{ "case_number": "CAC-UDRP-102995", "time_of_filling": "2020-03-27 10:40:23", "domain_names": [ "boehringeringeimpetrebates.com", "boehringeringelheimpetebates.com" ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "Boehringer Ingelheim Pharma GmbH & Co.KG" ], "complainant_representative": "Nameshield (Laurent Becker)", "respondent": [ "Fundacion Comercio Electronico" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nThe Complainant is a 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. Ever since Boehringer has become a global research-driven pharmaceutical enterprise and has today about roughly 50,000 employees. The three business areas of Boehringer are human pharmaceuticals, animal health, and biopharmaceuticals. In 2018, net sales of the Boehringer group amounted to about EUR 17.5 billion.\r\n\r\nThe Complainant is the registered holder of the domain name since 1 September 1995 and the domain name since 4 July 2004. The Complainant has been using the domain name to offer rebates on pet health products.\r\n\r\nThe disputed domain names and were registered on 23 March 2020 and resolve to a parking page with commercial links.\r\n\r\nThe Registrar confirmed that the Respondent is the current registrant of the disputed domain names and that the language of the registration agreement for the disputed domain names is English.\r\n\r\nThe Respondent has not filed a Response.\r\n", "other_legal_proceedings": "The Panel is not aware of any pending or decided legal proceedings that relate to the disputed domain names.", "no_response_filed": "NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.\r\n\r\nThe Complainant made the following contentions: \r\n\r\nThe Complainant states that the disputed domain names are confusingly similar to its trademark \"BOEHRINGER-INGELHEIM\". The disputed domain names incorporate the Complainant’s trademark with some misspelling by changing or removing letters and with the addition of the descriptive element \"PET REBATES\". It does not change the overall impression of the designation as being connected to the Complainant’s trademark \"BOEHRINGER-INGELHEIM\". It does not prevent the likelihood of confusion between the disputed domain names and the Complainant, its trademark and domain names associated.\r\n\r\nBesides, the addition of the terms \"PET REBATES\" worsens the likelihood of confusion, as it directly refers to the Complainant’s website https:\/\/www.boehringeringelheimpetrebates.com\/ .\r\n\r\nMoreover, the Complainant asserts that the addition of the generic Top-Level Domain suffix “.COM” does not change the overall impression of the designation as being connected to the trademark \"BOEHRINGER-INGELHEIM\". It does not prevent the likelihood of confusion between the disputed domain names and the Complainant, its trademark and its domain names associated.\r\n\r\nThe Complainant also refers the earlier decisions in similar cases, for example CAC Case No. 102854 involving both the Complainant and the Respondent concerning the domain name which confirmed the Complainant's rights.\r\n\r\nThus, the Complainant believes that the disputed domain names are confusingly similar to the Complainant’s trademark.\r\n\r\nRegarding Respondent's rights or legitimate interests, the Complainant points to the decision in the WIPO case No. D2003-0455, Croatia Airlines d.d. v. Modern Empire Internet Ltd., according to which the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. 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 Policy. The Complainant asserts that the Respondent is not identified in the Whois database as the disputed domain names. Past panels have held that a Respondent was not commonly known by a disputed domain name if the WHOIS information was not similar to the disputed domain name.\r\n\r\nThe Complainant contends that the Respondent is not affiliated with nor authorized by the Complainant in any way. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The 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 names by the Complainant.\r\n\r\nFurthermore, the disputed domain names resolve to a parking page with commercial links. According to the Complainant, past UDRP panels have found that it is not a bona fide offering of goods or services or legitimate non-commercial or fair use (e.g. Forum No. FA 970871 and WIPO No. D2007-1695).\r\n\r\nThus, in accordance with the foregoing, the Complainant contends that the Respondent has no right or legitimate interest in respect of the disputed domain names.\r\n\r\nTurning to the bad faith argument, the Complainant asserts that the disputed domain names are confusingly similar to its trademark \"BOEHRINGER-INGELHEIM\" and that it is one of the world’s 20 leading pharmaceutical companies, with roughly 50,000 employees worldwide and 17,5 million euros in net sales. The Complainant’s trademarks \"BOEHRINGER-INGELHEIM\" are distinctive and well-known. The Complainant states that past UDRP panels have confirmed the notoriety of the trademarks \"BOEHRINGER-INGELHEIM\" in cases CAC Case No. 102274 and WIPO Case No. D2016-0021.\r\n\r\nThe Complainant also contends that the Respondent chose to register the disputed domain names to create confusion with the domain name used by the Complainant to offer rebates on pet health products.\r\n\r\nConsequently, given the distinctiveness of the Complainant's trademarks and its reputation, the Complainant considers it reasonable to infer that the Respondent has registered and used the disputed domain names with full knowledge of the Complainant's trademark.\r\n\r\nFurthermore, the Complainant remarks that the disputed domain names resolve to a parking page with commercial links. The Complainant contends the Respondent has attempted to attract Internet users for commercial gain to his own website thanks to the Complainant’s trademark for its own commercial gain, which is an evidence of bad faith pursuant to previous UDRP case law (e.g. CAC Case No. 102872 and CAC Case No. 102854, involving both the Complainant and the Respondent).\r\n\r\nOn these bases, the Complainant concludes that the Respondent has registered and is using the disputed domain names in bad faith.", "rights": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are 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).", "no_rights_or_legitimate_interests": "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 names (within the meaning of paragraph 4(a)(ii) of the Policy).", "bad_faith": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).", "procedural_factors": "The Panel notes that due to the COVID-19 pandemic the written notice of the Complaint was not sent by the CAC because the destination country of the Respondent does not provide delivery services at the moment. According to the CAC, such a procedure was preapproved by ICANN. The Rules for Uniform Domain Name Dispute Resolution Policy require that the Provider employs \"reasonably available means calculated to achieve actual notice to Respondent\". The Panel believes that if the CAC sent the Complaint only by all means anticipated by Paragraph 2(a)(ii) of the Rules, particularly to the e-mail address identified by the Respondent when registering the disputed domain names, because physical delivery anticipated by Paragraph 2(a)(i) of the Rules is objectively not available at the moment, then the CAC employed \"reasonably available means\" and satisfied the requirement of the Rules relating to the forwarding of the Complaint to the Respondent. \r\n \r\nTherefore, 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.", "decision": "Accepted", "panelists": [ "Mgr. Vojtěch Chloupek" ], "date_of_panel_decision": "2020-04-21 00:00:00", "informal_english_translation": "The Complainant submitted evidence that it is the registered owner of the international trademark registrations No. 221544 for \"Boehringer-Ingelheim\" (word), registered since 2 July 1959 for the classes 01, 02, 03, 04, 05, 06, 16, 17, 19, 29, 30 and 32, designated for numerous countries and No. 568844 for \"Boehringer Ingelheim\" (word), registered since 22 March 1991 for the classes 01, 02, 03, 04, 05, 09, 10, 16, 30 and 31, designated for numerous countries.", "decision_domains": { "BOEHRINGERINGEIMPETREBATES.COM": "TRANSFERRED", "BOEHRINGERINGELHEIMPETEBATES.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }