Decision for dispute CAC-UDRP-106596

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the registrant, among others, of the international trademark registrations:

- No. 221544 “Boehringer-Ingelheim”, registered on July 2, 1959, for goods in classes 1, 2, 3, 4, 5, 6, 16, 17, 19, 29, 30 and 32; and

- No. 568844 “Boehringer Ingelheim”, registered on March 22, 1991, for goods in classes 1, 2, 3, 4, 5, 9, 10, 16, 30 and 31.

The disputed domain name was registered by the Respondent on June 5, 2024.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The 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 in Ingelheim am Rhein.

The Complainant points out that it has become a global research-driven pharmaceutical enterprise, with more than 53,000 employees, and that its three business areas are human pharmaceuticals, animal health and biopharmaceuticals.

The Complainant underlines that it is the owner of several trademarks containing the wording “Boehringer-Ingelheim”.

The Complainant adds that it owns multiple domain names consisting in the wording “BOEHRINGER INGELHEIM”, like for example <boehringer-ingelheim.com>.

The Complainant notes that the disputed domain name was registered on June 5, 2024 and resolves to a parking page with commercial links.

The Complainant states that the disputed domain name is confusingly similar to its trademark “BOEHRINGER-INGELHEIM”.

The Complainant argues that the addition of the terms “MED INFO”:
- is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark “BOEHRINGER-INGELHEIM”,
- does not change the overall impression of the designation as being connected to the Complainant’s trademark,
- does not prevent the likelihood of confusion between the disputed domain name and the Complainant, its trademark and the domain names associated.

The Complainant asserts that the addition of the generic top-level domain “.COM” does not change the overall impression of the designation as being connected to the trademark “BOEHRINGER-INGELHEIM”.

The Complainant argues that the Respondent does not have any rights or legitimate interest in the disputed domain name.

The Complainant asserts that the Respondent is not identified in the Whois database as the disputed domain name.

The Complainant contends that the Respondent is not affiliated with nor authorized by the Complainant in any way.

The Complainant states that it does not carry out any activity for, nor has any business with the Respondent.

The Complainant points out that 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.

The Complainant adds that the disputed domain name resolves to a parking page with commercial links and underlines that that this does not constitute a bona fide offering of goods or services or legitimate non-commercial or fair use.

The Complainant considers that the domain name has been registered and is being used in bad faith.

The Complainant observes that given the distinctiveness of its trademarks 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 contends the Respondent, by using a parking page with commercial links, has attempted to attract Internet users to its own website, taking advantage of the “BOEHRINGER-INGELHEIM” trademark for its own commercial gain.

The Complainant notes that the Respondent is known in previous UDRP decisions, namely WIPO Case No. D2019-1741 and WIPO Case No. D2023-1402, for engaging in a pattern of bad faith conduct.

The Complainant, relying on the arguments summarised above, contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.
No administratively compliant Response has been filed.

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.

In accordance with paragraph 4(a) of the Policy, in order to obtain the transfer of the disputed domain name, the Complainant has to demonstrate that:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.


IDENTICAL OR CONFUSINGLY SIMILAR

The first requirement that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to the Complainant’s trademark or service mark rights.

There are two elements of this test: the Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark or service mark.

The Complainant has proven ownership, among others, of the registered trademark “BOEHRINGER-INGELHEIM”, identified in section “Identification of rights” above.

On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s trademark.

The disputed domain name differs from the Complainant’s trademark “BOEHRINGER-INGELHEIM” only by the addition of the word "MEDINFO" (which may be also read as "MED INFO" and considered as abbreviation of the wording "MEDICAL INFORMATION"), and of the top-level domain ".COM". 

It is a common view that where a trademark is the distinctive part of a domain name, the domain name is considered to be confusingly similar to the trademark (see, for example, WIPO case No. D2017-1266).

In the present case, the word "MEDINFO" has no impact on the distinctive part “BOEHRINGER-INGELHEIM”. It is well established that where the relevant trademark is recognizable within the domain name, the addition of other terms would not prevent a finding of confusing similarity.

It is also well established that the top-level domain may generally be disregarded in the confusing similarity test (see, for example, WIPO case No. D2016-2547).

