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. 102924
Time of Filing 2020-02-20 09:15:05
Disputed domain name BOEHRINGERINGELHEINPETREBATES.COM
Case Administrator
Name Iveta Špiclová
Complainant
Organization Boehringer Ingelheim Pharma GmbH & Co.KG
Authorized Representative
Organization Nameshield (Enora Millocheau)
Respondent
Organization Anonymize, Inc.
Other Legal Proceedings
The Panel is not aware of any other legal proceedings that are pending or decided and that relate to the Disputed Domain Name.
Identification of rights
Complainant states, and provides evidence to support, that it is the owner of “a large portfolio of trademarks including the terms ‘BOEHRINGER’ and ‘INGELHEIM’ in several countries, such as the international trademarks BOEHRINGER-INGELHEIM n°221544 registered since July 2, 1959 and BOEHRINGER INGELHEIM n° 568844 registered since March 22, 1991.” These marks are referred to hereafter as the “BOEHRINGER-INGELHEIM Trademark.”
Factual Background
Complainant states that it “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, [Complainant] has become a global research-driven pharmaceutical enterprise and has today about roughly 50,000 employees. The three business areas of [Complainant] are human pharmaceuticals, animal health and biopharmaceuticals. In 2018, net sales of the Boehringer group amounted to about EUR 17.5 billion.”

The Disputed Domain Name was created on February 16, 2020, and is being used in connection with what Complainant describes as “a parking page with commercial links.”

Paragraph 4(a)(i): Complainant states, inter alia, that the Disputed Domain Name is confusingly similar to the BOEHRINGER-INGELHEIM Trademark because it contains the BOEHRINGER-INGELHEIM and simply substitutes the letter “m” for the letter “n” and adds the words “pet rebates,” which “directly refers to the Complainant’s website www.boehringeringelheimpetrebates.com/.

Paragraph 4(a)(ii): Complainant states that Respondent has no rights or legitimate interests in the Disputed Domain Name because, inter alia, “Respondent is not identified in the Whois database as the disputed domain name”, “Respondent is not affiliated with nor authorized by the Complainant in any way”, and “the disputed domain name redirects to a parking page with commercial links.”

Paragraph 4(a)(iii): Complainant states that the Disputed Domain Name was registered and is being used in bad faith because, inter alia, the BOEHRINGER-INGELHEIM Trademark “is a distinctive and well-known trademark”, “the Respondent choose to register the domain name <boehringeringelheinpetrebates.com> to create a confusion with the domain name <boehringeringelheimpetrebates.com>, used by the Complainant to offer rebates on pet health products”, and “the disputed domain name redirects to a parking page with commercial links.”
 
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 Policy were met and there is no other reason why it would be inappropriate to provide a decision.
Principal Reasons for the Decision
Identical or Confusingly Similar: Paragraph 4(a)(i):

Based upon the trademark registration cited by Complainant, it is apparent that Complainant has rights in and to the BOEHRINGER-INGELHEIM Trademark.

As to whether the Disputed Domain Name is identical or confusingly similar to the BOEHRINGER-INGELHEIM Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “boehringeringelheinpetrebates”) because “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” WIPO Overview of WIPO Overview 3.0, section 1.11.1.

Here, the Disputed Domain Name contains the BOEHRINGER-INGELHEIM Trademark in its entirety, simply substituting the letter “n” for the letter “m” and adding the word “pet rebates.” As set forth in section 1.7 of WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Further, section 1.9 of WIPO Overview 3.0 states: “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.” And section 1.8 of WIPO Overview 3.0 states: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.


Rights or Legitimate Interests: Paragraph 4(a)(ii)

Complainant states, inter alia, that “Respondent is not identified in the Whois database as the disputed domain name”, “Respondent is not affiliated with nor authorized by the Complainant in any way”, and “the disputed domain name redirects to a parking page with commercial links.”

WIPO Overview 3.0, section 2.1, states: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.


Registered and Used in Bad Faith: Paragraph 4(a)(iii)

Whether a domain name is registered and used in bad faith for purposes of the UDRP may be determined by evaluating four (non-exhaustive) factors set forth in paragraph 4(b) of the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.

WIPO Overview 3.0, section 3.1.4, states: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”

Accordingly, the Panel finds that Complainant has proven the third element of the Policy.
Decision
For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) is (are) to be
BOEHRINGERINGELHEINPETREBATES.COM Transferred to Complainant
Panellists
Name Douglas M. Isenberg
Date of Panel Decision 2020-03-18
Publication of the Decision
Publish the Decision