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. 102838
Time of Filing 2019-12-30 14:12:16
Disputed domain name BOEHRINGERTHAI.COM
Case Administrator
Name Šárka Glasslová
Complainant
Organization Boehringer Ingelheim Pharma GmbH & Co.KG
Authorized Representative
Organization Nameshield (Enora Millocheau)
Respondent
Organization Boehringer Ingelheim Thailand
Other Legal Proceedings
The Panel is not aware of other pending or decided legal proceedings, which relate to the disputed domain name.


Identification of rights
The Complainant bases its Complaint on the International verbal trademark registration “BOEHRINGER”, no. 799761, registered since 02.12.2002, protected for goods and services in classes 01, 03, 05, 10, 16, 30, 31, 35, 41, 42 and 44, designating several countries for protection.
Factual Background
FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant is a family-owned pharmaceutical group of companies with roots going back to 1885, when it was founded by Albert Boehringer (1861-1939) in Ingelheim am Rhein. Ever since, Boehringer has become a global research-driven pharmaceutical enterprise and has today about roughly 50,000 employees. The three business areas of Boehringer are human pharmaceuticals, animal health and biopharmaceuticals. In 2018, net sales of the Boehringer group amounted to about EUR 17.5 billion.

The Complainant owns a portfolio of trademarks including the International verbal trademark registration “BOEHRINGER”, no. 799761, registered since 02.12.2002.

Furthermore, the Complainant is the owner of a numerous portfolio of domain names including the domain name <boehringer.com> registered since 12.01.2000.

The disputed domain name <boehringerthai.com> has been registered on 17.12.2019 and is currently inactive.

Indeed, 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.

Please see for instance Forum Case No. FA 1781783, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston / Elite Media Group <bobsfromsketchers.com> (“Here, the WHOIS information of record identifies Respondent as “Chad Moston / Elite Media Group.” The Panel therefore finds under Policy paragraph 4(c)(ii) that Respondent is not commonly known by the disputed domain name under Policy paragraph 4(c)(ii).”)

Please see for instance:
- CAC Case No. 101761, Boehringer Ingelheim Pharma GmbH & Co.KG v. Private Registry Authority (“In the view of the Panel, the Respondent must have been aware of the famous trademarks [BOEHRINGER] of the Complainant when registering the disputed domain name.”);
- CAC Case No. 101199, BOEHRINGER INGELHEIM PHARMA GMBH & CO.KG v. Cameron David Jackson <boehringer.xyz> (“Given the notoriety of the Complainant's trademark [BOEHRINGER], it seems impossible for the Respondent to use the domain name in good faith”).

Please see for instance:
- WIPO Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows;
- WIPO Case No. D2000-0400, CBS Broadcasting, Inc. v. Dennis Toeppen.
 

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

The Complainant's contentions are the following:

The disputed domain name <boehringerthai.com> is confusingly similar to the Complainant's earlier trademark BOEHRINGER.

The Complainant sustains that the addition of the generic term “THAI” is not sufficient to escape the finding that the domain name is confusingly similar to the trademark BOEHRINGER and that, according to other UDRP panels, “a domain name that wholly incorporates a Complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP” (WIPO Case No. D2003-0888, Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin).

Furthermore, the Complainant contends that the addition of the generic Top-Level Domain suffix “.COM” does not change the overall impression of the designation as being connected to the trademark BOEHRINGER. The Complainant sustains that this does not prevent the likelihood of confusion between the disputed domain name and the Complainant and its trademark.

The Complainant further contends that the Respondent lacks rights or legitimate interests in the disputed domain name for a number of reasons.

First, the Complainant asserts that the Respondent is not affiliated with nor authorized by the Complainant in any way.

The Complainant does not carry out any activity for, nor has any business with the Respondent. The Respondent is not a Complainant’s licensee, nor has ever been authorised to make use of the Complainant’s trademark or to apply for the registration of the disputed domain name.

Lastly, the Complainant points out that the disputed domain name is currently inactive and that the Respondent did not make any use of disputed domain name since its registration, and that it confirms that Respondent has no demonstrable plan to use the disputed domain name, which is further evidence of the Respondent’s lack of rights or legitimate interests.

The Complainant further argues that the disputed domain name has been registered, and is being used in bad faith.

The Complainant’s maintains that its BOEHRINGER trademark is well-known trademark and therefore, that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademark.

Furthermore, the disputed domain name is currently inactive. The Complainant sustains that the Respondent has not demonstrated any activity in respect of the disputed domain name, and it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

The Complainant also asserts that the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use.
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
I. Confusing Similarity

The Panel agrees that the addition of the generic term “THAI” is insufficient to avoid confusing similarity and that, according to other UDRP panels, “a domain name that wholly incorporates a Complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP” (WIPO Case No. D2003-0888, Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin).

Moreover, the extension “.com” is not to be taken into consideration when examining the similarity between the Complainant’s trademark and the disputed domain name (WIPO Case No. D2005-0016, Accor v. Noldc Inc.). The mere adjunction of a gTLD such as “.com” is irrelevant as it is well established that the generic Top Level Domain is insufficient to avoid a finding of confusing similarity (WIPO Case No. 2013-0820, L’Oréal v Tina Smith, WIPO Case No. D2008-0820 Titoni AG v Runxin Wang and WIPO Case No. D2009-0877, Alstom v. Itete Peru S.A.).

Therefore, the Panel is satisfied that the first condition under the Policy is met.

II. Lack of Respondent's rights or legitimate interests


The 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 proof 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 UDRP.

Based on the available evidence, the Respondent is not a licensee of, nor has any kind of relationship with, the Complainant. The Complainant has never authorised the Respondent to make use of its trademark, nor of a confusingly similar trademark in the disputed domain name.

Finally, the disputed domain name does not lead to any active webpage. Such use does not amount to a bona fide offering of goods or services, or to a legitimate noncommercial or fair use of the disputed domain name.

The Panel notes that the Respondent had an opportunity to comment on the Complaint’s allegations by filing a Response, which the Respondent failed to do.

Thus, the Panel is satisfied that the Complainant has at least established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Accordingly, the Panel takes the view that also the second requirement under the Policy is met.


III. Bad Faith


The Complainant's trademark is a well-known one as recognized also by past panels. Therefore, the Panel concludes that at the time of registration of the disputed domain name, the Respondent was well aware of the Complainant’s trademark and has intentionally registered one which incorporates it in its entirety.

The disputed domain name is inactive. Under certain circumstances, the passive holding of a domain name cannot prevent a finding of bad faith. Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put (See paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0)).

In the present case, the following factors should be considered:

(i) the Complainant's trademark is a well-known one, being also highly distinctive;

(ii) the Respondent failed to submit any response and has not provided any evidence of actual or contemplated good faith use of the disputed domain name;

(iii) any good faith use of the disputed domain name would be implausible, as the trademark BOEHRINGER is univocally linked to the Complainant and the Respondent has no business relationship with the Complainant, nor was ever authorised to use a domain name confusingly similar to the Complainant's trademark.

In light of the foregoing, the Panel concludes that the Respondent has registered and has been using the disputed domain name in bad faith. Thus, also the third and last condition under the Policy is satisfied.
Decision
For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) is (are) to be
BOEHRINGERTHAI.COM Transferred to the Complainant
Panellists
Name Delia-Mihaela Belciu
Date of Panel Decision 2020-02-25
Publication of the Decision
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