With respect to paragraph 4(a)(i): Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the BOEHRINGER INGELHEIM trademark.
As to whether the disputed domain name is identical or confusingly similar to the BOEHRINGER INGELHEIM trademark, the relevant comparison to be made is with the second-level portion of the disputed domain name only (i.e., “boehrnger-ingelheim”) because “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
Here, the disputed domain name contains the BOEHRINGER INGELHEIM trademark (and only the BOEHRINGER INGELHEIM trademark) in its entirety, with two minor differences: the deletion of the letter "i" and the addition of a hyphen, neither of which is sufficient to distinguish the disputed domain name from the trademark.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
With respect to paragraph 4(a)(ii): WIPO Overview 3.0, section 2.1, states, “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.
With respect to paragraph 4(a)(ii): Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Here, the Panel agrees with Complainant that, for the reasons set forth in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, "the incorporation of a famous mark into a domain name, coupled with a website which is not used, may be evidence of bad faith registration and use."
Accordingly, the Panel finds that Complainant has proven the third element of the Policy.
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