The UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY of the Internet Corporation for Assigned Names and Numbers (ICANN) (the “Policy”) provides that a complainant must prove each of the following to obtain transfer or cancellation of a domain name:
1. that respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
2. that respondent has no rights or legitimate interests in respect of the domain name; and
3. the domain name has been registered and is being used in bad faith.
1) The disputed domain name is confusingly similar to a trademark in which the Complainant has rights (Para.4(a)(i) of the Policy).
The Complainant has provided evidence and proved to be the owner of several "BOEHRINGER-INGELHEIM” trademarks in various jurisdictions. Essentially, the Respondent has appropriated the trademark "BOEHRINGER-INGELHEIM” with the mere addition of the letter “E” to lead consumers to believe that it is affiliated with the Complainant. The disputed domain name thus incorporates almost the entirety of the well-known BOEHRINGER-INGELHEIM trademark as its distinctive element.
The Panel finds that the Respondent’s registered Domain Name is confusingly similar to the Complainant’s trademark "BOEHRINGER-INGELHEIM” since the mere addition of the letter “E” does not eliminate any confusing similarity. This is especially true where, as here, the trademark is “the dominant portion of the domain name,” LEGO Juris A/S v. Domain Tech Enterprises, WIPO Case No. D2011-2286, or where the trademark in the domain name represents “the most prominent part of the disputed domain name[] which will attract consumers’ attention.” Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768.
Also, it is well established that typosquatting can constitute a finding that the domain name is confusingly similar (Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314, DaimlerChrysler Corporation v. Worshipping, Chrisler, and Chr, aka Dream Media and aka Peter Conover, WIPO Case No. D2000-1272 and Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201). The Panel considers this to be a clear case of typosquatting.
The Panel agrees with the Complainant that the addition of the terms “EQUINE REBATES” worsens the likelihood of confusion, as it directly refers to the Complainant’s website https://www.boehringeringelheimequinerebates.com/
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark "BOEHRINGER-INGELHEIM”.
2) The Respondent lacks rights or legitimate interests in the disputed domain name (Para. 4(a)(ii) of the Policy).
Under the Policy, 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 Policy (see WIPO Overview 2.0, paragraph 2.1).
According to the Complainant, the Respondent has no rights to the disputed domain name, and any use of the trademark "BOEHRINGER-INGELHEIM” has to be authorized by the Complainant. The Respondent has not been authorized or licensed by the above-mentioned pharmaceutical group to use the disputed domain name.
In a present case, the Respondent failed to file a Response in which it could have provided evidence in support of its rights or legitimate interests. Therefore, all these circumstances are sufficient to establish a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name.
The Panel thus takes the view that the Respondent lacks rights or legitimate interests in the disputed domain name.
3) The disputed domain name has been registered and is being used in bad faith (Paragraph 4(a)(iii) of the Policy).
The Panel agrees with the Complainant that its trademark "BOEHRINGER-INGELHEIM” is distinctive and well known. The fact that the Respondent has registered a domain name that is confusingly similar to the Complainant's trademark indicates and in the absence of any evidence contrary (or any administratively compliant response at all) being put forward by the Respondent, that the Respondent had knowledge of the Complainant’s trademark and that they had such knowledge before the registration and use of the disputed domain name. This finding also supports the fact that the addition of the terms “EQUINE REBATES” worsens the likelihood of confusion, as it directly refers to the Complainant’s website https://www.boehringeringelheimequinerebates.com/ used by the Complainant to offer rebates on equine health products.
The disputed domain name resolves to a parking page with commercial links. The Policy defines that one of the actions which constitute bad faith pursuant to paragraph 4(b)(iv) of the Policy is the use of the domain name to intentionally attempt to attract, for commercial gain, Internet users to respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's web site or location or of a product or service on respondent's web site or location.
The Panel believes it is likely that this was at least one of the reasons behind the Respondent’s registration and use of the disputed domain name.
Accordingly, the Panel finds that the Respondent has engaged in typosquatting to cause confusion with the Complainant’s trademark for their own commercial gain, and therefore the disputed domain name was registered and is being used in bad faith within the meaning of Paragraph 4(a)(iii) of the Policy.
For all reasons stated above, the Panel is satisfied that the Complainant has proven the third element of the Policy that is that the Respondent's registration and use of the disputed domain name in bad faith.
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