WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim Pharma GmbH & Co. KG v. ICS Inc.

Case No. D2013-1067

1. The Parties

The Complainant is Boehringer Ingelheim Pharma GmbH & Co. KG of Ingelheim am Rhein, Germany, represented by Schiedermair Rechtsanwälte, Germany.

The Respondent is ICS Inc. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <wwwspiriva.com> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2013. On June 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 13, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2013.

The Center appointed Eduardo Machado as the sole panelist in this matter on July 16, 2013. 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 global pharmaceutical enterprise and owns a vast portfolio of brands relating to

pharmaceutical products, including, inter alia, SPIRIVA, designed for the maintenance treatment of patients with COPD (chronic obstructive pulmonary disease, including chronic bronchitis and emphysema), the maintenance treatment of associated dyspnoea and for the prevention of exacerbations.

The Complainant, together with the Boehringer group of companies, is the owner of numerous registered trademarks worldwide relating to the SPIRIVA brand, in particular the following, all of which predate the registration of the Disputed Domain Name:

- International Registration No. 692353, for the word mark SPIRIVA, registered on April 1, 1998;

- International Registration No. 823202, for the word mark SPIRIVA, registered on March 18, 2004;

- OHIM Registration No. 789529, for the word mark SPIRIVA, registered on August 16, 1999;

- USPTO Registration No.2285506, for the word mark SPIRIVA, registered on October 12, 1999;

- CIPO Registration No.573518, for the word mark SPIRIVA, registered on January 13, 2003.

The Complainant is also the owner of numerous domain names relating to the trademark SPIRIVA, the registration of all of which predates the Disputed Domain Name: <spiriva.com>, <spiriva.info>, <spiriva.org> and <spiriva.us>.

The Disputed Domain Name was created on February 3, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that:

The Disputed Domain Name is confusingly similar to, and fully comprises, the Complainant’s trademark SPIRIVA.

The Disputed Domain Name is a popular form of typosquatting (arising from the omission of the standard dot behind “www”).

The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Disputed Domain Name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to Policy, paragraph 4(a) the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark 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 Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent to retain registration and use of the disputed domain name…”

In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”

As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”

In this administrative proceeding, the Respondent’s default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take its decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its trademark rights in the SPIRIVA trademark.

It is a common practice under the Policy to disregard the generic top-level domains (“gTLD”) such as the “.com” for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name is “wwwspiriva” and it is clear that the Disputed Domain Name fully comprises the Complainant’s registered trademark SPIRIVA (with the mere addition of the prefix “www” for “World Wide Web”).

The Panel finds that numerous prior UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696).

Accordingly, the mere addition of the prefix “www” for “World Wide Web” is not at all capable to dispel the confusing similarity arising from the incorporation of the Complainant’s SPIRIVA trademark into the Disputed Domain Name.

The Disputed Domain Name clearly includes a popular form of typosquatting (arising from the omission of the standard dot behind “www”) which further supports a finding of confusing similarity (as has been held in e.g. Washington Mutual, Inc. v. Phayze Inc., Peter Carrington and Party Night, Inc., WIPO Case No. D2003-0283).

Taking the above into account, the Panel finds that the Disputed Domain Name is confusingly similar to the SPIRIVA trademark in which the Complainant has rights, and the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the Disputed Domain Name.

B. Rights or Legitimate Interests

The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the Disputed Domain Name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Complainant has not granted the Respondent any license or has otherwise permitted the Respondent to use the trademark SPIRIVA or even to apply for any domain name(s) incorporating the SPIRIVA trademark.

The Disputed Domain Name redirects to a website at “www.wwwspiriva.com” which provides hyperlinks to websites of third parties, many of which are direct competitors of the Complainant and its SPIRIVA products on the pharmaceutical market.

The Panel finds that there is no evidence given that the Respondent is commonly known by the Disputed Domain Name.

The Panel also finds that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.

Therefore, the Panel accepts the Complainant’s prima facie case, which has not been rebutted, and finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent, by using the Disputed Domain Name, intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark SPIRIVA.

The Panel considers that it has been held in many previous UDRP decisions that such exploitation of trademarks to obtain commercial gain by “click-through commissions” from the diversion of Internet users is clearly a registration and making use of the respective domain name in bad faith (see e.g. L’Oreal, Biotherm, Lancome Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623; Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383; Future Brands LLC v. Mario Dolzer, WIPO Case No. D2004-0718; ACCOR v. Mr. Young Gyoon Nah, WIPO Case No. D2004-0681 and Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584).

The Panel finds that the Respondent is apparently acting as a typical “cybersquatter” who is systematically exploiting the trademark rights of third parties by registering typo-squatted domain names to generate PPC commissions.

Therefore, and in the lack of any allegation or evidence to the contrary, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith.

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 <wwwspiriva.com> be transferred to the Complainant.

Eduardo Machado
Sole Panelist
Date: July 30, 2013