Therefore, the Panel considers that the disputed domain name is confusingly similar to the Complainant's trademark “BOEHRINGER-INGELHEIM”.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.


RIGHTS OR LEGITIMATE INTERESTS

The second requirement that the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent] [has] acquired no trademark or service mark rights; or

(iii) [the Respondent] [is] making a legitimate non-commercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

This is a non-exhaustive list of circumstances in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement falls on the Complainant. UDRP panels have recognized that proving that a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”.

Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent and the burden of proof on this requirement shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in a domain name.

The Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.

In particular, the Complainant states that:

- the Respondent is not identified in the Whois as the disputed domain name;

- the Respondent is not affiliated with nor authorized by the Complainant in any way;

- it 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;

- the disputed domain name resolves to a parking page with commercial links.

In the absence of a Response, there is no indication in the present case that the Respondent is commonly known by the disputed domain name.

Furthermore, the Respondent has failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under paragraph 4(c) of the Policy or other evidence of rights or legitimate interests in the disputed domain name.

The Respondent does not appear to make any legitimate non-commercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. Indeed, the website in relation with the disputed domain name consists in a parking page containing commercial links.

The Panel considers that, on the balance of probability, the Respondent knew of the reputation and goodwill that the Complainant had established in the trademark “BOEHRINGER-INGELHEIM” and registered the disputed domain name with knowledge of the Complainant's rights and reputation. Indeed, it is not conceivable that the Respondent did not have the Complainant's trademark in mind, when registering and using the disputed domain name. Under these circumstances, it cannot be concluded that the Respondent is making a "fair" use of the disputed domain name.

Taking into account that the Respondent is not commonly known as the disputed domain name, that the Respondent has no connection or business relationship with the Complainant, that the Complainant has not authorized the Respondent to apply for registration of the disputed domain name or to use the Complainant's trademark, that the disputed domain name is used by a parking page containing commercial links and not for any other legitimate purpose, the Panel cannot imagine any possible legitimate justification for this use, and the Respondent has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.


REGISTERED AND USED IN BAD FAITH

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, including:

(i) circumstances indicating that [the Respondent] [has] registered or [has] acquired the [disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] 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 Respondent's] documented out-of-pocket costs directly related to the [disputed] domain name; or

(ii) [the Respondent] [has] registered the [disputed] 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 Respondent] [has] engaged in a pattern of such conduct; or

(iii) [the Respondent] [has] registered the [disputed] domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the [disputed] domain name, [the Respondent] [has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent's] web site or location or of a product or service on [the Respondent's] web site or location.

The Panel on the basis of the evidence presented, agrees with the Complainant's contentions that the disputed domain name was registered in bad faith and that it has been used in bad faith.

Taking into account the distinctiveness and reputation of the trademark “BOEHRINGER-INGELHEIM” also recognized by other panels, the Panel agrees that it is inconceivable that the Respondent was not aware of the Complainant's rights in the Complainant's trademark when registering the disputed domain name.

Other panels considered that knowledge of a corresponding mark at the time of the domain name’s registration can suggest bad faith (see, for example, WIPO Case No. D2017-0100). The Panel shares this view.

The Panel agrees also that directing Internet users to a web page containing commercial links like in the present case, could be considered as evidence of use in bad faith (see, for example, CAC case No. 103320).

The Panel, taken into account the fact that the Complainant uses the word "MEDINFO" in a subdomain for hosting medical and clinical resources, considers that the fact that the disputed domain name differs from the corresponding Complainant's subdomain <medinfo.boehringer-ingelheim.com> by only one character, demonstrates that the Respondent intended to target the Complainant and its trademark (see, for example, WIPO Case No. D2021-2167). 

Another evidence of bad faith is given by the fact that the Respondent registered other domain names containing well-known trademarks, thus being engaged in a pattern of abusive conduct.

The Panel observes that if the Respondent had legitimate purposes in registering and using the disputed domain name it would have filed a Response in this proceeding.

The Panel, having taken into account the Respondent's knowledge of the Complainant's trademark at the time of the disputed domain name registration, that the Respondent registered other domain names containing well-known trademarks, that no response to the complaint has been filed and the use of the disputed domain name in a website containing commercial links, considers that the disputed domain name was registered and is being used in bad faith.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.