Decision for dispute CAC-UDRP-108030

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, inter alia, a registered owner of the following trademark containing a word element "MERIAL”:

(i) MERIAL (word), International (WIPO) Trademark, priority date 10 October 1996, registration date 20 March 1997, trademark no. 672420, registered for goods and services in the international classes 5, 9, 10, 16, and 31,

besides other trademarks consisting of the " MERIAL " denominations.

(collectively referred to as "Complainant's trademarks").

The Complainant has also registered a domain name <boehringer-merial.com> since 31 January 2016.

The Complainant, Boehringer Ingelheim Animal Health France, is a global leader in the pet and equine markets, dedicated to promoting longer and healthier lives for companion animals. The company Merial was integrated into the Complainant’s corporate group in 2017.

The disputed domain name <merialhealth.com> was registered on 29 October 2024 and is held by the Respondent.

The disputed domain name website (i.e. website available under internet address containing the disputed domain name) is currently inactive and contains no genuine content accessible to the public; it merely resolves to a parking page displaying pay-per-click links.

The Complainant seeks the transfer of the disputed domain name to the Complainant.

COMPLAINANT:

A) CONFUSING SIMILARITY

The Complainant states that:

• The disputed domain name is confusingly similar to the Complainant’s trademark MERIAL. The addition of the generic term “HEALTH”, which relates to the Complainant’s field of activity, does not eliminate the likelihood of confusion and does not alter the overall impression of association with the Complainant’s mark.
• It is well established under the Policy that a domain name wholly incorporating a registered trademark is sufficient to establish confusing similarity.
• The inclusion of the “.com” generic Top-Level Domain (gTLD) is irrelevant to the assessment of confusing similarity and does not distinguish the disputed domain name from the Complainant’s trademark.

B) NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant states that:

• The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name.
• The Respondent is not identified in the WHOIS database by the disputed domain name and is not commonly known by it.
• The Respondent is not affiliated with, authorized by, or licensed by the Complainant in any way.
• The Complainant has not permitted the Respondent to use its MERIAL trademark (Complainant’s trademark) or to register the disputed domain name.
• The disputed domain name resolves to a parking page with commercial pay-per-click links related to the Complainant’s activities.
• Such use does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use.
• The Respondent therefore has no rights or legitimate interests in the disputed domain name.

C) BAD FAITH REGISTRATION AND USE

The Complainant states that:

• The disputed domain name is confusingly similar to the Complainant’s trademarks, all registered years before the disputed domain name.

• The term “MERIAL” is strongly associated with the Complainant, as search results predominantly refer to the Complainant and its health-related activities.
  
  
• It is inconceivable that the Respondent registered the disputed domain name without actual knowledge of the Complainant’s trademark rights.
  
  
• The disputed domain name resolves to a parking page with commercial pay-per-click links related to the Complainant’s field, indicating an intent to attract internet users for commercial gain by creating confusion with the Complainant’s mark.
  
  
• The Respondent is responsible for the content and use of the domain name, which demonstrates bad faith.

• The Respondent has a history of involvement in multiple UDRP cases, including previous disputes with the Complainant.

RESPONDENT:

The Respondent has not provided any response to the Complaint.

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) RIGHTS

The first UDRP element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name(s).

This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the trademark is recognizable within the disputed domain name. 

In cases where a disputed domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in such domain name, the disputed domain name will normally be considered confusingly similar to that trademark for purposes of UDRP standing.

In such case, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.

Applying the principles described above, the Panel finds that incorporation of a dominant “MERIAL” element into the disputed domain name constitutes confusing similarity between Complainant’s trademarks and the disputed domain name.

Addition of non-distinctive element „HEALTH“ cannot prevent the confusing similarity in the eyes of internet consumers between the disputed domain name and the Complainant’s trademarks.

For the sake of completeness, the Panel asserts that the top-level suffix in the disputed domain name (i.e. the “.com”) must be disregarded under the identity and confusing similarity tests as it is a necessary technical requirement of registration.

Consequently, the disputed domain name is 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).

B) NO RIGHTS OR LEGITIMATE INTERESTS

According to established UDRP precedent, once the Complainant makes a prima facie case that the Respondent lacks such rights or legitimate interests, the burden shifts to the Respondent to show otherwise.

In this case, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not identified in the WHOIS record by the disputed domain name and there is no evidence that the Respondent is commonly known by it. The Complainant has further stated that it has no relationship with the Respondent and has not licensed, authorized, or otherwise permitted the Respondent to use Complainant’s trademarks or to register any domain name incorporating it.

The disputed domain name resolves to a parking page containing commercial pay-per-click links, some of which are related to the Complainant’s field of activity. Such use cannot be considered a bona fide offering of goods or services or a legitimate non-commercial or fair use under paragraph 4(c) of the Policy.

The Respondent has not come forward with any evidence to rebut the Complainant’s prima facie case or to demonstrate any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.

C) BAD FAITH

The Complainant’s trademark has been registered and widely used for many years prior to the registration of the disputed domain name.

The Panel notes that the term “MERIAL” is distinctive and closely associated with the Complainant, as shown by search engine results primarily referring to the Complainant and its business in the animal health sector. In these circumstances, it is not likely that the Respondent registered the disputed domain name without knowledge of the Complainant’s trademark and reputation.

The disputed domain name resolves to a parking page displaying commercial pay-per-click links, including links related to the Complainant’s field of activity. Such use demonstrates an intent to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website. This constitutes evidence of bad faith registration and use within the meaning of paragraph 4(b)(iv) of the Policy.

The Panel also notes that the Respondent has been involved in multiple previous UDRP proceedings, including cases initiated by the present Complainant, which supports a pattern of bad faith conduct.

Thus, the Panel has taken a view that 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.