Decision for dispute CAC-UDRP-107173

The Panel is unaware of any other pending or concluded legal proceedings concerning the domain name <boehringer-ingelheimnl.com> ('the disputed domain name').

The Complainant, Boehringer Ingelheim, asserts rights to the following registered trade marks:

• International trade mark registration no. 221544, registered on 2 July 1959, for the word mark BOEHRINGER INGELHEIM, in classes 1, 2, 3, 4, 5, 6, 16, 17, 19, 29, 30, and 32 of the Nice Classification; and

• International trade mark registration no. 568844, registered on 22 March 1991, for the word mark BOEHRINGER INGELHEIM, in classes 1, 2, 3, 4, 5, 9, 10, 16, 30, and 31 of the Nice Classification.

The aforementioned trade marks will be referred to as 'the Complainant's trade mark' or 'the trade mark BOEHRINGER INGELHEIM'. Furthermore, the Complainant owns numerous domain names incorporating the term 'boehringeringelheim', notably <boehringer-ingelheim.com>, registered in 1995 and actively utilised as the Complainant’s official website.

The disputed domain name was registered on 10 December 2024 and currently resolves to the Complainant's official website.

A. Complainant's Factual Allegations

The Complainant is a German family-owned pharmaceutical group established in 1885 by Albert Boehringer in Ingelheim am Rhein. Since its inception, the Complainant has evolved into a global research-driven enterprise, employing approximately 53,500 individuals and generating net sales of EUR 25.6 billion in 2023.

B. Respondent's Factual Allegations

The Respondent has failed to submit a Response in this UDRP administrative proceeding, resulting in the Complainant's allegations remaining unchallenged.

A. Complainant's Submissions

The Complainant's contentions can be summarised as follows:

A.1 The disputed domain name is confusingly similar to a trade mark in which the Complainant has rights

The Complainant asserts that the disputed domain name <boehringer-ingelheimnl.com> is confusingly similar to the Complainant's trade mark and associated domain names. The inclusion of 'nl' as a geographical term does not diminish the likelihood of confusion, as it fails to alter the overall perception associated with the Complainant's trade mark. The incorporation of a registered trade mark within a domain name suffices to establish confusing similarity under the UDRP. The addition of the generic Top-Level Domain ('the TLD') suffix (<.com>) does not lessen the connection to the Complainant's trade mark or prevent confusion.

A.2 The Respondent has no rights or legitimate interests in respect of the disputed domain name

The Complainant must establish a prima facie case that the Respondent holds no rights or legitimate interests in the disputed domain name. The Respondent has failed to demonstrate any such rights. The Complainant asserts that the Respondent has no affiliation, nor has it received permission or engaged in any commercial relationship with the Complainant. Additionally, the Complainant notes that the disputed domain name redirects to its official website, thereby undermining any claim of a bona fide offering of goods or services by the Respondent. 

A.3 The Respondent registered and is using the disputed domain name in bad faith

The Complainant maintains that the disputed domain name <boehringer-ingelheimnl.com> exhibits confusing similarity to the trade mark BOEHRINGER INGELHEIM. The distinctive nature and reputation of the Complainant's trade mark suggest that the Respondent registered the disputed domain name with knowledge of the Complainant's rights. Moreover, the redirection of the disputed domain name to the Complainant's official website indicates bad faith, as it appears to exploit the well-established reputation of the Complainant's trade mark. The configuration of MX servers suggests that the disputed domain name may be used for email purposes, further reinforcing the perception of bad faith in the Respondent's actions.

B. Respondent's Submissions

The Respondent has defaulted in this UDRP administrative proceeding, failing to advance any substantive defence.

The Complainant has, to the satisfaction of the Panel, shown that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the UDRP 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 UDRP 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 UDRP Policy).

The Panel is satisfied that all procedural requirements under the UDRP have been duly met, with no grounds preventing a decision from being issued. 

A. Applicable Legal Framework and Burden of Proof

Pursuant to Rule 15 of the UDRP Rules, the Panel will decide the matter based on the statements and documents submitted, alongside the UDRP Policy, UDRP Rules, and any pertinent rules and principles of law.

Under paragraph 4(a) of the UDRP Policy, the onus is on the Complainant to establish three essential elements for a successful claim:

i. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

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.

These three elements will be referred to as 'the requirements of the UDRP Policy'. The standard of evidence in UDRP administrative proceedings is the balance of probabilities. The Panel will assess each element in turn.

B. Identical or Confusingly Similar

The Panel finds that the Complainant possesses UDRP-relevant rights in the registered trade mark BOEHRINGER INGELHEIM as of 1959.

The disputed domain name <boehringer-ingelheimnl.com> includes the term 'boehringeringelheim' in combination with the letters or geographical term 'nl', which do not materially affect the recognisability of the Complainant's trade mark. The TLD (in this instance, <.com>) is disregarded for the purposes of this assessment. The Panel concludes that the Complainant has satisfied the first requirement of the UDRP Policy.

C. Rights or Legitimate Interests

The Respondent's default permits the Panel to draw adverse inferences. The evidence indicates that the Respondent is not commonly known by the disputed domain name and has not obtained the requisite authorisation from the Complainant for its registration or use. Moreover, the redirection of the disputed domain name to the Complainant's official website undermines any potential assertion of rights or legitimate interest that the Respondent might have claimed.

The Panel finds that the Complainant has met the second requirement of the UDRP Policy.

D. Registered and Used in Bad Faith

The evidence overwhelmingly supports that the Respondent registered and has used the disputed domain name with the deliberate intent of targeting the Complainant. The Complainant's trade mark reputation, along with the evident similarity to the disputed domain name, contributes to the inference of bad faith in this case.

In addition, the Respondent's actions in redirecting the disputed domain name to the Complainant's official website further heighten the risk of unwarranted affiliation. Such conduct falls squarely within the ambit of paragraph 4(b)(iv) of the UDRP Policy.

The Panel therefore finds that the Complainant has satisfied the third and final requirement of the UDRP Policy.

E. Decision

For the foregoing reasons, in accordance with paragraph 4(a) of the UDRP Policy and Rule 15 of the UDRP Rules, the Panel orders that the disputed domain name <boehringer-ingelheimnl.com> be transferred to the Complainant.