intentionally designed to be confusingly similar with the Complainant’s trade mark. Moreover, the Complainant contends that the Respondent has not demonstrated any activity in respect of the disputed domain name, and it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, an infringement of the Complainant’s rights under trade mark law, or an attempt to attract, for commercial gain, Internet users to his own website, by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website. Finally, the disputed domain name has been set up with MX records which suggests that it may be actively used for email purposes. This is also indicative of bad faith registration and use because any email emanating from the disputed domain name could not be used for any good faith purpose.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Issue: Language of Proceedings
In respect of the language to be used in the administrative proceeding, in accordance with the Rules, paragraph 11(a), the language of the administrative proceeding shall be, in principle, the language of the registration agreement. However, the same provision allows the panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
In the present case, the Registrar has confirmed that the language of the Registration Agreement is Japanese.
The Panel determines that the language of this proceeding shall be English rather than Japanese on the following grounds:
- The Complainant requested to that effect;
- The Respondent surely has become aware of this case filed by the Complainant, even if he/she just understand Japanese language, on the ground that he/she did not reply to the notification in both English and Japanese by the Center that the Respondent was invited to indicate its objection, if any, to the Complainant’s request for the language by the specified due date; and
- The use of Japanese language would produce undue burden on the Complainant in consideration of the absence of a Response from the Respondent.
6.2. Substantive Matters
In accordance with the Rules, paragraph 15(a), a panel shall decide a case on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Since the Respondent has not made any substantive arguments in this case, the following decision is rendered on the basis of the Complainant’s contentions and other evidence submitted by the Complainant.
In accordance with the Policy, paragraph 4(a), in order to qualify for a remedy, the Complainant must prove each of the following:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the BOEHRINGER-INGELHEIM trade mark.
The last part of the disputed domain name is “.com”. This represents one of the generic Top-Level Domains, which is irrelevant in the determination of the confusing similarity between the disputed domain name and the BOEHRINGER-INGELHEIM trade mark.
The word “boehringer” is found in the first part of the disputed domain name, which is same as the first part of the Complainant’s trade mark. This word is followed by a hyphen in the same way as in the above trade mark. The latter part after the hyphen and before “.com” is “ ingehleim”. This word is different from the latter part of the Complainant’s trade mark in that the sequential order of the letters “l” and “h” is reversed. The inversion of letters is a typical example of typosquatting.
Therefore, the Panel finds that the disputed domain name, being a typosquatted version of the Complainant’s BOEHRINGER-INGELHEIM trade mark, is confusingly similar to the trade mark in which the Complainant has rights. The above requirement provided for in paragraph 4(a)(i) of the Policy is accordingly satisfied.
B. Rights or Legitimate Interests
There is no evidence at all that shows the Respondent is commonly known by the name “boehringer-ingehleim” or that the Respondent is affiliated with the Complainant or authorized or licensed to use the Complainant’s trade mark.
The disputed domain name resolves to an inactive page. This suggests that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair use.
Since the Respondent did not reply to the Complaint in this proceeding, the Panel finds on the available record that the Complainant has established an unrebutted prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The above requirement provided for in paragraph 4(a)(ii) of the Policy is accordingly satisfied.
C. Registered and Used in Bad Faith
The Complainant is a world famous pharmaceutical company. ln consideration of the Complainant’s large business using the BOEHRINGER-INGELHEIM trade mark, it is highly unlikely that the Respondent would not have known of the Complainant’s rights in the trade mark at the time of the disputed domain name’s registration. ln addition, in light of the fact that nothing in the disputed domain name bears a reasonable relevance to the name of the Respondent and number of letters in the Complainant’s BOEHRINGER-INGELHEIM trade mark, which is twenty letters, there can be found no reasonable possibility of fortuity in the Respondent’s innocent registration of the disputed domain name. Furthermore, the non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding.
In addition, in a similar case involving the same Complainant, it was held that “the registration of the Domain Name which contains obvious misspelling of the Complainant’s BOEHRINGER-INGELHEIM trademark […] constitutes registration and use bad faith.” (Boehringer Ingelheim Pharma GmbH & Co. KG v. Martin Hughes, WIPO Case No. D2016-1546 (<boehringer-ingalheim.com>)).
Since the Respondent did not reply to the Complaint in this proceeding, it is possible for the Panel to find that the disputed domain name has been registered in bad faith and is being used in bad faith. The above requirement provided for in paragraph 4(a)(iii) of the Policy is accordingly satisfied.
ln conclusion, all three cumulative requirements as provided for in paragraph 4(a) of the Policy are determined to be satisfied.
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 <boehringer-ingehleim.com> be transferred to the Complainant.
Date: January 20, 2022