WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim Pharma GmbH & Co. Kg. v. Metodi Darzev, Tool Domains Ltd

Case No. DNU2019-0005

1. The Parties

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

The Respondent is Metodi Darzev, Tool Domains Ltd., Bulgaria, self-represented.

2. The Domain Name and Registrar

The disputed domain name <boehringer-award.nu> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2019. On October 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 2019, 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 November 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2019. The Response was filed with the Center on November 6, 2019.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on December 9, 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

Boehringer Ingelheim is a German pharmaceutical group of companies dating back to 1885. Its name derives from that of its founder, Albert Boehringer. Nowadays the group has about 140 affiliated companies and about 50,000 employees in principally human pharmaceuticals, animal health and biopharmaceuticals. The scale of the group is reflected in sales valued at about EUR 17.5 billion in 2018.

The Complainant owns a number of trademarks of which the following is representative:

BOEHRINGER, international trademark, registered December 2, 2002, registration number 799761, in classes 1, 3, 5, 10, 16, 30, 31, 35, 41, 42, and 44.

The Complainant is also the owner of a number of domain names incorporating its trademark, including <boehringer.com>, registered in 2000.

No background information is available about the Respondent except for such contact details as were furnished to the Registrar for the purpose of registration of the disputed domain name. The disputed domain name was registered on October 16, 2019 and resolves to a parking page with commercial links and a notice to the effect that it is for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The disputed domain name <boehringer-award.nu> includes the entirety of the Complainant’s trademark. The addition of the dictionary word “award” to the disputed domain name does not change an impression that it is associated with the Complainant and does not prevent a finding of confusing similarity to the Complainant’s trademark. The country code Top-Level Domain (“ccTLD”) “.nu” is not distinguishing and, as a standard registration requirement, should be disregarded in the determination of confusing similarity.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not been licensed or authorised to use the Complainant’s trademark in any way or to apply for registration of the disputed domain name, has no connection with the Complainant, and is not known to the Complainant.

The Complainant says that having made out a prima facie case to the effect that the Respondent does not have rights or legitimate interests in the disputed domain name, it is for the Respondent to establish any such rights or legitimate interests, which it has not done.

The Complainant says there is no bona fide offering of goods or services in connection with the disputed domain name, which resolves to a parking page displaying commercial pay-per-click links. These links do not constitute either a bona fide offering of goods or services, or a legitimate noncommercial or fair use. The disputed domain name is offered for sale on the website to which it resolves. The Complainant contends that this is evidence of the Respondent’s lack of rights or legitimate interests in the disputed domain name. The Respondent is known as “Tool Domains Ltd” and not by the disputed domain name.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. It is inconceivable given the similarity to the Complainant’s trademark that the disputed domain name was registered by the Respondent without knowledge of the Complainant's trademark. By the provision of commercial links on the parking page to which the disputed domain name resolves, the Respondent has attempted to attract Internet users for commercial gain, constituting use in bad faith. Furthermore, the offering of the disputed domain name for sale indicates that it was registered in bad faith.

Accordingly the Complainant contends that the disputed domain name was registered and is being used in bad faith.

The Complainant has cited previous decisions under the UDRP that it considers to be supportive of its position.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent denies the Complaint.

It is appropriate in this instance to reproduce in full the salient parts of the Respondent’s “Response to Statements and Allegations Made in Complaint”, with the headings omitted:

“The Respondent objects the arguments made by the Complainant concerning the manner in which the domain name is allegedly identical or confusingly similar to a trademark or service mark in which the Complainant claims it has rights.

The Respondent objects the arguments made by the Complainant as to why the Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the Complaint. The Respondent has rights and justified interest in the domain name.

The Respondent objects the arguments made by the Complainant as to why the domain name should be considered as registered and used in had faith.

- the domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, as the alleged owner of the trademark or service mark, or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name:

- the domain name was not registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name and, in connection therewith, the Respondent has not engaged in a pattern of such conduct:

- the Complainant and the Respondent are not competitors and the domain name was not registered by the Respondent primarily to disrupt the Complainant’s business:

- the domain name was not registered by the Respondent in an intentional attempt to attract for commercial gain, Internet users to the Respondent's web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.”

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:

“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.”

