Complainant is Boehringer Ingelheim Pharma GMBH & CO. KG, Germany, represented by Nameshield, France.
Respondent is Privacy Protect, LLC (PrivacyProtect.org) / Yabani Eze, Sugarcane Internet Nigeria Limited, Nigeria.
The disputed domain name <boehringeringelheimpetrebates.co> is registered with Sav.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2020. On July 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 3, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 3, 2020.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2020. Respondent did not submit any response. Accordingly, the Center notified the parties of Respondent’s default on August 26, 2020.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on September 1, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant is a pharmaceutical group of companies with origins in Germany, reporting 50,000 employees worldwide and net sales of 18,997 million EUR in 2019.
Complainant is the proprietor of numerous registrations for the BOEHRINGER-INGELHEIM or BOEHRINGER INGELHEIM trademarks (interchangeably, the “Mark”), including the following:
- International trademark No. 221544 for BOEHRINGER-INGELHEIM (word mark), registered on July 2, 1959, for goods in classes 1, 2, 3, 4, 5, 6, 16, 17, 19, 29, 30 and 32;
- International trademark No. 568844 for BOEHRINGER INGELHEIM (word mark), registered on March 22, 1991, for goods in classes 1, 2, 3, 4, 5, 9, 10., 16, 30, and 31.
Complainant operates is primary business website at “www.boehringer-ingelheim.com”, which it registered on August 31, 1995.
The disputed domain name <boehringeringelheimpetrebates.co> was registered by Respondent on July 22, 2020. According to evidence provided by Complainant, it resolved to a website containing pay-per-click (“PPC”) links related to life sciences companies and medical conditions.
Under the first element, Complainant states that its roots go back to 1885, when the company was founded by Alfred Boehringer in Ingelheim am Rhein, Germany. Complainant is today a global company operating in the areas of human pharmaceuticals, animal pharmaceuticals and biopharmaceuticals. The disputed domain name is identical or confusingly similar to Complainant’s Mark, since the disputed domain name wholly incorporates the Mark and is only distinguished from the Mark by the term “pet rebates”, which does not mitigate confusing similarity. The addition of the country-code Top-Level Domain (“ccTLD”) “.co” does not distinguish the disputed domain name from Complainant’s Mark.
Under the second element, Complainant states that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not identified by the Mark in the WhoIs databases as the disputed domain name, nor is Respondent affiliated with or authorized by Complainant in any way. The disputed domain name resolves to a website containing PPC links related to Complainant’s activities, which is neither a legitimate noncommercial use nor a bona fide offering of goods and services. Finally, the disputed domain name is being offered for sale.
Under the third element, Complainant states that the disputed domain name is confusingly similar to its trademark BOEHRINGER-INGELHEIM, which is a distinctive and well-known trademark. Complainant contends that Respondent choose to register the disputed domain name to create confusion with the domain name <boehringeringelheimpetrebates.com>, which is used by Complainant to offer rebates on pet health products. Given the distinctiveness of Complainant's Mark and its reputation, it is reasonable to infer that Respondent has registered and used the disputed domain name with knowledge of Complainant's trademark. The disputed domain name resolves to a parking page containing commercial links, and the disputed domain name is offered for sale. Finally, Respondent has already been named in previous UDRP cases.
Respondent did not reply to Complainant’s contentions.
Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain name 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 disputed domain name; and
(iii) Respondent has registered and is using the disputed domain name in bad faith.
Complainant has provided evidence establishing that it has trademark rights in the Mark through registrations in several jurisdictions, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRO Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
In comparing Complainant’s Mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar with the Mark. The disputed domain name contains the Mark in its entirety. The addition of the term “pet rebates” does not prevent a finding of confusing similarity with the Mark, which is clearly recognizable within the disputed domain name.
Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”
Furthermore, it is the well-established view of UDRP panels that the addition of a ccTLD to a domain name does not prevent the domain name from being confusingly similar to the complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, Respondent’s 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; or
(ii) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial 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.
The circumstances stated in the Complaint and evidence in support set forth in the Annexes to the Complaint indicate that, at the time that Respondent registered the disputed domain name, Respondent had no rights or legitimate interests in it. The nature of the disputed domain name, which contain Complainant’s long-established and distinctive Mark together with the term “pet rebates” cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.1.
The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain names or is using the Mark with the permission of Complainant.
There is no evidence of legitimate noncommercial or fair use of the disputed domain name, as <boehringeringelheimpetrebates.co> is used to offer PPC links for the commercial benefit of Respondent.
The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Pursuant to WIPO Overview 3.0, section 2.1, and cases cited thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the disputed domain name. Considering the similarity between Complainant’s Mark and the disputed domain name and the fact that the disputed domain name resolves to a website offering PPC links in fields similar to those for which Complainant has established trademark rights, there can be no finding of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) that Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds bad faith registration under Policy, paragraph 4(b)(iv). Complainant’s rights in the Mark predate by decades the registration of the disputed domain name. The Panel agrees with previous UDRP panels that the BOEHRINGER-INGELHEIM Mark is highly distinctive. The disputed domain name contains Complainant’s Mark in its entirety, with the addition of the term “pet rebates”, which does not prevent a finding likelihood of confusion and indeed strengthens the association with Complainant’s own domain <boehringeringelheimpetrebates.com>. It is implausible the Respondent was unaware of Complainant’s Mark. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith.
Having established that the disputed domain name was registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the disputed domain name. The Panel finds that Respondent has demonstrated bad faith use in establishing and operating a website offering PPC links in fields similar to that of Complainant, and that the disputed domain name was offered for sale for an amount significantly exceeding the registration costs. Moreover, Respondent has previously engaged in such conduct as evidenced by previous UDRP decisions.
Respondent has failed to file any response or provide any evidence of actual or contemplated good faith use.
The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <boehringeringelheimpetrebates.co> be transferred to Complainant.
Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: September 15, 2020