WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim Pharma GmbH & Co. KG v. Mojtaba Alimardani

Case No. DIR2015-0017

1. The Parties

Complainant is Boehringer Ingelheim Pharma GmbH & Co. KG of Ingelheim, Germany, represented by Nameshield, France.

Respondent is Mojtaba Alimardani of Mashhad, Islamic Republic of Iran.

2. The Domain Name and Registrar

The disputed domain name <boehringer.ir> is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 17, 2015. On November 17, 2015, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On November 18, 2015, IRNIC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on November 23, 2015.

The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the "Policy" or "irDRP"), the Rules for .ir Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2015. On December 15, 2015, the Center notified Respondent's default.

The Center appointed Roberto Bianchi as the sole panelist in this matter on December 23, 2015. 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 global pharmaceutical group of companies founded in 1885 by Albert Boehringer in Ingelheim am Rhein, Germany. Presently, Complainant owns about 140 affiliated companies worldwide. In the Islamic Republic of Iran, Complainant has about 46,000 employees. In 2013, net sales of Complainant's group of companies amounted to EUR 14.1 billion.

Complainant owns trademark registrations for BOEHRINGER in several countries, including International trademark BOEHRINGER, Reg. No. 799761, Reg. Date December 2, 2002.

Also, Complainant owns several domain names containing the BOEHRINGER mark, such as <boehringer.com>, registered on January 12, 2000, <boehringer.info>, registered on July 31, 2001, <boehringer.org>, registered on September 27, 2006, <boehringer.mobi>, registered on October 27, 2009, and <boehringer.biz>, registered on December 13, 2009.

According to the WhoIs database of IRNIC, the disputed domain name was created on September 17, 2015.

On January 6, 2015, the Panel's browser showed that the website at the disputed domain name is inactive ("Firefox can't find the server at www.boehringer.ir.").

5. Parties' Contentions

A. Complainant

In its Complaint, Complainant contends as follows:

The disputed domain name <boehringer.ir> is identical to Complainant's trademark BOEHRINGER because it includes the trademark in its entirety, without any adjunction of letter or word. The addition of the country code Top-Level Domain ("ccTLD") ".ir" is not sufficient to escape the finding that the disputed domain name is identical to this trademark and does not change the overall impression of the designation as being connected to a trademark of Complainant.

Respondent has no rights or legitimate interests in respect of the disputed domain name and he is not related in any way with Complainant. Complainant does not carry out any activity for, nor has any business with Respondent. Neither license nor authorization has been granted to Respondent to make any use of the trademark BOEHRINGER, or to apply for registration of the disputed domain name.

According to the WhoIs information, the disputed domain name has been registered in the name of Respondent. Previous 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. Thus, Respondent is not known under "Boehringer".

Furthermore, Respondent was involved in another similar case with Complainant and its trademark BOEHRINGER. Thus, Respondent could not pretend not to have been aware of Complainant before registration of the disputed domain name. See Boehringer Ingelheim Pharma GmbH & Co. KG v. Mojtaba Alimardani, WIPO Case No. DIR2015-0003, relating to <boehringer-ingelheim.ir>.

Complainant contends that Respondent has registered the disputed domain name only in order to prevent Complainant to register this domain name and to deprive it to exercise its intellectual property rights on the trademark BOEHRINGER.

Indeed, the website at the disputed domain name is inactive since its registration. This is considered as passive retention. See Cobb International Limited v. Cobb Australia & New Zealand (Pty) Ltd., WIPO Case No. DAU2013-0005.

The disputed domain name was registered or is being used in bad faith. The disputed domain name is identical to Complainant's trademark BOEHRINGER. Indeed, the disputed domain name includes the trademark in its entirety, without any adjunction of letter or word. Given the distinctiveness and reputation of the trademark BOEHRINGER, Complainant can state that Respondent has registered the disputed domain name with full knowledge of Complainant's trademark and uses it for the purpose of misleading and diverting Internet traffic. Indeed, Respondent is also known in another case involving Complainant and its trademark BOEHRINGER. See Boehringer Ingelheim Pharma GmbH & Co. KG v. Mojtaba Alimardani, supra.

Furthermore, the website at the disputed domain name is inactive since its registration. As prior UDRP¹ panels have held, the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case No. D2000-0400.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has shown to the satisfaction of the Panel that it owns trademark rights in the BOEHRINGER mark. See Section 4 above.

The Panel notes that the disputed domain name consists of the BOEHRINGER mark plus the ccTLD "ir". It is well established that the mere addition in a domain name of the Top-Level Domain to a mark does not avoid a finding that the domain name is identical to the mark. Accordingly, the Panel finds that the disputed domain name is identical to Complainant's mark BOEHRINGER. The first element of the Policy is thus met.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name, that Respondent is not related in any way with Complainant, and that Complainant does not carry out any activity for, nor has any business with Respondent. Complainant has not granted Respondent any license or authorization to make any use of the trademark BOEHRINGER, or to apply for registration of the disputed domain name. The Panel notes that there is nothing in the case file contesting these contentions.

