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On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No.	101199
Time of Filing	2016-03-31 09:47:16
Disputed domain name	BOEHRINGER.XYZ

Case Administrator
Name	Lada Válková

Complainant
Organization	BOEHRINGER INGELHEIM PHARMA GMBH & CO.KG
Authorized Representative
Organization	NAMESHIELD S.A.S.

Respondent
Name	Cameron David Jackson

Other Legal Proceedings

Identification of rights
The trademark portfolio of the Complainant includes e.g. the EU word trademark "BOEHRINGER" (No. 002932853) for the nice classes 1, 3, 5, 10, 16, 30, 31, 41, 42, 44 registered on 2 March 2005 (i.e. the trademark of the Complainant predates the registration of the disputed domain name).

Factual Background
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 has become a global research-driven pharmaceutical enterprise and has today about 140 affiliated companies world-wide with roughly 46,000 employees. The two main business areas of Boehringer are: Human Pharmaceuticals and Animal Health. In 2013 alone, net sales of the Boehringer group amounted to about EUR 14.1 billion. The Complainant owns a portfolio of brands including the word “BOEHRINGER” in several countries. The Respondent registered the disputed domain name on 1 March 2016.

Factual Background

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 has become a global research-driven pharmaceutical enterprise and has today about 140 affiliated companies world-wide with roughly 46,000 employees. The two main business areas of Boehringer are: Human Pharmaceuticals and Animal Health. In 2013 alone, net sales of the Boehringer group amounted to about EUR 14.1 billion. The Complainant owns a portfolio of brands including the word “BOEHRINGER” in several countries.

The Respondent registered the disputed domain name on 1 March 2016.


NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED. As far as the Complainant's contentions are concerned, the Complainant states that Domain name in question is identical with trademarks it owns. Furthermore, the Complainant claims the Respondent does not have any rights or legitimate interest in the domain name and that the Respondent is only using the domain for parking and passive holding.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

As far as the Complainant's contentions are concerned, the Complainant states that Domain name in question is identical with trademarks it owns. Furthermore, the Complainant claims the Respondent does not have any rights or legitimate interest in the domain name and that the Respondent is only using the domain for parking and passive holding.

Rights
The Complainant has, to the satisfaction of the Panel, shown the Domain Name is identical to the trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy). The disputed domain name is comprised of word “BOEHRINGER” (i.e. the disputed domain name fully incorporates the trademark of the Complainant) and Top-Level Domain name suffix. Turning to the Top-Level Domain name suffix, traditionally under the UDRP this has been disregarded when comparing disputed domain name and trade mark (except where the suffix forms part of the trade mark) (see WIPO Case D2014-1667 Philip Morris USA Inc. v. Sakaria Mohamoud Mussafah; WIPO Case No. D2014-1675 Petroleo Brasileiro S.A - Petrobras v. Monica Mitchell). Therefore, the disputed domain name is identical to the Complainant's trademark “BOEHRINGER”.

Rights

The Complainant has, to the satisfaction of the Panel, shown the Domain Name is identical to the trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy).

The disputed domain name is comprised of word “BOEHRINGER” (i.e. the disputed domain name fully incorporates the trademark of the Complainant) and Top-Level Domain name suffix. Turning to the Top-Level Domain name suffix, traditionally under the UDRP this has been disregarded when comparing disputed domain name and trade mark (except where the suffix forms part of the trade mark) (see WIPO Case D2014-1667 Philip Morris USA Inc. v. Sakaria Mohamoud Mussafah; WIPO Case No. D2014-1675 Petroleo Brasileiro S.A - Petrobras v. Monica Mitchell). Therefore, the disputed domain name is identical to the Complainant's trademark “BOEHRINGER”.

No rights or legitimate interests
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Domain Name (within the meaning of paragraph 4(a)(ii)of the Policy). The Panel finds that the Complainant's mark is distinctive. The Complainant’s assertions that the Respondent is not commonly known by the disputed domain name and is not affiliated with nor authorised by the Complainant are sufficient to constitute a prima facie showing of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name. The Respondent has made no attempt to do so. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

No rights or legitimate interests

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Domain Name (within the meaning of paragraph 4(a)(ii)of the Policy).

The Panel finds that the Complainant's mark is distinctive. The Complainant’s assertions that the Respondent is not commonly known by the disputed domain name and is not affiliated with nor authorised by the Complainant are sufficient to constitute a prima facie showing of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name. The Respondent has made no attempt to do so. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

Bad faith
The Complainant has, to the satisfaction of the Panel, shown the Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy). The disputed domain name displays a Registrar parking page (“passive holding”) since its registration. Given the notoriety of the Complainant's trademark, it seems impossible for the Respondent to use the domain name in good faith (see similar considerations on bad faith and passive holding in WIPO Case No. D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows; WIPO Case No. D2008-0028 Action S.A. v. Robert Gozdowski; WIPO Case No. D2000-0400CBS Broadcasting, Inc. v. Dennis Toeppen).

Bad faith

The Complainant has, to the satisfaction of the Panel, shown the Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).

The disputed domain name displays a Registrar parking page (“passive holding”) since its registration. Given the notoriety of the Complainant's trademark, it seems impossible for the Respondent to use the domain name in good faith (see similar considerations on bad faith and passive holding in WIPO Case No. D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows; WIPO Case No. D2008-0028 Action S.A. v. Robert Gozdowski; WIPO Case No. D2000-0400CBS Broadcasting, Inc. v. Dennis Toeppen).

Procedural Factors
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Principal Reasons for the Decision
The Respondent which did not react to the complaint apparently registered and uses the disputed domain name which is identical with the trademark of the Complainant without legitimate rights or interests in bad faith.

Decision
For all the following reasons, the Complaint is	Accepted
and the disputed domain name(s) are to be
BOEHRINGER.XYZ	Transferred to the Complainant

Panellists
Name	Thomas Hoeren
Date of Panel Decision	2016-04-25

Publication of the Decision
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Dispute 101199

Panel Decision