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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Boehringer Ingelheim Pharma GmbH & Co. KG v. G Design

Case No. D2007-0569

 

1. The Parties

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

The Respondent is G Design, of Taiyuan, Shanxi, China.

2. The Domain Name and Registrar

The disputed domain name <boehringeringleheim.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2007. On April 17, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On April 17, 2007, Go Daddy Software 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 April 25, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2007.

The Center appointed Ian Blackshaw as the sole panelist in this matter on May 25, 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 one of 143 Companies comprising the Boehringer Ingelheim Group of Companies which operate under that trade name.

The roots of the Complainant and the whole Boehringer Ingelheim Group of Companies go back to the year 1885, when Albert Boehringer founded a chemical factory in Ingelheim, Germany. According to the 2004 Annual Report of the Boehringer Ingelheim Group, the worldwide net sales of Boehringer Ingelheim in 2004 amounted to 8157 million euros, with around 37.000 employees and 143 affiliate companies around the globe. The Boehringer Ingelheim Group is one of the world`s 20 leading pharmaceutical companies.

Furthermore, the Complainant is the owner of several trademarks BOEHRINGER INGELHEIM (word marks as well as word and device marks).

The Panel has been provided with a list of some of the Complainant`s BOEHRINGER INGELHEIM trademarks. This list shows that the trademark protection of “Boehringer Ingelheim” for the Complainant comprises countries and regions like Europe and USA. Printouts of the community trademark and the US registration have also been provided to the Panel.

In all countries where the trademark BOEHRINGER INGELHEIM is protected, the mark has been extensively used for decades; in particular, for goods of the international classes 1 and 5 (chemical products for use in industry, pharmaceutical and veterinary products and products for health care).

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

A1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The relevant part of a domain name in respect of the similarity analysis is the second-level domain. The second-level-domain name <boehringeringleheim> is orally identical and visually essentially identical with the Complainant’s company name and its registered trademarks. The disputed name differs only in the second part of the domain name “…ingleheim.com”. The correct spelling would be “…ingelheim”. Here only the letters “l” and “e” are inverted.

This conduct is commonly referred to as “typosquatting” and creates virtually identical and/or confusingly similar marks to the Complainant’s trademark (see Edmunds.com, Inc. v. Yingkun Guo, dba This domain name is 4 sale, WIPO Case No. D2006-0694; Longs Drug Stores California, Inc. v. Shep Dog, WIPO Case No. D2004-1069). Ample authority exists to support the conclusion that “essential” identity is sufficient for the purposes of satisfying the second element above (see Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489 (disputed domain names included “disneychanel.com”, “disneywolrd.com”, “walddisney.com”); United Feature Syndicate, Inc. v. Mr. John Zuccarini, WIPO Case No. D2000-1449 (disputed domain name was <dillbert.com>)).

A2. The Respondent has no rights or legitimate interests in respect of the domain name

The elements set forth in the Policy, para. 4(c) are not present.

In particular, to the best of the Complainant’s knowledge, (1) the Respondent is not the holder of a trademark BOEHRINGERINGLEHEIM or any similar trademark;

(2) The Respondent does not use the trademark BOEHRINGER INGELHEIM and the domain at issue in connection with offering any own goods or services; and

(3) The Respondent is not an authorised dealer, distributor or licensor of the Complainant.

A3. The domain name was registered and is being used in bad faith

The registration of several domains which are identical or similar to third partiesґ trademarks indicate bad faith of the holder of the domain name (The Common Fund for Nonprofit Organizations v. Modern Limited Cayman Web Development a/k/a Cayman Trademark Trust, WIPO Case No. D2005-1250). As shown below, the Respondent is already “well-known” as a cybersquatter.

The registration of a domain name incorporating another`s famous mark does not confer any rights or legitimate interests in the domain name to Respondent, but rather constitutes bad faith under para. 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 domain name <boehringeringleheim.com> is used for a website with sponsored listings to health-related links. This proves, on the one hand, that the Respondent knows the Complainant well and thus registered the domain in bad faith (Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964). On the other hand, the domain name is, therefore, used in a way that might lead to confusion. The internet user could be misled and might assume that the respective website is at least sponsored by the Complainant.

The fact that the domain name at issue includes the entire trade name/trademark of the Complainant is a further factor supporting bad faith (Segway LLC v. Chris Hoffman, WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028). The domain name could only be used in good faith by the owner of the respective right or by a licensee.

The Respondent is and was owner of several domain names that are obviously infringing third parties’ rights. A list of some of the domains names currently owned by the Respondent has been provided to the Panel.

