WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim Pharma Gmbh & Co. Kg. v. Teck Keong Fong

Case No. D2020-1867

1. The Parties

The Complainant is Boehringer Ingelheim Pharma Gmbh & Co. Kg., Germany, represented by Nameshield, France.

The Respondent is Teck Keong Fong, Singapore.

2. The Domain Name and Registrar

The disputed domain name <boehringer-ingeihem.com> (the “Domain Name”) is registered with Instra Corporation Pty Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2020. On July 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 20, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 20, 2020, 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 amended Complaint on July 20, 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 the Respondent of the Complaint, and the proceedings commenced on July 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2020.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 18, 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.

4. Factual Background

The Complainant is a limited partnership company headquartered in Ingelheim am Rhein, Germany, and a part of the family-owned Boehringer Ingelheim pharmaceutical group. Boehringer Ingelheim has been producing pharmaceutical products since 1885 and is today one of the world’s largest pharmaceutical companies, with achieving sales in 2019 of nearly EUR 19 billion. The group develops and sells human pharmaceuticals, animal health products, and biopharmaceuticals, which are advertised and distributed globally. The Complainant holds numerous domain names based on its name and mark, operating a corporate website at “www.boehringer-ingelheim.com” (the “Complainant’s website”) since 1995.

The Complainant owns many registered trademarks incorporating the BOEHRINGER INGELHEIM name. These include International Trademark Number 221544 for BOEHRINGER-INGELHEIM as a word mark (registered July 2, 1959) and International Trademark Number 568844 for BOEHRINGER INGELHEIM as a word mark (registered March 22, 1991).

The Registrar reports that the Domain Name was registered on July 16, 2020. The registrant is the Respondent Teck Keong Fong, who has not replied to correspondence from the Complainant or the Center and has not submitted a Response in this proceeding.

The Complainant demonstrates that on July 17, 2020, the day after it was registered, the Domain Name resolved to a parking page. This page did not mention the Domain Name; it consisted entirely of an advertisement for the website hosting services of OnlyDomains, which is also a domain name registrar. At the time of this Decision, the Domain Name redirects to the Complainant’s website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to its registered BOEHRINGER INGELHEIM and BOEHRINGER-INGELHEIM trademarks and represents an instance of typosquatting, a deliberate misspelling of distinctive and well-known marks designed to mislead Internet users for commercial gain. The Complainant denies that the Respondent has permission to use its marks and contends that the Respondent lacks any evident legitimate interests in the Domain Name. The Complainant argues that inactive (parking) use of the Domain Name reflects bad faith, when “[…] it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be Illegitimate.”

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 divest a respondent of a domain name, a complainant must demonstrate each of the following:

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

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

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

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a reasoned but relatively straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Domain Name is comprised of a string that is identical to the first part of the Complainants’ registered BOEHRINGER INGELHEIM and BOEHRINGER-INGELHEIM trademarks, the family name “Boehringer”, followed by a hyphen (which also appears in one of the cited trademarks) and then a slightly misspelled version of the “Ingelheim” geographic name that forms the second part of the registered trademarks. The generic Top-Level Domain (“gTLD”) “.com” “is viewed as a standard registration requirement” and as such is normally disregarded under the first element of the Policy. See WIPO Overview 3.0, section 1.11.2.

The Panel finds that the Domain Name is confusingly similar to the Complainant’s cited trademarks and concludes, therefore, that the first element of the Complaint has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; 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 or service mark at issue.

Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated its trademark rights and a lack of permission for the Respondent to use the Complainant’s mark in the Domain Name. It appears to be an instance of typosquatting a distinctive and well-established trademark. The Respondent has not made active use of the Domain Name for a website, and the Respondent has not submitted a Response claiming rights or legitimate interests in the Domain Name.

The Panel concludes that the Complainant prevails on the second element of the Complaint.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “[…] shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

It is not known whether the Respondent directed the parking of the Domain Name immediately after registration, or how long this occurred. But under the terms of the ICANN-approved registration agreement, the Respondent retains responsibility for the use of the Domain Name in a manner that does not interfere with the rights of others. The Domain Name parking, which advertised the services of a web hosting company, represents a misdirection of Internet users to a third-party site for commercial purposes.

It appears that the Respondent has more recently redirected the Domain Name to the Complainant’s website. The Panel notes that such redirection to an authentic website is often a feature of phishing schemes, lending credibility to fraudulent emails sent from domain names confusingly similar to those of the actual trademark holder. The point is that it is easy to anticipate illicit and opportunistic uses of this Domain Name, based on a deliberate misspelling of a distinctive and well-established trademark, while it is hard to conceive of any plausible, legitimate use of the Domain Name. The Respondent has not come forward with any such explanation. In addition, the Panel finds that the Respondent’s redirection of the Domain Name to the Complainant’s website can also establish bad faith insofar as the Respondent retains control over the redirection thus creating a real or implied ongoing threat to the Complainant. See WIPO Overview 3.0, section 3.1.4.

The Panel concludes that the Domain Name was, more probably than not, registered and used in bad faith.

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 Domain Name, <boehringer-ingeihem.com>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: August 31, 2020