Case number | CAC-UDRP-105442 |
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Time of filing | 2023-05-15 11:57:08 |
Domain names | boehringer-lngelhiem.com |
Case administrator
Name | Olga Dvořáková (Case admin) |
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Complainant
Organization | Boehringer Ingelheim Pharma GmbH & Co.KG |
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Complainant representative
Organization | NAMESHIELD S.A.S. |
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Respondent
Name | Paul Lowe |
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The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.
In this proceeding the Complainant relies on the following trademark registrations:
- The international trademark registration No. 221544 “BOEHRINGER-INGELHEIM” (word), registered on July 2, 1959, protected inter alia in Austria, Benelux, Italy, France, Switzerland, Germany and Serbia and
- The international trademark registration No. 568844 “BOEHRINGER INGELHEIM” (word), registered on March 22, 1991, protected inter alia in Benelux, Italy, France, Ukraine and Turkey.
The Complainant also refers to various domain names that incorporate the “BOEHRINGER INGELHEIM” trademark, including <boehringer-ingelheim.com> registered since 1995.
FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:
THE DISPUTED DOMAIN NAME IS IDENTICAL OR CONFUSINGLY SIMILAR TO A TRADEMARK OR SERVICE MARK IN WHICH THE COMPLAINANT HAS RIGHTS
The Complainant states that it is a German family-owned pharmaceutical group of companies with roots going back to 1885.
The Complainant alleges it has become a global research-driven pharmaceutical enterprise, has over 53,000 employees and achieved net sales of 24.1 billion euros in 2022.
The disputed domain name was registered on May 8, 2023 and resolves to an inactive page, while MX servers are configured.
The Complainant states that the disputed domain name is confusingly similar to its trademark and its domain names and is an example of typosquatting.
The <.com> gTLD is not relevant in the appreciation of confusing similarity.
Thus, the Complainant contends the disputed domain name is confusingly similar to the Complainant’s trademark.
THE RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAME
The Complainant asserts that the Respondent is not identified in the Whois database as the disputed domain name, is not related in any way with the Complainant and 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 trademark, or apply for registration of the disputed domain name.
According to the Complainant, the disputed domain name is a typosquatted version of its trademark and “typosquatting” itself can be evidence of lack rights and legitimate interests.
The disputed domain name resolves to an inactive page and the Complainant asserts that since the Respondent did not make any use of disputed domain name since its registration this confirms that the Respondent has no demonstrable plans to use the disputed domain name and demonstrates a lack of legitimate interests in respect of the disputed domain name.
THE DISPUTED DOMAIN NAME WAS REGISTERED AND BEING USED IN BAD FAITH
The Complainant’s submissions on the bad faith element of the UDRP can be summarized as follows:
- Given the distinctiveness of the Complainant's trademark and its reputation, it is reasonable to infer that the Respondent has registered and used the domain name with full knowledge of the Complainant's trademark. The Complainant cites previous UDRP decisions related to the same mark of the Complainant.
- Referring to previous decisions of UDRP panels the Complainant contends that by registering the disputed domain name with the misspelling of the trademark “BOEHRINGER-INGELHEIM”, the Respondent intentionally designed the disputed domain name to be confusingly similar with the Complainant’s trademark.
- The Complainant relies on the passive holding doctrine and the “Telstra” decision (WIPO Case No. D2000-0003, “Telstra Corporation Limited v. Nuclear Marshmallows”) and alleges that passive holding in the present case indicates bad faith of the Respondent since it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate.
- The Complainant alleges that while the disputed domain name appears to be unused, it has been set up with MX records which suggests that it may be actively used for email purposes.
Therefore, the Complainant claims the disputed domain name was registered and being used in bad faith.
The Complainant's contentions are summarized in the Factual Background section above.
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.
COMPLAINANT: RESPONDENT:
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).
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).
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).
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.
A. Identical or confusingly similar
The Complainant provides evidence of the international registrations for the word marks “BOEHRINGER INGELHEIM” protected in various jurisdictions.
As confirmed by the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition” (“WIPO Overview 3.0”): “where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case” (see par. 1.2.1).
The disputed domain name represents an obvious misspelling of the Complainant’s mark “BOEHRINGER INGELHEIM”, namely the substitution of the letter “I” by the letter “L” and the inversion of the letters “I” and “E”.
As stated in the WIPO Overview 3.0: “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” (see par. 1.9). In the present case, the Complainant’s word trademark “BOEHRINGER INGELHEIM” is clearly recognizable within the disputed domain name.
The gTLD “.com” is to be disregarded under the confusing similarity test as it does nothing to eliminate confusion.
Therefore, the Panel finds that the first requirement of the Policy has been satisfied.
B. Rights or Legitimate Interests
The general rule is the following:
(i) a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests; and
(ii) once such prima facie case is made, the burden shifts to the respondent who has to demonstrate his rights or legitimate interests in respect of the domain name under paragraph 4 (c) of the Policy.
If the respondent fails to do so, the second element of the Policy is satisfied, see Julian Barnes v. Old Barn Studios, WIPO Case No. D2001-0121; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
The disputed domain name was registered on May 8, 2023. It does not resolve to any active page.
The Respondent did not respond.
While failure to respond does not per se demonstrate that the Respondent does not have rights or legitimate interests, it allows the Panel to draw such inferences as it considers appropriate, see paragraph 14(b) of the Rules and CAC Case No. 101284: “A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable inferences may be drawn from the information provided by the complainant”.
The Complainant has made a prima facie case of Respondent’s lack of rights or legitimate interests.