The Respondent has registered domain names like:

<wwweurovision.com>

<t-mobel.com>

<willseyinstitute.com>

<toshibadvd.com>

<toshibadvdplayer.com>

Furthermore, the Respondent has already been the respondent in several UDRP proceedings, such as:

- Columbia Insurance Company v. G Design, WIPO Case No. D2006-1617: <pamperedchef.org>

- 1-1800-Flowers.com, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc., v. G Design, WIPO Case No. D2006-0977: <fanneimay.com>, <1800flowers.com>, etc.

- Metropolitan Life Insurance Company v. G Design, NAF Case No. FA0612000874496: <metllife.com>, <mettlife.com>

Copies of the respective decisions have also been provided to the Panel.

All these proceedings were decided against the Respondent.

B. Respondent

The Respondent, having been duly notified of the Complaint, did not reply to the Complainant’s contentions nor take any other part in the present proceedings.

 

6. Discussion and Findings

To qualify for transfer of the domain name at issue, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

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

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

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

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondent failed to file a Response, the Panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default (Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is well established in previous WIPO UDRP cases that, where a domain name incorporates a complainant’s registered mark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

In the present case, the disputed domain name incorporates almost identically the Complainant’s trademark BOEHRINGER INGELHEIM; the only differences, which are immaterial for present purposes, are that the name is conjoined and, in the second name, the ‘e’ and the ‘l’ are reversed. In the absence of any explanation on the part of the Respondent, of which none is forthcoming, the Panel agrees with the Complainant’s contention that this misspelling would appear to be deliberate and, as such, constitutes a classic case of so-called ‘typosquatting’ intended to cause confusion to Internet users seeking information on the Complainant and its products and services. Further support for this inference will be found later in section C.

Furthermore, previous WIPO UDRP cases have often held similar misspellings to be confusingly similar to the relevant misspelled mark. See, for example, Media West-GRS, Inc., Media West-MNC, Inc., Gannett Pacific Corporation, Gannett Co., Inc., Gannett River States Publishing Corp., Guam Publications, Incorporated v. Moniker Privacy Services/Forum LLC/Registrant (187640) info@fashionid.com, WIPO Case No. D2006-0478.

In view of all this, the Panel finds that the disputed domain name registered by the Respondent is confusingly similar to the trademark BOEHRINGER INGELHEIM, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established trademark rights through registration and also through prior use in commerce for many years.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of 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;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. Indeed, in view of the Complainant’s well-known trademark BOEHRINGER INGELHEIM and its products sold under that brand, the Respondent must in all likelihood have known, when registering the disputed domain name that the Respondent could not have - or, indeed, claimed - any such rights or interests. This, in the view of the Panel, is also reinforced by the evident misspelling of the Complainant’s trademark in the disputed domain name. In addition, if the Respondent had any such rights and interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done

Nor, according to the Complainant, has the Respondent been authorized or licensed by the Complainant to use the Complainant’s trademark BOEHRINGER INGELHEIM in the disputed domain name.

Also, the Panel finds 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 or services. On the contrary, the Respondent has used the disputed domain name for a website that purports to be and gives the impression of emanating from or, at least, in some way, being associated with the well-known business carried on by the Complainant.

Likewise no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor is the Respondent making a legitimate non-commercial or fair use of the disputed domain name. In fact, as regards the latter point, the Respondent is offering on its website sponsored listings to other health-related links.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on its website or location.”

Based on the evidence provided in the case file, the Panel agrees with the Complainant’s contention that the Respondent, by registering the disputed domain name, is trading on the Complainant’s valuable goodwill established in its trademark BOEHRINGER INGELHEIM.

Indeed, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s trademark inevitably leads to the diversion of the Complainant’s consumers to the Respondent’s website (see further on this point below) and the consequential tarnishing of the Complainant’s trademark. In other words, the Respondent is trading for commercial gain on the good name and reputation of the Complainant’s business and its trademark BOEHRINGER INGELHEIM and thereby unfairly attracting to its own business the goodwill that the Complainant has established in its trademark over several years around the world, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.

By registering and using the disputed domain name incorporating the Complainant’s well-known trademark, BOEHRINGER INGELHEIM, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, according to the case file is, in fact, the situation. Such misleading consequences, in the view of the Panel, constitute bad faith on the part of the Respondent.

The Panel also agrees with the Complainant’s contention that the registration of the domain name that incorporates another’s well-known trademark constitutes bad faith for the reasons stated and based on the previous UDRP cases cited above.

Furthermore, the Respondent’s previous pattern of behavior in registering domain names which infringe third parties’ rights, as mentioned and evidenced above by the Complainant, also, in the opinion of the Panel, suggests bad faith on the part of the Respondent.

Likewise, the failure by the Respondent to reply to the Complainant’s Complaint or otherwise take any part in these proceedings also, in the view of the Panel, indicates bad faith on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

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 <boehringeringleheim.com> be transferred to the Complainant.

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Ian Blackshaw
Sole Panelist

Dated: May 29, 2007