RIGHTS
Since the domain name and the Complainant’s trademarks are not identical, the key element investigated and considered by the Panel is whether the disputed domain names consisting of a term “BOEHRINGERIGNGELHEIMPETREBATES.COM” and “BOEHRINGERINGELHEIMPETEREBATES.COM” are confusingly similar to the Complainant’s trademarks.
The disputed domain names and the Complainant’s trademarks are very similar since they differ in a mere addition of misspelled version of a generic term “pet rebates" (i.e. addition of "PETREREBATES") to Complainant' trademark or adding letter "G” to into the word INGELHEIM (i.e. forming IGNGELHEIM) respectively.
This, however, cannot prevent the association in the eyes of internet consumers between the disputed domain names and the Complainant’s trademarks and thus the likelihood of confusion still exists. Thus, addition of letter “G” or a misspelled non-distinctive term cannot sufficiently distinguish the disputed domain names from the Complainant’s trademarks.
For sake of completeness, the Panel asserts that the top-level suffix in the domain name (i.e. the “.com”) must be disregarded under the identity and confusing similarity tests, as it is a necessary technical requirement of registration.
Therefore, the Panel has decided that there is identity in this case, it also concludes that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
NO RIGHTS OR LEGITIMATE INTERESTS
The Complainant’s assertions that the Respondent is not commonly known by either 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.
In addition, given the fact that (i) the disputed domain names have not been genuinely used and (ii) in the absence of the Respondent's response, the Panel concludes that there is no indication that the domain names were intended to be used in connection with a bona fide offering of goods or services as required by UDRP.
Consequently, the evidentiary burden shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that names. However, the Respondent failed to provide any information and evidence that it has relevant rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a) (ii) of Policy).
BAD FAITH
The Respondent has not used the disputed domain names in any manner, however, the Panel concludes (as it has been ruled in many similar cases, as for example Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, <telstra.org>, Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, <jupiterscasino.com>, Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131, <ladbrokespoker.com>) that the apparent lack of so-called genuine active use (e.g. to resolve to a website) of the domain name(s) without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith.
Examples of what may be cumulative circumstances found to be indicative of bad faith include cases in which (i) the Complainant has a well-known trademark and (ii) there is no genuine use (e.g. a mere "parking" or linking to a parking site) of the disputed domain name(s) by the Respondent (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).
In addition, it is clear that by adding a misspelled generic term "PETEREBATES" or “G” into word element INGELHEIM while all other characters of both disputed domain names are identical to the Complainant trademarks, it was Respondent’s intention to target Internet users who incorrectly type a website address into their web browser, an illicit activity recognised as „typosquatting“. There are several different reasons for typosquatting, as for example:
- to try to sell the disputed domain names back to the Complainant;
- to monetize the disputed domain names through advertising revenues from direct navigation misspellings of the intended domain;
- to redirect the typo-traffic to Complainant’s competitor;
- as a phishing scheme to mimic the Complainant’s site, while intercepting passwords or other information which the visitor enters unsuspectingly;
- to install drive-by malware or revenue generating adware onto the visitors' devices;
- to harvest misaddressed e-mail messages mistakenly sent to the typo domain.
All of the activities above are considered as malicious activities.
This is even more likely because the disputed domain names create a confusion with domain name <boehringeringelheimpetrebates.com> used by the Complainant to offer rebates on pet health products.
For the reasons described above, since (i) there is only a remote chance that the Respondent has registered the disputed domain names just by a chance and without having a knowledge about the existence of the Complainant’s rights and business (ii) there is no real use of the dispute domain names and (iii) the Respondent is engaged in typosquatting, the Panel contends, on the balance of probabilities, that the disputed domain names have been registered and are being used by the Respondent in bad faith.
Thus, the Panel has taken a view that the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
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