Boehringer Ingelheim Pharma GmbH & Co. KG and Boehringer Ingelheim International GmbH v. Williams Shorell / n/a
Claim Number: FA1608001686753
Complainant is Boehringer Ingelheim Pharma GmbH & Co. KG and Boehringer Ingelheim International GmbH (“Complainant”), represented by Steven M. Levy, Pennsylvania, United States. Respondent is Williams Shorell / n/a (“Respondent”), New York, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <atrovent.top>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Preliminary Issue: Multiple Complainants
Two Complainants filed the instant proceeding. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines: “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The Panel finds that these two Complainants are multiple entities who have a sufficient nexus to each claim rights in all domain names identified as listed in the Complainant.
Complainant submitted a Complaint to the Forum electronically August 3, 2016; the Forum received payment August 8, 2016.
On August 5, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <atrovent.top> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 2016, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@atrovent.top. Also on August 9, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant’s Contentions in this Proceeding:
Complainant uses the ATROVENT mark in connection with what has become one of the most well known pharmaceutical preparations for the treatment of chronic obstructive pulmonary disease (“COPD”). Complainant registered the ATROVENT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,026,053, registered Dec. 2, 1975), which demonstrates Complainant’s rights in its mark. See Compl., at Attached Exs. E 1–3. Respondent’s domain is identical to Complainant’s mark, save for the affixation of the generic top-level domain (“gTLD”) “.top.”
Respondent has no rights or legitimate interests in the domain. Respondent is not commonly known by the domain. Further, Respondent is not using the domain in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent’s domain resolves to a website containing extensive advertisements for a variety of products and referring to Complainant’s ATROVENT product on a page dedicated to this medication. See Compl., at Attached Exs. F 1–5.
Respondent registered and is using the domain in bad faith. First, Respondent engaged in a pattern of bad faith registration and use. Second, Respondent’s use of the domain to host competing hyperlinks is evidence of bad faith. Third, because of Complainant’s extensive, international use of the ATROVENT mark, it is clear that Respondent registered the domain with actual knowledge of Complainant’s mark. Finally, Respondent listed false or non-functioning information in the WHOIS record for the domain. According to Google Maps, the physical address listed for Respondent does not exist and, despite listing its City and State as New York, the postal code referenced in the WHOIS record actually refers to the city of Lansing in the state of Michigan. See Compl., at Attached Exs. B, H.
Respondent’s Contentions in this Proceeding:
Respondent did not submit a response in this proceeding. The Panel notes that Respondent registered the domain March 12, 2016.
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Boehringer Ingelheim Pharma GmbH & Co. KG and Boehringer Ingelheim International GmbH. Complainants are both part of the Boehringer Ingelheim group of companies. Given the close legal relationship between Complainants and the fact that each own trademark rights for the ATROVENT mark in different areas of the world, consolidation of the Complaint is appropriate.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and elects to treat them as a single entity in this proceeding.
FINDINGS
Complainant established that it has rights and legitimate interests in the mark contained entirely within the disputed domain name.
Respondent has no such rights or legitimate interests.
Respondent registered and used a disputed domain that is identical to Complainant’s protected marks.
Respondent registered and used the disputed domain name in bad faith..
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical or Confusingly Similar:
Complainant uses the ATROVENT mark in connection with what has become one of the most well known pharmaceutical preparations for the treatment of COPD. Complainant registered the ATROVENT mark with the USPTO (e.g., Reg. No. 1,026,053, registered Dec. 2, 1975), which demonstrates rights in the mark. See Compl., at Attached Exs. E 1–3. The Panel finds that trademark registrations with the USPTO demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant demonstrated rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s domain is identical to Complainant’s mark, save for the affixation of the gTLD “.top.” Panels consistently hold that affixation of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel finds that Respondent’s disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is identical to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the domain. Complainant also contends that Respondent is not commonly known by the domain. The Panel notes that the WHOIS information merely lists “Williams Shorell / n/a” as registrant and that Respondent failed to provide any evidence for the Panel’s consideration. The Panel notes that Attached Exhibit B, the WHOIS information, provides no additional support for any claim by Respondent. For these reasons, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant claims that Respondent is not using the domain in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Complainant asserts that Respondent’s domain resolves to a website containing extensive advertisements for a variety of products and referring to Complainant’s ATROVENT product on a page dedicated to this medication. See Compl., at Attached Exs. F 1–5. Panels have held that a respondent’s use of a domain to host competing hyperlinks does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent engaged in a pattern of bad faith registration and use. Specifically, Complainant argues that Respondent is a serial cybersquatter, having registered several domains that are confusingly similar to well known trademarks. See Compl., at Attached Ex. G-1. Panels have determined that a pattern of bad faith is evident based either on a respondent’s registration of more than one domain in a single proceeding, or on adverse UDRP rulings against a respondent. See Harcourt, Inc. v. Fadness, FA 95247 (Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). This Panel finds that Respondent’s behavior here constitutes a pattern of bad faith registration and use, and finds that Respondent engaged in bad faith under Policy ¶ 4(b)(ii).
Complainant asserts that Respondent’s use of the domain to host competing hyperlinks is evidence of bad faith. Panels have decided that a respondent’s use of a domain to host competing hyperlinks constitutes bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). For this reason, the Panel finds that Respondent registered and is using the domain in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that because of Complainant’s extensive, international use of the ATROVENT mark, it is clear that Respondent registered the domain with actual knowledge of Complainant’s mark. Panels have held that a respondent demonstrated bad faith pursuant to Policy ¶ 4(a)(iii) where the respondent was well aware of the complainant’s mark at the time the Respondent registered the disputed domain name. See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Therefore, the Panel finds that Respondent registered the domain with actual knowledge of Complainant’s mark, thereby violating Policy ¶ 4(a)(iii).
Finally, Complainant claims that Respondent listed false or non-functioning information in the WHOIS record for the domain. According to Complainant, the physical address listed for Respondent does not exist and, despite listing its City and State as New York, the postal code referenced in the WHOIS record actually refers to the city of Lansing in the state of Michigan. See Compl., at Attached Exs. B, H. Panels have decided that a respondent’s use of false WHOIS information can constitute evidence of bad faith. See Quixtar Invs., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (determining that use of false registration information constitutes bad faith). Accordingly, the Panel finds that Respondent registered and is using the domain in bad faith.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <atrovent.top> domain name BE TRANSFERRED from Respondent to Complainant.
Carolyn Marks Johnson, Panelist
Dated: September 20, 2016.
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