{
    "case_number": "CAC-UDRP-103832",
    "time_of_filling": "2021-06-01 08:34:31",
    "domain_names": [
        "boehringer-ingelheims.com"
    ],
    "case_administrator": "  Iveta Špiclová   (Czech Arbitration Court) (Case admin)",
    "complainant": [
        "Boehringer Ingelheim Pharma GmbH & Co.KG"
    ],
    "complainant_representative": "Nameshield (Enora Millocheau)",
    "respondent": [
        "Jack Mcclurg"
    ],
    "respondent_representative": null,
    "factual_background": "The Complainant’s contentions can be summarised as follows:\r\n\r\nI. The disputed domain name is confusingly similar to trade marks in which the Complainant has rights\r\n\r\nThe Complainant states that it is a German family-owned pharmaceutical group of companies with roots going back to 1885, which was founded by Albert Boehringer in Ingelheim am Rhein.\r\n\r\nThe Complainant further states that it has become a global research-driven pharmaceutical enterprise, being among the world’s 20 leading pharmaceutical companies, with about roughly 52,000 employees. The Complainant’s three main businesses comprise human pharmaceuticals, animal health and biopharmaceuticals, and in 2020 the Complainant achieved net sales of EUR 19.6 million. \r\n\r\nIn addition to the trade marks mentioned above and the many more trade marks in its portfolio, the Complainant informs that it is also the owner of numerous domain names which contain the words “BOEHRINGER INGELHEIM”, including <boehringer-ingelheim.com>, which was registered as far back as 1995.\r\n\r\nThe disputed domain name <boehringer-ingelheims.com> was registered on 24 May 2021. The website to which the disputed domain name resolves is currently inactive, although the MX servers are configured.\r\n\r\nThe Complainant avers that the disputed domain name is confusingly similar to the Complainant’s trade mark BOEHRINGER INGELHEIM and to its associated domain names. The Complainant contends that the disputed domain name is a typosquatting version of the Complainant’s trade mark BOEHRINGER INGELHEIM.\r\n\r\nIn order to substantiate its contention, the Complainant relies on previous UDRP cases, namely CAC Case No. 102708, Boehringer Ingelheim Pharma GmbH & Co.KG v stave co ltd (in respect of the domain name <boehrinqer-ingelheim.com>); and WIPO Case No. D2006-1043, Edmunds.com, Inc. v Digi Real Estate Foundation (in respect of the domain name <edmundss.com> and the complainant’s trade mark “EDMUNDS”). In both matters, the panels determined that domain names which contain a common or obvious misspelling of a trade mark normally will be found to be confusingly similar to such trade mark, where the misspelled trade mark remains the dominant or principal component of the domain names. \r\n\r\nThe Complainant further alludes to the fact that UDRP panels have found that the Top Level Domain (TLD) suffixes (<.com> in the present matter) are typically not relevant in the appreciation of confusing similarity. In this respect, the Complainant cites WIPO Case No. D2006-0451, F. Hoffmann-La Roche AG v Macalve e-dominios S.A.\r\n\r\n\r\nII. The Respondent has no rights or legitimate interests in respect of the disputed domain name\r\n\r\nThe Complainant relies on WIPO Case No. D2003-0455, Croatia Airlines d.d. v Modern Empire Internet Ltd. to elucidate the evidentiary test under the UDRP, which requires the Complainant to make out a prima facie case. If successfully made, the burden of production is shifted to the Respondent to elicit any evidence to the contrary.\r\n\r\nThe Complainant asserts that the Respondent has no rights in the disputed domain name, and that the Respondent is not affiliated with, nor authorised by, the Complainant in any way. The Complainant does not carry out any activity for, nor has any business with, the Respondent. The Respondent has not been authorised or licensed by the Complainant to make any use of the Complainant’s trade mark BOEHRINGER INGELHEIM nor to apply for registration of the disputed domain name by the Complainant.\r\n\r\nThe Complainant further asserts that the Respondent is not known by the disputed domain name, in so far as the Whois information is not similar to the disputed domain name. On this point, the Complainant cites Forum Claim No. FA1781783, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v Chad Moston \/ Elite Media Group.\r\n\r\nFinally, the Complainant informs that the website to which the disputed domain name resolves is inactive. The Complainant contends on this point that past UDRP decisions have held that the lack of use of a domain name is considered an important indicator of the absence of legitimate interests by the Respondent.\r\n\r\nIn view of the above factors, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. \r\n\r\n\r\nIII. The Respondent registered and is using the disputed domain name in bad faith\r\n\r\nThe Complainant contends that, given the Complainant’s trade mark’s distinctiveness and reputation, it is reasonable to infer that the Respondent has registered the disputed domain name will full knowledge of the Complainant’s trade mark BOEHRINGER INGELHEIM. \r\n\r\nIn respect of the above, the Complainant relies on previous UDRP decisions, of particular note CAC Case No. 102274, BOEHRINGER INGELHEIM PHARMA GMBH & CO.KG v Karen Liles; WIPO Case No. D2016-0021, Boehringer Ingelheim Pharma GmbH & Co.KG v Kate Middleton; and WIPO Case No. D2016-1546, Boehringer Ingelheim Pharma GmbH & Co. KG v Martin Hughes.\r\n\r\nIn addition, the Complainant states that the disputed domain name resolves to an inactive website. In this regard, the Complainant argues that the Respondent has not demonstrated any activity in respect of the disputed domain name, that it is not possible to conceive any plausible actual or contemplated use of the disputed 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 trade mark law. The Complainant relies on further previous UDRP decisions to base its claim that the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use (WIPO Case No. D2000-0003, Telstra Corporation Limited v Nuclear Marshmallows; and WIPO Case No. D2000-0400, CBS Broadcasting, Inc. v Dennis Toeppen).\r\n\r\nLastly, the Complainant avers that the disputed domain name has been set up with MX records, which suggests that it may be actively used for e-mail purposes. In the Complainant’s view, this is also indicative of bad faith registration and use because any e-mails from the disputed domain name could not be used for any good faith purpose. The Complainant relies on CAC Case No. 102827, JCDECAUX SA v. Handi Hariyono to support its claim on this point. \r\n\r\nOn these bases, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith.",
    "other_legal_proceedings": "The Panel is unaware of any other pending or decided legal proceedings in respect of the disputed domain name.",
    "no_response_filed": "No administratively compliant Response has been filed.",
    "rights": "The Complainant has, to the satisfaction of the Panel, shown that the disputed domain name is identical or confusingly similar to trade marks 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 name (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 name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).\r\n",
    "procedural_factors": "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": [
        "Dr Gustavo Moser"
    ],
    "date_of_panel_decision": "2021-06-30 00:00:00",
    "informal_english_translation": "The Complainant relies upon the following registered trade marks, amongst others:\r\n\r\n•  International trade mark registration no. 221544, dated 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 \r\n\r\n•  International trade mark registration no. 568844, dated 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.\r\n",
    "decision_domains": {
        "BOEHRINGER-INGELHEIMS.COM": "TRANSFERRED"
    },
    "panelist": null,
    "panellists_text": null
}