Boehringer Ingelheim Pharma GmbH & Co.KG v. Fred Bei / 24hws.com
Claim Number: FA1712001762578
Complainant is Boehringer Ingelheim Pharma GmbH & Co.KG (“Complainant”), represented by Maxime Benoist of Nameshield, France. Respondent is Fred Bei / 24hws.com (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iboehringer.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 13, 2017; the Forum received payment on December 13, 2017.
On December 13, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <iboehringer.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2018 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@iboehringer.us. Also on December 13, 2017, 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 January 4, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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.
A. Complainant
1. Complainant registered the BOEHRINGER mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,365,035, registered Oct. 8, 1985). Respondent’s <iboehringer.us>[1] domain name is confusingly similar to Complainant’s mark as it incorporates the whole mark before adding the letter “i” at the beginning and the “.us” country code top-level-domain (“ccTLD”).
2. Respondent has no rights or legitimate interests in the <iboehringer.us> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent displays sponsored links on the resolving website and lists the domain name for sale.
3. Respondent registered and uses the <iboehringer.us> domain name in bad faith. Respondent lists the disputed domain name for sale. Respondent intentionally attracts, for commercial gain, Internet users otherwise seeking Complainant to Respondent’s own website for Respondent’s commercial gain. Respondent had actual knowledge of Complainant’s rights in the BOEHRINGER mark prior to registration of the disputed domain name. Respondent failed to respond to Complainant’s cease and desist letters.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BOEHRINGER mark. Respondent’s domain name is confusingly similar to Complainant’s BOEHRINGER mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <iboehringer.us> domain name and that Respondent registered and uses the 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 that Complainant must 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of 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 draw such inferences it 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.”).
Complainant has rights in the BOEHRINGER mark based upon registration with the USPTO (e.g. Reg. No. 1,365,035, registered Oct. 8, 1985). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i)”). Accordingly, the Panel finds that Complainant has established rights in the BOEHRINGER mark.
Next, Complainant argues that Respondent’s <iboehringer.us> domain name is confusingly similar to Complainant’s mark as it incorporates the whole mark before adding the letter “i” at the beginning and the “.us” ccTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See ModCloth, Inc. v. James McAvoy, FA 1629102 (Forum Aug. 16, 2015) (“The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark because it differs from Complainant’s mark by merely adding the letter ‘L’ . . . ”); see also Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity). The Panel therefore finds that the <iboehringer.us> domain name is confusingly similar to the BOEHRINGER mark under Policy ¶4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <iboehringer.us> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <iboehringer.us> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Fred Bei/24hws.com” as the registrant. There is no evidence in the record to show that Respondent has ever been legitimately known by the BOEHRINGER mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Further, Complainant has provided evidence that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the domain name. Accordingly, the Panel holds that Respondent is not commonly known by the <iboehringer.us> domain name under Policy ¶ 4(c)(iii).
Complainant contends Respondent does not use the <iboehringer.us> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Use of a domain name incorporating the mark of another to host unrelated, pay-per-click links does not demonstrate a bona fide offer per Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iv). See SimScale GmbH v. Oliver Sharp, FA1401001537384 (Forum Feb. 3, 2014) (holding that the respondent’s “use of the disputed domain name to promote links to unrelated third parties is not protected as a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).”). Complainant has shown that Respondent displays sponsored links on the resolving website. The Panel agrees with Complainant and finds Respondent lacks rights and legitimate interests in the <iboehringer.us> domain name under Policy ¶¶ 4(c)(ii) & (iv).
Complainant also has provided evidence that Respondent lists the domain name for sale. Listing a domain name for sale under the circumstances of this case can demonstrate that a respondent lacks rights and legitimate interests in a domain name per Policy ¶¶ 4(c)(ii) & (iv). See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”). The Panel agrees with Complainant which is further evidence of Respondent’s lack of rights and legitimate interests in the <iboehringer.us> domain name under Policy ¶¶ 4(c)(ii) & (iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues Respondent intentionally attracts, for commercial gain, Internet users otherwise seeking Complainant to Respondent’s own website for Respondent’s commercial gain. Complainant asserts Respondent profits from click-through fees on the resolving website of the domain name that wholly incorporates Complainant’s BOEHRINGER mark. Use of a domain name for this purpose is sufficient for a finding of bad faith per Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). The Panel may agrees that Respondent is most likely profiting from the misuse of the <iboehringer.us> domain name and finds Respondent registered and uses the domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant alleges Respondent had actual knowledge of Complainant’s rights in the BOEHRINGER mark prior to registration of the <iboehringer.us> domain name. Actual knowledge does adequately show bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of the BOEHRINGER mark due to the distinctiveness of Complainant’s trademark and the reputation associated with Complainant’s longstanding business. The Panel agrees and concludes that the record supports the Complainant’s contention that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <iboehringer.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson Panelist
Dated: January 9, 2018
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