The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are 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).
First, the Complainant claims rights in the BOEHRINGER INGELHEIM mark through its trademark registrations. By virtue of its trademark registrations, Complainant has proved that it has rights in the mark under paragraph 4(a) of the Policy. See Avast Software s. r. o. v Milen Radumilo, 102384, (CAC 2019-03-12).
Second, the Complainant claims that the prominent part of the disputed domain names are confusingly similar to its trademark registrations and domain name. In particular, the Complainant points out that the disputed domain names reproduce its trademark BOEHRINGER-INGELHEIM with the deletion of the hyphen ("-") and addition of the letters "E" and "ER". The comparison between Complainant's official domain name and the disputed domain names are as below:
- Complainant's official domain name: <boehringeringelheimpetrebates.com>; and
- disputed domain names: <boehringeringEelheimpetrebates.com>, <boehringeringERelheimpetrebates.com>.
Despite there is an additional term "PET REBATES" in the disputed domain names, it is not sufficient to differentiate themselves from the Complainant's Trademarks and domain name. See Boehringer Ingelheim Pharma GmbH & Co.KG v. Fundacion Comercio Electronico, 103455 (CAC 2021-01-07) (“The Panel is of the opinion that in a situation where the Complainant’s trademark is entirely (or nearly entirely with the exception of a misspelling) included in the litigious Domain name, the adjunction of generic terms does not generally change the assessment as far as the first condition is concerned.”).
The Panel accepts that the changes of the characters do not alter the overall impression of the designation as being connected to the Complainant and its trademarks, and the “.com” generic top-level domain (“gTLD”) is irrelevant when establishing whether or not a mark is identical or confusingly similar for the purposes of paragraph 4(a)(i) of the Policy. The length of the disputed domain names further confuses Internet users to spot the difference between Complainant's official domain name and the disputed domain names. See Belron International Limited v Andrea Paul, 103381, (CAC 2020-12-09) and LESAFFRE ET COMPAGNIE v Tims Dozman, 102430, (CAC 2019-04-02).
For the foregoing reasons, the Panel finds the Complainant has satisfied paragraph 4(a)(i) of the Policy.
|