Decision for dispute CAC-UDRP-108404

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 owns a large portfolio of trademarks for the term “BOEHRINGER INGELHEIM” in several countries, including:

The international trademark BOEHRINGER INGELHEIM -INGELHEIM n°221544, registered since July 2, 1959; and the international trademark BOEHRINGER INGELHEIM n°568844 registered since March 22, 1991

The Complainant is a German family-owned pharmaceutical group of companies with roots going back to 1885, when it was founded by Albert BOEHRINGER INGELHEIM (1861-1939) in Ingelheim am Rhein. Ever since, BOEHRINGER INGELHEIM has become a global research-driven pharmaceutical enterprise and has around 54,500 employees. It is divided into two business areas: Human Pharma and Animal Health. In 2024, BOEHRINGER INGELHEIM achieved net sales of 26,796 billion euros.

The disputed domain name <boehringer-ingelheimmx.com> was registered on February 9, 2026 and resolves to the Complainant's official website. 

COMPLAINANT

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it. It states in particular that:

1. The disputed domain name <boehrinqer-ingelheimmx.com> is confusingly similar to its trademark BOEHRINGER INGELHEIM and is impersonating it by resolving the disputed domain name resolves to the Complainant’s official website at https://www.boehringer-ingelheim.com/. 

2. It has no business relationship with the Respondent, who is identified as Eugenio Chavez Hernandez residing in Mexico and did not authorize him to register the disputed domain name;

3. The Respondent lacks rights or legitimate interests in the disputed domain name; and

4. Registered and is using the disputed domain name in bad faith and suggests that because the disputed domain name has been set up with MX records and it may be used for fraudulent purposes.

RESPONDENT:

The Respondent has not appeared formally or informally to controvert the evidence submitted by the Complainant.

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.

Paragraph 15(a) of the Rules for the UDRP ('the Policy') instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." 

Pursuant to Paragraph 4(a) of the Policy the Complainant is required to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: 

(i) the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.

In view of the Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations and adduced proof pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint and annexes as true unless the evidence is clearly contradictory. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000) (In the absence of a response the Panel “is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by complainant.”). 

     1. Identical or Confusingly Similar, Paragraph 4(a)(i) of the Policy 

To succeed under the first element, a complainant must pass a two-part test, to establish first that it has rights, and thereafter that the disputed domain name is either identical or confusingly similar to the mark. The first element of a UDRP complaint “serves essentially as a standing requirement.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

Here, the Complainant has established that it has rights in the word mark BOEHRINGER INGELHEIM by providing the Panel with the evidence that it has registered trademarks in many international jurisdictions. The consensus view which the Panel adopts is that a national or an international trademark registration is sufficient to establish rights in that mark. As such, the Panel finds that the Complainant has established that it has a right in the word mark BOEHRINGER INGELHEIM.

The second part of the test calls for comparing the Complainant’s mark with the disputed domain name. It entails “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark." WIPO Overview 3.0 at section 1.8. The dominant feature is the Complainant's mark BOEHRINGER INGELHEIM.

That the relevant trademark is recognizable within the disputed domain name is sufficient to establish confusing similarity. Here, the addition of geographical term "MX" for Mexico does not change the overall impression of the designation as being connected to the Complainant's trademark BOEHRINGER-INGELHEIM. Indeed, except for the addition of MX before the TOP LEVEL DOMAIN (presumably having reference to the Respondent's geographical residence), the disputed domain name is identical to the Complainant's mark. 

As the addition of the gTLD ".com" does not have any impact on the overall impression of the dominant portion of the disputed domain name it is therefore irrelevant in determining the confusing similarity with BOEHRINGER INGELHEIM. See A&S Holdings (AUS) Pty Ltd v. Sam Nelson, Sam Nelson, WIPO Case No. D2025-0720 (A “generic Top-Level Domain ('gTLD') is viewed as a standard registration requirement and is generally disregarded under the first element of the confusing similarity test, as set forth in section 1.11.1 of WIPO Overview 3.0.’).

The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

Accordingly, the Complainant has satisfied Paragraph 4(a)(i) of the Policy.

