WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim Pharma GmbH & Co. KG v. ICS INC./Privacy Protection Service INC., d/b/a PrivacyProtect.org

Case No. D2014-1610

1. The Parties

The Complainant is Boehringer Ingelheim Pharma GmbH & Co. KG of Ingelheim am Rehin, Germany, represented by Schiedermair Rechtsanwälte, Germany.

The Respondent is ICS INC., Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland/Privacy Protection Service INC., d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia.

2. The Domain Name and Registrar

The disputed domain name <wwwcombivent.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 18, 2014. On September 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 22, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 23, 2014.

The Center verified that the Complaint together with the amendment to the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 16, 2014.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on October 21, 2014. 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.

4. Factual Background

The Complainant belongs to the family-owned Boehringer Ingelheim pharmaceutical group of companies with roots going back to 1885, when it was founded by Albert Boehringer in Ingelheim am Rhein, Germany.

The Complainant owns a vast portfolio of brands including the word "combivent", which are used to identify a short-acting bronchodilator that provides two different medicines, ipratropium bromide and albuterol, in a single inhaler.

The COMBIVENT brand is protected worldwide by numerous trademark registrations in favor of the Complainant, since at least 1989.

The Complainant also owns multiple domain names comprising the COMBIVENT trademark, including the domain name <combivent.com>, <combivent.org>, <combivent.biz>, and <combivent.info>.

The Respondent registered the disputed domain name on February 4, 2013.

The Panel tried to access the disputed domain name on October 24, 2014, when there was and there was a pay-per-click ("PPC") page with several links for pharmaceutical products, especially asthma inhalers.

5. Parties' Contentions

A. Complainant

The Complainant makes the following contentions:

(i) The disputed domain name is confusingly similar to a trademark in which Complainant has rights. The Complainant, together with the Boehringer group of companies, is the owner of numerous registered trademarks worldwide relating to the COMBIVENT brand, all of which clearly pre-date the registration of the disputed domain name. Moreover, the Complainant is the owner of numerous domain names relating to the trademark COMBIVENT, the registration of all of which predate the disputed domain name.

UDRP-panels have long held that the addition of a generic Top-Level Domain ("gTLD") suffix is irrelevant in an examination of identity and/or confusing similarity (Credit Management Solutions, Inc. v. Collex Resource Management, WIPO Case No. D2000-0029). The disputed domain name fully comprises the Complainant's registered trademark COMBIVENT (with the mere addition of the prefix "www" for "World Wide Web").

Also, it has been held in numerous UDRP decisions and has meanwhile become a consensus view among Panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9) that the addition of a generic or descriptive term or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the prefix "www" for "World Wide Web" is not at all capable to dispel the confusing similarity arising from the incorporation of the Complainant's COMBIVENT trademark into the disputed domain name. Finally, the fact that the disputed domain name obviously includes a popular typo-squatting (arising from the omission of the standard dot behind "www") is not in contrast to such finding of confusing similarity. Typo-squatted domain names are, on the contrary, intended to be confusing so that Internet users, who unwillingly make common type errors, will enter the typo-squatted domain name instead of the correctly spelt trademark. Accordingly, there is no other way but to find a confusing similarity of the disputed domain name to the Complainant's COMBIVENT trademark.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not granted the Respondent any license or has otherwise permitted the Respondent to use the trademark COMBIVENT or even to apply for any domain name(s) incorporating the said trademark.

To the best of the Complainant's knowledge and information, the Respondent is not making and has not in the past made, nor has it undertaken demonstrable preparations to make use whatsoever of the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods and services. The disputed domain name redirects to a website which provides for hyperlinks to websites of third parties, many of which are direct competitors to the Complainant and its COMBIVENT product on the pharmaceutical market. It is, therefore, evident that the Respondent is seeking typical PPCs or "click-through commissions" from those diverted Internet users who were trying to reach an Internet presence of the Complainant, but due to the confusing similarity of the disputed domain name with the Complainant's trademark COMBIVENT ended up with the Respondent's PPC Internet presence.

To the best of the Complainant's knowledge and information, there is no evidence given that the Respondent is commonly known by the disputed domain name. On the contrary, the Respondent obviously neither owns trademark rights nor any other rights in COMBIVENT or any similar variation(s) thereof, such as the disputed domain name. For more than 20 years, the Complainant has been engaging professional Trademark Watching Services and, since 2006, also Domain Name Watching Services to ensure on an on-going basis that potential conflicts with e.g. the trademark COMBIVENT are immediately noticed and, if necessary, pursued. Those Trademark Watching Services provide their reports on a daily basis which allows the Complainant and its group of companies to react at very short notice and to provide for the necessary legal steps in order to protect its trademark rights. The Complainant, however, has no information on any trademark rights of the Respondent in the said name or any similar variation(s) thereof, such as the disputed domain name. It must, therefore, be held that prima facie the Respondent is not commonly known by the disputed domain name.

