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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.	102854
Time of Filing	2020-01-13 12:39:50
Disputed domain name	BOEHRINGERRINGELHEIMPETREBATES.COM

Case Administrator
Name	Šárka Glasslová

Complainant
Organization	Boehringer Ingelheim Pharma GmbH & Co.KG
Authorized Representative
Organization	Nameshield (Enora Millocheau)

Respondent
Organization	Fundacion Comercio Electronico

Other Legal Proceedings
The panel is not aware of any other legal proceedings related to the disputed domain name.

Identification of rights
The Complainant owns a portfolio of trademarks including the wording “BOEHRINGER INGELHEIM” in several countries, such as the international word trademark BOEHRINGER-INGELHEIM n°221544, registered since July 2nd, 1959.

Factual Background
FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT: It is well-established that “a domain name that wholly incorporates a Complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP”. Please see WIPO Case No. D2003-0888, Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin. Past Panels have confirmed the notoriety of the trademark BOEHRINGER-INGELHEIM in the following cases: - WIPO Case No. D2019-0208, Boehringer Ingelheim Pharma GmbH & Co. KG v. Marius Graur (“Because of the very distinctive nature of the Complainant’s trademark [BOEHRINGER-INGELHEIM] and its widespread and longstanding use and reputation in the relevant field, it is inconceivable that the Respondent registered the disputed domain name without being aware of the Complainant’s legal rights.”); - CAC Case No. 102274, BOEHRINGER INGELHEIM PHARMA GMBH & CO.KG v. Karen Liles (“In the absence of a response from Karen Liles and given the reputation of the Complainant and its trademark (see, among others, WIPO Case No. D2016-0021, Boehringer Ingelheim Pharma GmbH & Co.KG v. Kate Middleton), the Panel infers that the Respondent had the Complainant's trademarks BOEHRINGER-INGELHEIM in mind when registering the disputed domain name.”).

Factual Background

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

It is well-established that “a domain name that wholly incorporates a Complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP”. Please see WIPO Case No. D2003-0888, Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin.

Past Panels have confirmed the notoriety of the trademark BOEHRINGER-INGELHEIM in the following cases:
- WIPO Case No. D2019-0208, Boehringer Ingelheim Pharma GmbH & Co. KG v. Marius Graur (“Because of the very distinctive nature of the Complainant’s trademark [BOEHRINGER-INGELHEIM] and its widespread and longstanding use and reputation in the relevant field, it is inconceivable that the Respondent registered the disputed domain name without being aware of the Complainant’s legal rights.”);

- CAC Case No. 102274, BOEHRINGER INGELHEIM PHARMA GMBH & CO.KG v. Karen Liles (“In the absence of a response from Karen Liles and given the reputation of the Complainant and its trademark (see, among others, WIPO Case No. D2016-0021, Boehringer Ingelheim Pharma GmbH & Co.KG v. Kate Middleton), the Panel infers that the Respondent had the Complainant's trademarks BOEHRINGER-INGELHEIM in mind when registering the disputed domain name.”).


NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

Rights
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

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 disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

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

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 domain name is confusingly similar to the protected trademark as a result of : 1. Misspelling/Typosquatting (boehringerringelheimpetrebates.com) with a double r at the end of Boehringer and before Ingelheim; 2. Mark combined with generic term. PET REBATES is a generic term also used by Complainant in its own domainname www.boehringeringelheimpetrebates.com to inform visitors of the website about offers for Pet medicines. On top it also worsens likelihood of confusion, because the addition of the terms “PET REBATES” directly refers to the Complainant’s website www.boehringeringelheimpetrebates.com/ Bad faith registration and use The Panel has reasons to presume that the Respondent has allowed the disputed domain name to be used with the intent to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant's trademark as to the source, affiliation, or endorsement of the Respondent's website to which the disputed domain name resolves. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.

Principal Reasons for the Decision

The domain name is confusingly similar to the protected trademark as a result of :

1. Misspelling/Typosquatting (boehringerringelheimpetrebates.com) with a double r at the end of Boehringer and before Ingelheim;
2. Mark combined with generic term. PET REBATES is a generic term also used by Complainant in its own domainname www.boehringeringelheimpetrebates.com to inform visitors of the website about offers for Pet medicines.

On top it also worsens likelihood of confusion, because the addition of the terms “PET REBATES” directly refers to the Complainant’s website www.boehringeringelheimpetrebates.com/

Bad faith registration and use

The Panel has reasons to presume that the Respondent has allowed the disputed domain name to be used with the intent to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant's trademark as to the source, affiliation, or endorsement of the Respondent's website to which the disputed domain name resolves. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.

Decision
For all the reasons stated above, the Complaint is	Accepted
and the disputed domain name(s) is (are) to be
BOEHRINGERRINGELHEIMPETREBATES.COM	Transferred to Boehringer Ingelheim Pharma GmbH & Co.KG

Panellists
Name	Mr. E.J.V.T. van den Broek
Date of Panel Decision	2020-02-12

Publication of the Decision
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Dispute 102854

Panel Decision