     2. Rights and Legitimate Interests, Paragraph 4(a)(ii) if the Policy 

To establish the second of the three elements, the Complainant must first demonstrate that the Respondent lacks rights and legitimate interests in the disputed domain name. Recognizing that the proof for establishing this element is under the Respondent's control, the Complainant's may satisfy this burden by offering a prima facie case based on such evidence as there is thus shifting the burden of persuasion to the Respondent to produce evidence sufficient to overcome the presumption that it lacks rights or legitimate interests in the disputed domain name.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it did not authorize the Respondent to register the disputed domain name, the Respondent is not using the domain name for any bona fide use, and it cannot claim to be known by the name "BOEHRINGER INGELHEIM " as it has been identified in the Whois directory as Eugenio Chavez Hernandez. See Emerson Electric Co. v. golden humble /golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)").

The Complainant has also demonstrated that the Respondent is not using the disputed domain name for any non-commercial or fair use. See Croatia Airlines d. d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (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). See also Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum November 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy paragraph 4(a)(ii).

Here, the Complainant has satisfied the Panel that it has set forth a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name and the burden thereupon shifts to the Respondent. The Policy sets forth the following nonexclusive list of factors any one of which, if proved, would satisfy Respondent’s burden, but the absence of any evidence supports a complainant's contention that the respondent lacks rights or legitimate interests in the disputed domain name.:

(i) "[B]efore any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services."
(ii) "[Y]ou (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights."
(iii) "[Y]ou are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

In the absence of any evidence to the contrary, it must be concluded that none of these potential defenses apply in this case. The failure of a party to submit evidence on facts in its possession and under its control may permit the Panel to draw an adverse inference regarding those facts. See Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-­0004.

As the Respondent has not controverted the evidence that it lacks right or legitimate interests in the disputed domain name, and as there is no other evidence from which to draw an inference otherwise, the Panel finds that the Complainant has satisfied Paragraph 4(a)(ii) of the Policy.

3. Registration and Use in Bad faith:

It is the Complainant's burden under Paragraph 4(a)(iii) of the Policy to prove that the Respondent both registered and is using the disputed domain name in bad faith. It is not sufficient for a complainant to rest its case on the finding under Paragraph 4(a)(ii) of the Policy, although the fact that the Respondent lacks rights or legitimate interests in the disputed domain name will be a factor in assessing its purpose for registering a domain name that is virtually identical to the Complainant's mark.

The Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. The preamble to Paragraph 4(b) states: "For the purposes of Paragraph 4(a)(iii) [the finding of any of the circumstances] shall be evidence of the registration [...] of a domain name in bad faith":

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.

The Complainant's proof in this case focuses the Panel's attention on the fourth factor. As there is no proof that would support the other factors, the Panel will not address them. Complainant contends that the Respondent has targeted the Complainant's mark for an uncertain but most likely malicious purpose. This is demonstrated by its registration and use of a domain name virtually identical to the Complainant's well known mark and also its redirection to the Complainant’s own website. See Intercontinental Exchange Holdings, Inc. (ICE) v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / You Are, Not, WIPO Claim No. D2021-1332 where Complainant is in the financial sector) Respondent redirected the domain name to Complainant’s website: “[S]uch redirection is often used by malevolent parties to suggest that the disputed domain name is connected to the Complainant in aid of phishing schemes or other fraudulent activity,” citing See section 3.1.4 of WIPO Overview 3.0 (“redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant”). The creation of such confusion is paradigmatic bad faith under the Policy.  

The Complainant points out that the Respondent has created an MX record. Whether or not there is evidence that impersonating e-mails have actually been sent, “the configuration of MX records presents the potential for an email scheme impersonating the Complainant.” See Progress Rail Services Corporation v. Michelle Loren, FA2504002148605 (Forum May 2, 2025): "While, in the abstract, the creation of such records does not indicate any ill intent, against the backdrop of the present case where a domain name that is a typosquatted version of the Complainant’s well-known trademark has been created by the Respondent, this MX record does require some further explanation which the Respondent has not provided." The Panel concluded: "As such, the Panel finds that the existence of an MX record for the disputed domain name further supports the conclusion that it has been registered and used in bad faith under paragraph 4(a)(iii) of the Policy." Unexplained, this conduct "creat[es] a likelihood of confusion [...] as to the source, sponsorship, affiliation, or endorsement of [its] website".

For these reasons, the Panel finds that the Respondent is using the disputed domain name in bad faith.