Decision for dispute CAC-UDRP-103633

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

Boehringer Ingelheim Pharma GmbH & Co.KG is the owner, among others, of the following trademark registrations related to BOEHRINGER INGELHEIM which enjoy protection in numerous countries:

- Word mark "BOEHRINGER-INGELHEIM", International Registration (WIPO), Registration No. 221544, registered on July 2, 1959 and duly renewed;

- Word mark "BOEHRINGER INGELHEIM", International Registration (WIPO), Registration No. 568844, registered on March 22, 1991 and duly renewed.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant 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. Ever since, Boehringer has become a global research-driven pharmaceutical enterprise and has today about roughly 50,000 employees. The three main business areas of BOEHRINGER INGELHEIM are: human pharmaceuticals, animal health and biopharmaceuticals. In 2019, BOEHRINGER INGELHEIM achieved net sales of around 19 billion euros. The Complainant owns a large portfolio of trademarks including the wording BOEHRINGER INGELHEIM in several countries, as well as many domain names consisting in or including the wording BOEHRINGER INGELHEIM. The disputed domain name <boehringerinelheiimpetrebates.com> was registered on February 25, 2020 and it is direct to a parking page with commercial link.

The Complainant states that the disputed domain name <boehringerinelheiimpetrebates.com> is confusingly similar to its trademark "BOEHRINGER INGELHEIM". In particular, the Complainant contends that the addition of a letter (i) and the deletion of a letter (g) are not sufficient to escape the finding that the domain name <boehringerinelheiimpetrebates.com> is confusingly similar to the Complainant’s trademark also in consideration of the fact that the addition of the wording "petrebates" directly refers to one of the Complainant's business activity carried out through a specific website corresponding to the domain name <boehringeringelheimpetrebates.com> regularly registered by the same Complainant on August 14, 2019.

The Complainant also contends that the Respondent is not known as the disputed domain name and that the same Respondent has no rights or legitimate interests in respect of the domain name <boehringerinelheiimpetrebates.com>. In addition, the Complainant informs that (i) the Respondent is not related in any way with BOEHRINGER INGELHEIM and (ii) 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.

In the Complainant's view, it appears obvious that the Respondent has registered the disputed domain name with full knowledge of the Complainant's trademark "BOEHRINGER INGELHEIM". According to the Complainant, this practical was intentionally designed to be confusingly similar with the Complainant's trademark.

Finally, the Complainant notes that the disputed domain name resolves to a parking page with commercial links and that, in consideration of the above, it is clear that Respondent has attempt to attract Internet users for commercial gain to his own website thanks to the Complainant's trademark "BOEHRINGER INGELHEIM" for its own commercial gain.

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 Policy).

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).

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).

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.

Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, the Complainant must prove that each of the following elements is present:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

1) The Panel finds that the disputed domain name <boehringerinelheiimpetrebates.com> is confusingly similar to the Complainant’s trademark "BOEHRINGER INGELHEIM". The disputed domain name clearly incorporates almost the entirety of the "BOEHRINGER INGELHEIM" trademark as its distinctive element. The addition of a letter (i) and the deletion of a letter (g) are not sufficient to escape the finding that the domain name <boehringerinelheiimpetrebates.com> is confusingly similar to the Complainant’s trademark as Internet users will still recognize, at least prima facie, the "BOEHRINGER INGELHEIM" trademark when facing the domain in dispute. Furthermore, the addition of the descriptive wording “petrebates” in the disputed domain name can be disregarded. In this specific case the Panel notes that the addition of the wording "petrebates" even increases the likelihood of confusion with the Complainant's business activity since the same Complainant uses a domain name (linked to an active website) with the same wording attached to its trademark (<boehringeringelheimpetrebates.com>).
In previous cases almost identical to the one at hand the Panel has declared the confusing similarity between the "BOEHRINGER INGELHEIM" trademark and the domain name (see, among others, Boehringer Ingelheim Pharma GmbH & Co.KG v. Fundacion Comercio Electronico, CAC Case No. 102854 <boehringerringelheimpetrebates.com>; Boehringer Ingelheim Pharma GmbH & Co.KG v. Fundacion Comercio Electronico, CAC Case No. 102871 <boehringeringlheimpetrebates.com>; Boehringer Ingelheim Pharma GmbH & Co.KG v. Fundacion Comercio Electronico, CAC Case No. 10287 <boehringeringelheimppetrebates.com>; Boehringer Ingelheim Pharma GmbH & Co.KG v. Anonymize, Inc., CAC Case No. 102924 <boehringeringelheinpetrebates.com>; Boehringer Ingelheim Pharma GmbH & Co.KG v. Fundacion Comercio Electronico, CAC Case No. 102959 <boehringeringrlheimpetrebates.com>; Boehringer Ingelheim Pharma GmbH & Co.KG v. Fundacion Comercio Electronico, CAC Case No. 102969 <boehringeringgelheimpetrebates.com>; Boehringer Ingelheim Pharma GmbH & Co.KG v. Fundacion Comercio Electronico, CAC Case No.102988 <boehringergelheimpetrebates.com>; Boehringer Ingelheim Pharma GmbH & Co.KG v. Fundacion Comercio Electronico, CAC Case No.103065 <boehringeringeringelheimpetrebates.com>; Boehringer Ingelheim Pharma GmbH & Co.KG v. Fundacion Comercio Electronico, CAC Case No.103132 <boehringerheimpetrebates.com>; Boehringer Ingelheim Pharma GmbH & Co.KG v. Fundacion Comercio Electronico, CAC Case No.103181 <boehringeringelhemipetrebates.com>; Boehringer Ingelheim Pharma GmbH & Co.KG v. Carolina Rodrigues, CAC Case No. 103307 <boehringeringtheimpetrebates.com>; Boehringer Ingelheim Pharma GmbH & Co.KG v. Fundacion Comercio Electronico, CAC Case No.103622 <boehringeringgelheimpetrebates.com>). The Top-Level Domain (“gTLD”) “.com” in the disputed domain name may also be disregarded since the use of a gTLD is technically required to operate the disputed domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name (see for instance Statoil ASA v. Martins Ogemdi, WIPO Case No. D2015-0001). The Complainant therefore succeeds on the first element of the Policy.

