{ "case_number": "CAC-UDRP-102875", "time_of_filling": "2020-01-23 10:01:49", "domain_names": [ "boehringeringelheimppetrebates.com" ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "Boehringer Ingelheim Pharma GmbH & Co.KG" ], "complainant_representative": "Nameshield (Enora Millocheau)", "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 it has been using the domain name used by the Complainant to offer rebates on pet health products.\r\n\r\nThe disputed domain name was registered on 17 January 2020 and redirects to a parking page with commercial links.\r\n\r\nThe Registrar confirmed that the Respondent is the current registrant of the disputed domain name and that the language of the registration agreement is English.\r\n\r\nThe Respondent has not filed a Response.", "other_legal_proceedings": "The Panel is not aware of any pending or decided legal proceedings that relate to the disputed domain name.", "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 name is confusingly similar to its trademark \"BOEHRINGER-INGELHEIM\" which is reproduced in its entirety, except for the dash. The addition of the terms “PPET REBATES” is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark \"BOEHRINGER-INGELHEIM\". 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 name and the Complainant, its trademark and domain names associated.\r\n\r\nThe Complainant argues that it is well-established that \"a domain name that wholly incorporates a Complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP\" (the Complainant refers to WIPO Case No. D2003-0888, Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin). On the contrary, the addition of the terms “PPET REBATES” worsens the likelihood of confusion, as it directly refers to the Complainant’s website www.boehringeringelheimpetrebates.com. \r\n\r\nMoreover, the Complainant contends 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 name and the Complainant, its trademark and its domain names associated.\r\n\r\nThus, the Complainant believes that the disputed domain name is 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 name. 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 name by the Complainant.\r\n\r\nFurthermore, the disputed domain name redirects 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 name.\r\n\r\nTurning to the bad faith argument, the Complainant asserts that the disputed domain name is 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 trademark \"BOEHRINGER-INGELHEIM\" is a distinctive and well-known trademark. The Complainant states that past UDRP panels have confirmed the notoriety of the trademark \"BOEHRINGER-INGELHEIM\" in cases WIPO Case No. D2019-0208, 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 name to create confusion with the domain name used by the Complainant to offer rebates on pet health products. \r\n\r\nMoreover, the Respondent has already registered domain names comprising the trademark \"BOEHRINGER-INGELHEIM\" (CAC Case No. 102765, Boehringer Ingelheim Pharma GmbH & Co.KG v. Fundacion Comercio Electronico ). Consequently, given the distinctiveness of the Complainant's trademark and its reputation, the Complainant considers it reasonable to infer that the Respondent has registered and used the disputed domain name with full knowledge of the Complainant's trademark.\r\n\r\nFurthermore, the Complainant remarks that the disputed domain name redirects 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. WIPO Case No. D2018-0497).\r\n¨\r\nFinally, the Complainant points out that the Respondent has been involved in numerous UDRP cases involving third parties' trademarks, which also evidences bad faith (e.g. Forum Case No. 1873874, Enterprise Holdings, Inc. v. Carolina Rodrigues \/ Fundacion Comercio Electronico; CAC Case No. 102696, AMUNDI ASSET MANAGEMENT v. Fundacion Comercio Electronico; CAC Case No. 102688, Novartis AG v. Fundacion Comercio Electronico).\r\n\r\nOn these bases, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith.\r\n", "rights": "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). ", "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). ", "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": [ "Mgr. Vojtěch Chloupek" ], "date_of_panel_decision": "2020-03-14 00:00:00", "informal_english_translation": "The Complainant submitted evidence that it is the registered owner of the international trademark registration 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. ", "decision_domains": { "BOEHRINGERINGELHEIMPPETREBATES.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }