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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim Pharma GmbH & Co. KG v. Philana Dhimkana

Case No. D2006-1594

 

1. The Parties

The Complainant is Boehringer Ingelheim Pharma GmbH & Co. KG, Ingelheim, Germany, represented by Hofstetter, Schurack & Skora Patent-und Rechtsanwдlte, Germany.

The Respondent is Philana Dhimkana, Andheri, Mumbai, India.

2. The Domain Name and Registrar

The domain name at issue <boehringeringelheimpharmaceuticals.com> is registered with Melbourne IT trading as Internet Names Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2006. On December 19, 2006, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On December 20, 2006, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 January 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2007.

The Center appointed Linda Chang as the sole panelist in this matter on February 13, 2007. 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 Germany based pharmaceutical company operating globally. It was founded in 1885 by Albert Boehringer in Ingelheim, Germany. Nowadays the Complainant has become a group of companies with 143 affiliates and 37,000 employees worldwide.

The distinctive part of its name “Boehringer Ingelheim” is a registered trademark in over 80 countries/areas of the world.

The Respondent is an individual from India who registered the domain name at issue in January 2006. The Respondent is the owner of 221 domain names.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant states that it started in 1885 and today has developed into a group of companies with about 37,000 employees and 143 affiliate companies operating around the world. Its Annual Report 2004 indicates the worldwide net sales is about 8,157 billion eruos in that year and is ranked in the world’s top 20 leading pharmaceutical companies. After the long-standing and extensive use of the trademark, the Complainant states that “boehringeringelheim” has become a distinctive identifier of itself and its products.

The Complainant also states that Boehringer Ingelheim is first its company name which is protected as a common law trademark right or as an unregistered trademark according to the German Trademark Act and is secondly a registered trademark in over 80 countries of the world.

The Complainant further asserts that the domain name at issue differs only in the word ‘pharmaceuticals’, which is a descriptive term of the pharmaceutical industry. Therefore the Complainant states that the only distinctive part of the domain name at issue is “boehringeringelheim” and this part is identical with or confusingly similar to its company name and trademark.

Rights or legitimate interests

The Complainant contends that the elements set forth in Paragraph 4(c) of the Policy are not present. In particular, to its best knowledge, the Respondent is not the holder of the trademark BOEHRINGERINGELHEIMPHARMACEUTIVALS, nor does it use the trademark BOEHRINGER INGELHEIM or the domain at issue in connection with offering its own goods or services. The Complainant also states that the Respondent is not an authorized dealer, distributor or licensee of the Complainant.

Bad faith registration and use

The Complainant asserts that registration of several domain names identical with or similar to a another party’s trademarks indicates bad faith of the domain name holder and that registration of a domain name incorporating another party’s famous trademark does not confer any rights or legitimate interests in the domain name to the Respondent, but rather constitutes bad faith under Paragraph 4(c) of the Policy (See Medisite S.A.R.L. v. Intellisolve Limited, WIPO Case No. D2000-0179; Caesars World, Inc. v. Chester Vargas / Latin American Financial Holdings Group, WIPO Case No. D2005-0362).

The Complainant further asserts that the domain name at issue is used for a website with sponsored listings to health-related links (Annex 8), which indicates that the Respondent knows well about the Complainant and discloses the Respondent’s bad faith in attracting the internet users to the website of a potential competitor by registering and using the domain name at issue.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceeding:

(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.

A. Identical or Confusingly Similar

The Complainant is the registered owner of the trademark BOEHRINGER INGELHEIM in over 80 countries of the world. The domain name at issue <boehringeringelheimpharmaceuticals.com>, apart from the generic term ‘pharmaceuticals’ and the generic indicator of gTLD “.com”, is clearly identical with or confusingly similar to the name “Boehringer Ingelheim” in which the Complainant has trademark rights.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent is not known by the subject domain name and is not authorized to use the Complainant’s mark. Although the Respondent default does not mean it will automatically lose the case, the information provided to the Administrative Panel does not lead to any of the situations as provided under Para. 4(c) of the Policy that would justify the Respondent’s possession of legitimate rights or interests in the domain name at issue.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) provides for the implication of evidence of bad faith in the circumstances that:

(iv) by using the domain names, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s 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 the website or location or of a product or service on the website or location.

The domain name at issue consists of 3 words: “Boehringer”, which is the family name of the founder of the Complainant; “Ingelheim”, which is the name of the place where the Complainant was first set up; and “pharmaceuticals”, which is the descriptive term of the pharmaceutical industry in which the Complaint has been operating since 1885. The long-standing and extensive use of the trademark by the Complaint leads to an inference that the choice of words of the domain name at issue was not by accident. This is especially supported by the Respondent’s using the domain name at issue for a website with sponsored listings to health-related links. This situation falls within Paragraph 4(b)(iv).

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <boehringeringelheimpharmaceuticals.com> be transferred to the Complainant.

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Linda Chang
Sole Panelist

Dated: February 27, 2007