Decision for dispute CAC-UDRP-109057

The Panel is not aware of any other legal proceedings that are pending or decided and that relate to the Disputed Domain Name.

Complainant states, and provides documentation in support thereof, that it “owns a large portfolio of trademarks including the wording ‘BOEHRINGER INGELHEIM’ in several countries, such as the international trademark BOEHRINGER-INGELHEIM n°221544, registered since July 2, 1959 and duly renewed, and the international trademark BOEHRINGER INGELHEIM n°568844 registered since March 22, 1991.”  These registrations are referred to herein as the “BOEHRINGER INGELHEIM Trademark.”

Complainant states that it “is a German family-owned pharmaceutical group of companies with roots going back to 1885, when it was founded by Albert Boehringer (1861-1939) in Ingelheim am Rhein”; that it “has become a global research-driven pharmaceutical enterprise and has around 54,500 employees”; that in 2024 it “achieved net sales of 26,796 million euros”; and that it “owns multiple domain names consisting in the wording “BOEHRINGER INGELHEIM”, such as <boehringer-ingelheim.com> registered since 1995-09-01.”

The Disputed Domain Name was created on October 1, 2026.  According to the Complaint, and as supported by a screenshot submitted therewith, the Disputed Domain Name is being used in connection with a “parking page.”

Complainant contends, in relevant part, as follows:

Paragraph 4(a)(i): Complainant states that the Disputed Domain Name is identical or confusingly similar to the BOEHRINGER INGELHEIM Trademark because, inter alia, “the obvious misspelling of the Complainant’s trademark BOEHRINGER-INGELHEIM (i.e. the addition of the letter ‘S’) is characteristic of a typosquatting practice intended to create confusing similarity between the Complainant’s trademark and the disputed domain name.”

Paragraph 4(a)(ii): Complainant states that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not identified in the Whois database as the disputed domain name”; “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 BOEHRINGER-INGELHEIM or apply for registration of the disputed domain name by the Complainant”; “the disputed domain name is a typosquatted version of the trademark BOEHRINGER-INGELHEIM”; and “the disputed domain name resolves to a parking page.”

Paragraph 4(a)(iii): Complainant states that the Disputed Domain Name was registered and is being used in bad faith because, inter alia, “[g]iven the distinctiveness of the Complainant’s trademark and reputation, it is reasonable to infer that the Respondent has registered the domain name with full knowledge of the Complainant’s trademark”; “the misspelling of the trademark BOEHRINGER-INGELHEIM was intentionally designed to be confusingly similar with the Complainant’s trademark”; “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law”; and “MX servers are configured… which suggests that it may be actively used for email purposes.”

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 UDRP).

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).

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).

The Panel is satisfied that all procedural requirements under the UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Identical or Confusingly Similar: Paragraph 4(a)(i)

The documentation provided by Complainant is sufficient to establish that Complainant has rights in the BOEHRINGER INGELHEIM Trademark.

 As to whether the Disputed Domain Name is identical or confusingly similar to this trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Names only (i.e., “boehringersingelheim”) because “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”  WIPO Overview 3.1, section 1.11.1.

Here, the Disputed Domain Name contains the BOEHRINGER INGELHEIM Trademark in its entirety, with only one minor variation, the addition of the letter “s”.  As set forth in section 1.9 of WIPO Overview 3.1: “A domain name which consists of a variation of a trademark (typically a common, obvious, or intentional misspelling, referred to as typosquatting) is considered by panels to be confusingly similar to the relevant mark for purposes of the first element….  Examples of such variations include… the addition or interspersion of other terms or numbers.”

Accordingly, the Panel finds that Complainant has proven the first element of the Policy. 

Rights or Legitimate Interests: Paragraph 4(a)(ii)

Complainant states that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not identified in the Whois database as the disputed domain name”; “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 BOEHRINGER-INGELHEIM or apply for registration of the disputed domain name by the Complainant”; “the disputed domain name is a typosquatted version of the trademark BOEHRINGER-INGELHEIM”; and “the disputed domain name resolves to a parking page.”

WIPO Overview 3.1, section 2.1, states: “Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Panel finds that Complainant has established its prima facie case and, without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the UDRP.

Registered and Used in Bad Faith: Paragraph 4(a)(iii)

Whether a domain name is registered and used in bad faith for purposes of the UDRP may be determined by evaluating four (non-exhaustive) factors set forth in paragraph 4(b) of the UDRP: (i) circumstances indicating that the registrant has registered or the registrant has 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 complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 registrant’s website or location or of a product or service on the registrant’s website or location.

As set forth in section 3.1.4 of WIPO Overview 3.1: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos…) to a well-known trademark, and particularly in the case of coined or fanciful marks, can by itself create a presumption of bad faith.”

Further, section 3.3 of WIPO Overview 3.1, states:

From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not by itself prevent a finding of bad faith under the doctrine of passive holding. To the contrary, in looking at the totality of circumstances in each case, panelists have found that the registration and non-use of a domain name can still constitute bad faith for purposes of the Policy.

Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s taking active steps to conceal its identity or (iv) the use of false or inaccurate contact details (noted to be in breach of the respondent’s registration agreement).

Taking the above factors into consideration, panels assess the overall plausibility of any (claimed) good faith use to which the domain name may be put in light of the composition of the domain name in relation to the relevant mark, such that, the more arbitrary or distinctive a mark the less plausible a claimed non-infringing good faith use is likely to be, and vice versa.

Citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Here, the BOEHRINGER-INGELHEIM Trademark appears to be distinctive and to have a high degree of reputation.  Further, Respondent did not submit a response or provide any evidence of actual or contemplated good-faith use.  And it is implausible to conceive of any good faith use to which the Disputed Domain Name may be put.

Accordingly, the Panel finds that Complainant has proven the third element of the Policy.