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

The Respondent has provided the name Metodi Darzev and the company name Tool Domains Ltd., for the purpose of registration of the disputed domain name and will be referred to in the singular.

A. Identical or Confusingly Similar

The Panel is satisfied by the copy of documentary evidence produced that the Complainant has rights in the registered trademark BOEHRINGER as detailed in section 4, above.

The disputed domain name is <boehringer-award.nu>, which may be read as the Complainant’s distinctive trademark BOEHRINGER followed by the dictionary word “award”. The ccTLD “.nu” (Niue) has no bearing on the determination of confusing similarity in this instance. The disputed domain name incorporates the entirety of the Complainant’s trademark and on an objective comparison, irrespective of the added dictionary word “award”, is found to be confusingly similar to the trademark. The Respondent’s stated objection under this heading is not supported with any argument or evidence.

Accordingly the Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has asserted that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not authorised the Respondent to use the Complainant’s trademark in any way or to apply for registration of the disputed domain name, and does not know the Respondent.

The Complainant having stated a prima facie case to the effect that the Respondent lacks rights or legitimate interests in the disputed domain name, it is for the Respondent to establish otherwise in accordance with the provisions of paragraph 4(c) of the Policy. The Respondent may do so by demonstrating, without limitation:

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

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent asserts rights and legitimate interests in the domain name and rejects the Complainant’s position. The Respondent has not however produced any evidence or attempted to establish any rights or legitimate interests in the disputed domain name under paragraphs 4(c)(i), (ii) or (iii) of the Policy, which are without limitation, or otherwise. In particular there is no evidence or argument to the effect that the provision of pay-per-click links on the parking page of the disputed domain name, or its being offered for sale, constitutes bona fide use in trade, or noncommercial use by the Respondent, or that the Respondent has been known by the disputed domain name. Accordingly the Respondent is found not to have rights or legitimate interests in the disputed domain name and the Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Respondent has specifically denied transgression of each of the provisions of paragraphs 4(b)(i), (ii), (iii) and (iv) of the Policy, but has not gone beyond mere denial or produced any relevant evidence.

The Complainant’s trademark may be considered distinctive. The Complainant has been trading for more than a century and is now a large international corporation with recent annual sales in the region of EUR 17.5 billion. Whilst the concept of constructive knowledge is not specifically incorporated in the Policy, in this particular case, the prominent incorporation of the Complainant’s trademark into the disputed domain name leads to the unavoidable conclusion on the balance of probabilities that the Respondent was aware of the Complainant’s trademark and that it was incorporated into the disputed domain name with bad faith intent.

According to the screen capture produced in evidence, the disputed domain name resolves to a parking page marked “Acheter ce domaine” (French for “buy this domain”). The disputed domain name is clearly for sale. On the totality of the evidence, the Panel concludes that it was registered primarily for sale to the Complainant or, more probably, to a competitor of the Complainant, who need not be a direct trade competitor (Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279). The registration of the disputed domain name is found to have been in bad faith under paragraph 4(b)(i) of the Policy.

Sponsored links are provided on the parking page, headed “Boehringer Ingelheim”, “Password”, “Reset Password”, “Spiriva”, and “Upgrade” respectively. A notice in the nature of a disclaimer appears below them, which reads in part: “The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers.” At least some of these links may reasonably be presumed to be intended to generate revenue that devolves in part to the Respondent. The revenue so generated is likely to be in consequence of Internet users seeing the disputed domain name and, given the specialised nature of the Complainant’s business, more probably than not, being misled into believing they have recognised the Complainant’s trademark, at least initially. The Panel rejects the Respondent’s unsupported assertions to the contrary.

The disclaimer does not absolve the Respondent of responsibility for the appearance of any advertising links or their content. As discussed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 3.5, “[n]either the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith”.

On the balance of probabilities, the Respondent is found to have used the disputed domain name in bad faith for commercial gain by attempting to attract Internet users by confusion with the Complainant’s trademark, in the terms of paragraph 4(b)(iv) of the Policy.

Accordingly, on the evidence and on the balance of probabilities, the Panel finds the disputed domain name to have been registered and used in bad faith by the Respondent in the terms 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 <boehringer-award.nu> be transferred to the Complainant.

Dr. Clive N.A. Trotman
Sole Panelist
Date: December 16, 2019