Finally, to the best of the Complainant's knowledge and information, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

It is in fact prima facie evident that the Respondent is seeking "pay-per-clicks" or "click- through-commissions" from those diverted Internet users who were trying to reach information on the Complainant, but due to the confusing similarity of the disputed domain name with the Complainant's trademark COMBIVENT ended up with the Respondent's Internet presence at the disputed domain name. It has been held by many WIPO Panelists that such commercial intent cannot be considered as legitimate noncommercial or fair use of the disputed domain name. The Respondent, therefore, prima facie has no rights or legitimate interests whatsoever in respect of the disputed domain name. Against this background, the Respondent carries the burden of proof as to the contrary.

(iii) The disputed domain name was registered and is being used in bad faith. The disputed domain name apparently redirects to a typical PPC website. When typing the disputed domain name into an Internet browser, consumers who unwillingly have made a common type error (e.g. by omitting the dot behind "www") still expect information on the Complainant and its COMBIVENT brand and are thus misled concerning the true nature of the Respondent's website, as they are led to believe that the Respondent is somehow affiliated or linked with the Complainant or that the latter supports somehow – or at least has no objections against – the Respondent's activities. Even if those consumers realize that there is no rightful affiliation with or connection between the Respondent and the Complainant as the trademark owner, the Respondent is still profiting from the consumer's initial confusion as they may be tempted to click on any of the various links featured by the PPC website at the disputed domain name. Accordingly, such exploitation of trademark to obtain commercial gain by "click-through commissions" from the diversion of Internet users is clearly a registration and making use of the respective domain name in bad faith.

Also, it should be noted that the Respondent did not react upon any of the Complainant's pre-procedural attempts to communicate with the Respondent, what may still be considered at least as a further indication that the Respondent has nothing to bring forward in order to justify its apparently unlawful registration and making use of the disputed domain name. It is reasonable to argue that the Respondent is acting as a typical domain name grabber or domainer who is systematically exploiting the trademark rights of third parties by registering typo-squatted domain names to generate PPC commissions. These circumstances – absent any apparent need for the Respondent to use the term "Combivent" – clearly fulfill the prerequisites of the Policy, paragraph 4(b)(i), and are, therefore, further indications of the Respondent's registration and making use of the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:

(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.

A. Identical or Confusingly Similar

The Panel has no doubt that "combivent" is a term directly connected with the Complainant's activities in the pharmaceutical business worldwide.

Annexes C8 to the Complaint show registrations of COMBIVENT trademarks obtained by the Complainant since at least 1989.

The trademark COMBIVENT is wholly encompassed within the disputed domain name.

The disputed domain name differs from the Complainant's trademark basically by the addition of the prefix "www" (a popular acronym for "World Wide Web") as well the gTLD denominator ".com".

Previous UDRP panels have held that the addition of the "www" prefix does not negate confusing similarity. See, e.g., Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286; Société Air France v. Vladimir Federov, WIPO Case No. D2003-0639; Wal-Mart Stores, Inc. v. Longo,WIPO Case No. D2004-0816; Public Service Electric & Gas Company and its affiliates and subsidiaries v. The Whois Privacy Service / Adjaele Global Internet Ltd, WIPO Case No. D2011-1799. Actually, the addition of such prefix may even increase the similarity between the disputed domain name and the Complainant's trademark, as it consists of a common typo-squatting practice, arising from the omission of the standard dot behind the "www" on website addresses.

It is also already well-established that the addition of a gTLD extension such as ". com" is typically irrelevant when determining whether a domain name is confusingly similar to a complainant's trademark.

As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark, and that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:

(i) Before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) The respondent has been commonly known by the domain name; or

(iii) The 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 at issue.

Based on the Respondent's default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.

The present record provides no evidence to demonstrate the Respondent's intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Complainant has shown previous uses of the disputed domain name for the commercial purposes of obtaining PPC revenues and promoting goods that directly compete with the Complainant's COMBIVENT inhaler.

Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) Circumstances indicating that the respondent has registered or acquired the domain name 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 documented out-of-pocket costs directly related to the domain name; or

(ii) The respondent registered the 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 the respondent has engaged in a pattern of such conduct; or

(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

When the disputed domain name was registered by the Respondent (in 2013) the trademark COMBIVENT was already tightly connected to the Complainant's activities in the pharmaceutical business for more than a decade worldwide, being used to identify a bronchodilator inhaler.

Therefore, the Panel concludes that it would not be feasible to consider that the Respondent - at the time of the registration of the disputed domain name - could not have been aware of the Complainant's trademark.

The disputed domain name is being used as a PPC landing page, displaying sponsored links for third party websites that offer competing pharmaceutical products, especially asthma inhalers. Therefore, in doing so, the Respondent:

(i) created a likelihood of confusion with the Complainant's trademark;

(ii) most likely obtained click-through revenue from this practice; and

(iii) deprived the Complainant from selling its products to prospective clients who are clearly looking for the Complainant and, at the same time, promoted products offered by the Complainant's competitors.

In situations like this, former UDRP decisions have considered this type of use of a domain name enough to demonstrate bad faith. For reference on the subject, see Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474; see also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element of the Policy.

7. Decision

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 <wwwcombivent.com> be transferred to the Complainant.

Rodrigo Azevedo
Sole Panelist
Date: November 4, 2014