NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.
PARTIES' CONTENTIONS:
COMPLAINANT:
Rights Similar and Identical
The Complainant says that the Disputed Domain Name <boehringeringtheimpetrebates.com> is confusingly similar to its trademark BOEHRINGER-INGELHEIM and also its unregistered mark, boehringeringelheimpetrebates.com.
Indeed, the misspelling in the trademark BOEHRINGER-INGELHEIM, i.e. the substitution of the letters “E” and “L” by the letter “T” and the deletion of the hyphen, does not prevent the whole from being confusingly similar to its trademarks. It does not change the overall impression. There is a likelihood of confusion between the Disputed Domain Name and the Complainant, its trademarks and names.
Besides, the addition of the terms “PET REBATES” compounds the likelihood of confusion, as it directly refers to the Complainant’s domain and website https://www.boehringeringelheimpetrebates.com/
Moreover, the Complainant says that the addition of the generic Top-Level Domain suffix “.COM” increases the overall impression that the designation is connected to the trademark BOEHRINGER-INGELHEIM. See WIPO Case No. D2006-0451, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A. Consequently, the Disputed Domain Name is confusingly similar to the Complainant’s trademark.
Legitimate interests
According to the WIPO Case No. D2003-0455, Croatia Airlines d.d. v. Modern Empire Internet Ltd., 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 Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
The Complainant says the Respondent is not identified in the Whois database as the Disputed Domain Name. Past panels have held that a Respondent was not commonly known by a Disputed Domain Name if the WHOIS information was not similar to the Disputed Domain Name. See the 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.>
The Complainant contends that the Respondent is not affiliated with nor authorized by the Complainant in any way. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant does not carry out any activity for, nor has any business with the Respondent.
Neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademarks or apply for registration of the Disputed Domain Name by the Complainant.
Furthermore, the Disputed Domain Name resolves to a parking page with commercial links.
Past panels have found this is not a bona fide offering of goods or services or legitimate non-commercial or fair use. See: The Forum Case No. FA 970871, Vance Int’l, Inc. v. Abend and
WIPO Case No. D2007-1695, Mayflower Transit LLC v. Domains by Proxy Inc./Yariv Moshe. The Complainant says that the Respondent has no rights or legitimate interest in respect of the Disputed Domain Name.
Bad Faith
The Complainant’s trademark is highly distinctive and also well-known.
Past Panels have confirmed this in relation to the Complainant’s trademarks. See WIPO Case No. D2019-0208, Boehringer Ingelheim Pharma GmbH & Co. KG v. Marius Graur (“Because of the very distinctive nature of the Complainant’s trademark [BOEHRINGER-INGELHEIM] and its widespread and longstanding use and reputation in the relevant field, it is inconceivable that the Respondent registered the Disputed Domain Name without being aware of the Complainant’s legal rights.”) and see CAC Case No. 102274, BOEHRINGER INGELHEIM PHARMA GMBH & CO.KG v. Karen Liles (“In the absence of a response from Karen Liles and given the reputation of the Complainant and its trademark (see, among others, WIPO Case No. D2016-0021, Boehringer Ingelheim Pharma GmbH & Co.KG v. Kate Middleton), the Panel infers that the Respondent had the Complainant's trademarks BOEHRINGER-INGELHEIM in mind when registering the Disputed Domain Name.”).
The Complainant says the Respondent selected the Disputed Domain Name to create confusion with the domain name <boehringeringelheimpetrebates.com>, used by the Complainant to offer rebates on pet health products.
Given the distinctiveness of the Complainant's trademarks and its reputation, it is reasonable to infer that the Respondent registered and used the domain name with full knowledge of the Complainant's trademark.
Furthermore, the Disputed Domain Name resolves to a parking page with commercial links. The Complainant contends the Respondent has attempt to attract Internet users for commercial gain to his own website thanks to the Complainant’s trademarks for its own commercial gain, which is an evidence of bad faith. See WIPO Case No. D2018-0497, StudioCanal v. Registration Private, Domains By Proxy, LLC / Sudjam Admin, Sudjam LLC See also CAC Case No. 102872, Boehringer Ingelheim Pharma GmbH & Co.KG v. Fundacion Comercio Electronico (“The evidence of use for pay per click links is registration and use in bad faith being a deliberate attempt to divert Internet users for commercial gain under Policy 4 (b)(iv) and disrupting the Complainant’s business under Policy 4 (b)(iii).”) and CAC Case No. 102854, Boehringer Ingelheim Pharma GmbH & Co.KG v. Fundacion Comercio Electronico (“The Panel has reasons to presume that the Respondent has allowed the Disputed Domain Name to be used with the intent to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant's trademark as to the source, affiliation, or endorsement of the Respondent's website to which the Disputed Domain Name resolves. Accordingly, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith.”).
The Respondent has registered and is using the Disputed Domain Name in bad faith. See The 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> and The Forum Case No. FA 970871, Vance Int’l, Inc. v. Abend (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate non-commercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Complainant also relies on WIPO Case No. D2007-1695, Mayflower Transit LLC v. Domains by Proxy Inc./Yariv Moshe ("Respondent’s use of a domain name confusingly similar to Complainant’s trademark for the purpose of offering sponsored links does not of itself qualify as a bona fide use.
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