WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim Pharma Gmbh & Co. KG v. Arianna Gorska

Case No. DME2015-0004

1. The Parties

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

The Respondent is Arianna Gorska of Drancy, France.

2. The Domain Name and Registrar

The disputed domain name <boehringeringelheim.me> is registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2015. On May 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 19, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”) as adopted by doMEn, d.o.o. (doMEn), the registry operator of the .ME TLD on April 30, 2008, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) approved by doMEn on October 1, 2012, 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 May 26, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2015.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on June 19, 2015. 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 family-owned pharmaceutical group of companies with roots going back to 1885, when it was founded by Albert Boehringer in Ingelheim am Rhein, Germany.

Ever since, Boehringer has become a global research-driven pharmaceutical enterprise and has today about 140 affiliated companies worldwide with roughly 46,000 employees. In 2013 alone, net sales of the Boerhringer group of companies amounts to about EUR 14.1 billion.

The Complainant further submitted evidence that it is the owner of numerous national, European and international Trademarks for the Boehringer and BOEHRINGER INGELHEIM brands.

The Complainant has also registered the Boehringer and BOEHRINGER INGELHEIM brands as domain names worldwide, including, amongst others, <boehringer.com> and <boehringer-ingelheim.com>.

The disputed domain name <boehringeringelheim.me> was registered on January 22, 2015.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

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

The Complainant contends that the disputed domain name comprises the term “boehringeringelheim”, which is identical to the mark BOEHRINGER INGELHEIM (the “Trademark”) of which the Complainant is and has been for many years the right holder in numerous countries.

The Complainant further submits that the ccTLD “.me” in the disputed domain name has no impact on the overall impression of the dominant portion of the disputed domain name and does not avoid the likelihood of confusion between the disputed domain name and the Complainant’s Trademark.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is not related in any way with the Complainant. Furthermore, the Complainant submits that it does not carry out any activity for, nor has any business with the Respondent.

The Complainant asserts that it has trademark rights for “boehringeringelheim” and no license or authorization was granted to the Respondent to use the Trademark in the disputed domain name or in any other manner.

Finally, the Complainant argues that the disputed domain name displays commercial links and is on sale. Accordingly, the Complainant contends that the Respondent is using the disputed domain name with the sole purpose of selling the disputed domain name and is thus not using such disputed domain name in any way that would give it any rights or legitimate interests.

(c) The disputed domain name was registered and is being used in bad faith.

The Complainant submits that the disputed domain name was registered and used in bad faith by the Respondent.

First, the Complainant contends that the Respondent has registered the disputed domain name “in knowledge of the famous trademark BOEHRINGER INGELHEIM”.

Second, on the basis of the fact that the disputed domain name is on sale, the Complainant contends that the Respondent has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring such domain name, for valuable consideration in excess of out-of-pocket costs directly related to the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Language of the proceeding

In accordance with the Rules, paragraph 11(a), “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.

The Complainant requested in the Complaint for English to be the language of the proceeding. In support of its request, the Complainant evidences that the Registration Agreement is in English which has been confirmed by the Registrar.

This Panel decides that it will accept the Complaint as filed in English and issue a decision in English.

B. Substantive Elements of the Policy

Paragraph 15(a) of the Rules instructs the Panel to “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”.

Notwithstanding a respondent’s default, the complainant must nevertheless still establish each of the three elements required by paragraph 4(a) of the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 and paragraph 4.6, and the relevant decisions cited therein). Nonetheless, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and, in the absence of exceptional circumstances, draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

As a result, asserted facts that are not unreasonable will be taken as true by this Panel.

Finally, in accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, this Panel will examine whether each of the following three elements are present:

(i) the disputed domain name registered by the Respondent 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 disputed domain name; and

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

Consequently, this Panel shall further analyse the eventual concurrence of these three grounds in the present case.

C. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to BOEHRINGER INGELHEIM (since well before the disputed domain name was registered).

Also, despite the lack of clearly identified evidence by the Complainant, it follows from certain exhibits as well as this Panel’s independent researches, that the Complainant has a lengthy use of its Trademark for its commercial activities, and in particular in relation to goods and services in the areas of human pharmaceutical and animal health.

Secondly, the disputed domain name fully incorporates the Complainant’s distinctive BOEHRINGER INGELHEIM Trademark in which the Complainant has exclusive rights. This Panel finds, similarly to other UDRP panels, that it is established that where the domain name incorporates a complainant’s registered trademark, as the dominant element, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy (Aktiebolaget Electrolux v. Diana Virginina Rodríguez Cazorla, Govone Develops, S.L., WIPO Case No. D2014-0940; Nokia Corporation v. Jameela Seif, WIPO Case No. D2009-1665; Société Nationale des Chemins de Fer Français SNCF v. Assane Amadou, WIPO Case No. D2012-0714).

Thirdly, this Panel finds, similarly to other UDRP panels, that the addition of a generic top level domain to the disputed domain name does not constitute an element so as to avoid confusing similarity for purposes of the Policy.

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s BOEHRINGER INGELHEIM Trademark.

D. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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”.

This Panel finds in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademarks has been granted to the Respondent. Thus, the Respondent has no rights in the term “boehringeringelheim'”.

Examination of the website operating under the disputed domain name shows no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services.

Moreover, this Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the disputed domain name.

This Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. In fact, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the disputed domain name, and finds after reviewing the website as evidenced by the Complainant, and as it appears following this Panel’s independent researches, that the Respondent had or should have had full knowledge of the trademark and that its only intention is for commercial gain by depriving the Complainant from a strategic domain name. In this respect, this Panel notes that the disputed domain name displays commercial links and is on sale through a third party plateform for an amount of USD 6,500.

For all the foregoing reasons, this Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name.

E. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location”.

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would an instance of “registration and use of a domain name in bad faith”.

First of all, with regard to the Respondent’s registration of the disputed domain name, this Panel believes, after reviewing the website as evidenced by the Complainant that the Respondent must have known and been aware of the rights on the prior BOEHRINGER INGELHEIM Trademark and the associated products and services at the time of the registration of the disputed domain name.

Furthermore, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s use of the disputed domain name.

In this respect, this Panel believes after reviewing the site at the disputed domain name and its content as evidenced by the Complainant that the Respondent registered and uses the disputed domain name for the purpose of selling, renting or otherwise transferring it. More particularly, this Panel finds that the Respondent offered the disputed domain name for sale via a third party platform at a price (USD 6,500) that substantially exceeds the Respondent’s documented out-of-pocket costs. This Panel therefore concludes that the disputed domain name was registered and is being used for the purpose of commercial sale.

Such behaviour is indicative of bad faith within the meaning of paragraph 4(b)(i) of the Policy, on the part of the Respondent.

In light of the foregoing, this Panel finds that the disputed domain name was registered and used by the Respondent in bad faith under 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 <boehringeringelheim.me> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: July 3, 2015