Further, Complainant observes that the disputed domain name has been registered in the name of Respondent, and that therefore Respondent is not known by the name "Boehringer". In the light of the relevant WhoIs data provided by IRNIC in its reply to the Center's verification request, the Panel agrees with Complainant that Policy, paragraph 4(c)(ii) clearly does not apply.

Lastly, Complainant states that the website at the disputed domain name is inactive since its registration. The Panel confirms that there is no evidence to the contrary; in fact, the Panel tried to connect to this website, and its browser returned an error indicating that the server is unavailable. See Section 4 above. Since there is no evidence of any active use of the disputed domain name (or of any demonstrable preparations therefor), the Panel believes that Respondent neither is using the domain name in connection with a bona fide offering pursuant to Policy, paragraph 4(c)(i), nor is making a fair or noncommercial use under Policy, paragraph 4(c)(iii).

Taken together with the available evidence, Complainant's contentions are apt to make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. It is well established that a complainant must first establish a prima facie case that a respondent lacks any rights or legitimate interests in the domain name, and once this is done, the burden of production shifts to the respondent to show that it has at least a right or legitimate interest in the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1 ("[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]").

In absence of any evidence in favor of Respondent and in view of his default, the Panel concludes that

Respondent lacks any rights or legitimate interests in the disputed domain name.

C. Registered or Used in Bad Faith

Complainant also points to another case under the irDRP involving Complainant, its trademark BOEHRINGER and Respondent, and states that Respondent cannot pretend not to have been aware of Complainant at the registration of the disputed domain name. See Boehringer Ingelheim Pharma GmbH & Co. KG v. Mojtaba Alimardani, supra. Complainant further contends that Respondent has registered the disputed domain name only in order to prevent Complainant to register this domain name and to deprive it to exercise its intellectual property rights on the trademark BOEHRINGER.

The Panel notes that Complainant's BOEHRINGER mark predates the registration of the disputed domain name by many years. Also, the Panel agrees with Complainant that given the distinctiveness and reputation of the trademark BOEHRINGER Respondent must have known of Complainant, its trademark and products when the disputed domain name was registered. In particular the Panel notes that Complainant is present worldwide with 140 affiliated companies, including an affiliate in the Islamic Republic of Iran, the country where Respondent, according to the current WhoIs data, has his residence. The Panel also notes that Respondent was the respondent in a recent irDRP case against Complainant based on the trademark BOEHRINGER, and where the panel ordered the transfer of the disputed domain name to the Complainant. See Boehringer Ingelheim Pharma GmbH & Co. KG v. Mojtaba Alimardani, supra.

For these reasons the Panel concludes that Respondent most likely also targeted the BOEHRINGER mark at the time of registering the disputed domain name, which in the circumstances of this case indicates that Respondent registered the disputed domain name in bad faith. Thus, the third requisite of the irDRP is met.

Additionally, the Panel believes that Complainant also made out its case that Respondent is using the disputed domain name in bad faith. In fact Complainant contends that the website at the disputed domain name is inactive since its registration.² The Panel coincides with Complainant that the doctrine of the above cited Telstra case is applicable ("[T]he point is that paragraph 4(b) recognizes that inaction (e.g., passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith."). In the Panel's opinion the following circumstances are relevant to conclude that total inactivity amounts to bad faith use:

a) Complainant's mark is famous in relation to pharmaceutical products;

b) Complainant has an affiliate in the Islamic Republic of Iran, Respondent's country of residence;

c) the website at the disputed domain name is inactive since the date of registration;

d) there appears to exist no plausible explanation for the choice of a domain name identical to such famous mark other than the registrant is, more likely than not, trying to extract a profit from Complainant's fame and goodwill;

e) Respondent did not respond to the Complaint;

f) recently, a previous irDRP panel found Respondent to have registered andtobe using the domain name <boehringer-ingelheim.ir> (containing Complainant's mark) in bad faith. See Boehringer Ingelheim Pharma GmbH & Co. KG v. Mojtaba Alimardani, supra.

Accordingly, the Panel finds that the disputed domain name is also being used 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 <boehringer.ir> be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Date: January 6, 2016

¹ While the Complaint is brought under the Policy, and not the Uniform Domain Name Dispute Resolution Policy ("UDRP), given the similarities between the two, the Panel considers UDRP precedent relevant to the current proceedings, and will refer to it throughout.

² The inactivity of the website at the disputed domain name was confirmed by the Panel. See section 4 in fine.