2) The Complainant provided prima facie evidence that the Respondent does not have rights or legitimate interests in respect of the disputed domain name as it is not commonly known under the disputed domain name and was never authorized to use the "BOEHRINGER INGELHEIM" trademark by the Complainant. The Respondent, in the absence of any Response, has not shown any facts or element to justify prior rights or legitimate interests in the disputed domain name. The Complainant therefore succeeds on the second element of the Policy.

3) Paragraph 4(b) of the UDRP Policy sets out the following examples of circumstances that will be considered by an Administrative Panel to be evidence of the bad faith registration and use of a domain name:
(i) circumstances indicating that the domain name was registered or acquired 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 domain name registrant's out-of-pocket costs directly related to the domain name; or
(ii) the domain name was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name registrant has engaged in a pattern of such conduct; or
(iii) the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the domain name registrant intentionally attempted to attract for financial gain, Internet users to the registrant's website or other on-line 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.
The above examples are not exclusive and other circumstances may exist that demonstrate the registration and use of a domain name in bad faith.
As to the registration of the disputed domain name in bad faith, the reputation of the Complainant's trademark is such that, in the Panel's view, the Respondent could not ignore the trademark "BOEHRINGER INGELHEIM" at the time of the registration of <boehringerinelheiimpetrebates.com>. This consideration is reinforced by the fact that the Respondent has chosen to register a domain name which reproduces also the wording “petrebates” which is part of a Complainant domain name. It is therefore obvious that the Respondent selected the disputed domain name to create confusion with the domain name <boehringeringelheimpetrebates.com>, used by the Complainant to offer rebates on pet health products. Therefore, it is the Panel's view that the Complainant was in bad faith when it decided to register the domain name in dispute since said registration was done having perfectly in mind the Complainant's trademark and the Complainant's business activity.
Furthermore, there is no evidence that the disputed domain name has been actively used by the Respondent for a website containing a concrete offer of goods and/or services. Instead, it only directs to a parking page containing various commercial links. This circumstance reveals the Respondent’s primary motive in relation to the registration and use of the disputed domain name which is, in the Panel’s view, to profit from the goodwill associated with the Complainant's "BOEHRINGER INGELHEIM". According to previous decisions, by diverting Internet users to the website associated with the disputed domain name, the Respondent is benefiting from pay-per-click revenue and profits, which is evidence of use of the disputed domain name in bad faith (see, Accor SA v. Domain Administrator, PrivacyGuardian.org / Zhichao Yang, WIPO Case No. D2017-1322 and Accor SA v. Jan Everno, The Management Group II, WIPO Case No. D2017-2212). As the conduct described above falls within paragraph 4(b)(iv) of the Policy (see Triumph International Vietnam Ltd v. Tran Quoc Huy, WIPO Case No. D2017-0340). The Panel therefore concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the paragraph 4(a)(iii) of the Policy. The Complainant therefore succeeds also on the third element of the Policy.