The Respondent is not known by the disputed domain name and is identified as an individual with no connection to the Complainant’s business or the disputed domain name. The Complainant has not granted any license or authorization to use its trademark to the Respondent and the Complainant is not doing any business with the Respondent.
The disputed domain name represents a misspelling of the Complainant’s trademark.
Typosquatting does not create any rights or legitimate interests of the Respondent.
Previous UDRP panels noted that in such circumstances respondent does not have rights or legitimate interests, see e.g. CAC Case No. 104298: “The disputed domain names are typosquatted versions of its trademark which is further proof that the Respondent has no rights or legitimate interests under the Policy…” and CAC case No. 104778: “In this case, the Panel finds that the disputed domain name can be considered as virtually identical to the Complainant’s trademark as it simply adds two letters identical to the respective letters next to these, resulting in a high risk of implied affiliation”.
The nature of the disputed domain name is such that it creates an association with the Complainant and its business as it represents an obvious misspelling of the Complainant’s mark.
Passive holding of the disputed domain name in the circumstances of this case does not create any rights or legitimate interests of the Respondent.
Therefore, the Panel finds that the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists non-exhaustive circumstances indicating registration and use in bad faith.
These circumstances are non-exhaustive and other factors can also be considered.
It is well established that bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark (see par. 3.1 of the WIPO Overview 3.0). Targeting is important in establishing bad faith under the UDRP.
The Panel finds that the Complainant provided sufficient evidence that the disputed domain name was registered and is being used in bad faith based on the following:
- The nature of the disputed domain name (“typosquatting”) and the timing of the registration of the disputed domain name – May 8, 2023, many years after the Complainant obtained protection for its trademarks. The nature of the disputed domain name indicates that the Respondent was most likely aware of the Complainant and its trademark when he registered the disputed domain name. As noted in the leading treatise on UDRP and domain disputes by Gerald Levine in relation to typosquatting: “where intent to take advantage of the trademark is evident knowledge is implied” (see “Domain Name Arbitration”, Gerald M. Levine, 2019, Second edition, “Legal Corner Press”, page 496).
-The strength and reputation of the Complainant’s trademark. The Panel notes that the Complainant provided only limited evidence of well-known character of the “BOEHRINGER INGELHEIM” trademark (Company profile with some history and figures and references to Complainant’s own website). Normally, more evidence is required to establish that a trademark is well-known/ has a strong reputation (e.g. evidence of awards, publications by independent sources, media reports, etc.). However, this is not fatal to the Complainant in the present dispute taking into account facts of the present case and other evidence available. Previous UDRP decisions relating to the “BOEHRINGER INGELHEIM”” trademark in Complainant’s favor could be an additional indication of popularity of the Complainant’s trademark. While each UDRP case is unique and has its own set of facts, previous decisions in Complainant’s favor in similar circumstances can demonstrate that the Complainant’s mark was already targeted by cybersquatters and is popular (see e.g. CAC Case No. 105355: “Respondent knew or should have known that the disputed domain name included Complainant’s well-known mark. The Panel notes that the disputed domain name has been registered and is being used for “typosquatting” purposes” and CAC Case No. 105370: “the domain name is clearly a typosquatted version of the BOEHRINGER-INGELHEIM trademark, substituting the letter “A” for the letter “E” before the hyphen and substituting the letter “L” for the letter “I” after the hyphen. Given the distinctiveness of the Complainant's trademark and its reputation, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith with full knowledge of the Complainant's trademark…”).
-Passive holding of the disputed domain name in the circumstances of this case indicates both registration and use in bad faith. The WIPO Overview 3.0 states that “from the inception of the UDRP, panelists have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding” and the panelists “will look at the totality of the circumstances in each case” (par. 3.3).
The Panel notes that passive holding per se does not indicate bad faith. However, the totality of the circumstances of this dispute proves bad faith of the Respondent, in particular: i) strength of the Complainant’s mark and timing of registration of the disputed domain name, ii) the nature of the disputed domain name (“typosquatting”), iii) failure of the Respondent to respond and take part in this proceeding and iv) the implausibility of any good faith use to which the domain name may be put – the Panel does not find any circumstances under which the Respondent could legitimately use the disputed domain name that is so closely associated with the Complainant, its trademark and its business. Any possible explanation of a potential legitimate use is solely within the Respondent’s knowledge and the Respondent failed to respond and provide any explanations. The fact that the disputed domain name is not used for any website but MX records are configured is an additional indication of bad faith in the circumstances of this case (see CAC Case No. 105370: “Although the disputed domain name appears to be inactive, it has been set up with MX records, which suggests that it may be actively used for fraudulent email purposes” and CAC Case No. 105258: “the fact that MX servers are configured suggests that the disputed domain name may be actively used for email purposes”).
-The Panel finds that this is a clear case of targeting and an attempt to take unfair advantage of the Complainant’s trademark by the Respondent. There are no any rights or legitimate interests of the Respondent taking into account evidence on the record and facts of this case and the only apparent reason for registration of the disputed domain name is an intent of the Respondent to take unfair advantage of the Complainant’s mark.
Based on the above, the Panel finds that Respondent’s behavior falls within, at least, par. 4 b (iv) of UDRP and the Respondent by using the disputed domain name has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement and that the Respondent takes unfair advantage of the Complainant’s mark.
The Panel holds that the third requirement of the Policy has been satisfied.
- boehringer-lngelhiem.com: Transferred
PANELLISTS
Name | Igor Motsnyi |
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