Boehringer Ingelheim Pharma GmbH & Co.KG v. michael mcgavin
Claim Number: FA1809001806976
Complainant is Boehringer Ingelheim Pharma GmbH & Co.KG (“Complainant”), represented by Enora Millocheau of Nameshield, France. Respondent is michael mcgavin (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <boehringer-ingelheiim.us>, registered with NameCheap, Inc.
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 September 20, 2018; the Forum received payment on September 20, 2018.
On September 20, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <boehringer-ingelheiim.us> domain name are registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 September 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 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@boehringer-ingelheiim.us. Also on September 21, 2018, 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 October 16, 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 is a German family-owned pharmaceutical group of companies with roots going back to 1885. Complainant has become a global research-driven pharmaceutical enterprise and has today 181 affiliates and some 50,000 employees. Complainant has rights in the BOEHRINGER INGELHEIM mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 641,166, registered Feb. 5, 1957).
2. Respondent’s <boehringer-ingelheiim.us>[i] domain name is identical or confusingly similar to Complainant’s mark as it adds the letter “I,” a dash, and the country code top-level domain (“ccTLD”) to Complainant’s mark.
3. Respondent has no rights or legitimate interests in the <boehringer-ingelheiim.us> domain name. Respondent is not commonly known by the domain name, as the WHOIS information lists the registrant as “Michael MCGAVIN.” Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the mark for any purpose.
4. Further, Respondent 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 uses the domain name to host a parked webpage displaying commercial pay-per-click links. Additionally, Respondent’s domain name is merely a typosquatted variation of Complainant’s BOEHRINGER INGELHEIM mark.
5. Respondent registered and uses the <boehringer-ingelheiim.us> domain name in bad faith. Respondent has attempted to attract Internet users for commercial gain to his own website where it hosts a pay-per-click webpage. Further, Respondent merely adds an additional letter “I” to Complainant’s mark, intended to capitalize on a common typographical error made by Internet users.
6. Finally, given the distinctiveness of the Complainant's trademark and reputation, it is reasonable to infer that the Respondent registered the domain name with full knowledge of the Complainant's mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BOEHRINGER INGELHEIM mark. Respondent’s domain name is confusingly similar to Complainant’s BOEHRINGER INGELHEIM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <boehringer-ingelheiim.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 claims rights in the BOEHRINGER INGELHEIM mark through its registration of the mark with the USPTO (e.g. Reg. No. 641,166, registered Feb. 5, 1957). 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). Accordingly, the Panel holds that Complainant has established rights in the BOEHRINGER INGELHEIM mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <boehringer-ingelheiim.us> domain name is identical or confusingly similar to Complainant’s mark as it adds the letter “I,” a dash, and the ccTLD to Complainant’s mark. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for a mark for the purposes of Policy ¶ 4(a)(i). See OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015 (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). The Panel therefore finds that the <boehringer-ingelheiim.us> domain name is confusingly similar to the BOEHRINGER INGELHEIM 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 <boehringer-ingelheiim.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 <boehringer-ingelheiim.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 “Michael MCGAVIN” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the BOEHRINGER INGELHEIM mark. Panels may use these assertions as evidence. 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). Accordingly, the Panel agrees that Respondent is not commonly known by the <boehringer-ingelheiim.us> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent uses the domain name to host a parked webpage displaying commercial pay-per-click links. Using the resolving website of a domain name incorporating the mark of another to offer generic links to third-party services does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides a screenshot of the resolving webpage, which displays links such as “Assurance Auto” and “Booking.” Accordingly, Respondent’s use of the domain name to commercially benefit from pay-per-click links fails to confer rights and legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
Additionally, Complainant claims Respondent engages in typosquatting by intentionally misspelling Complainant’s mark in the domain name. Registering a domain name containing common typing errors to a complainant’s mark can indicate a lack of rights and legitimate interests in a domain name under Policy ¶ 4(a)(ii). See Webster Financial Corporation and Webster Bank, National Assocation v. Pham Dinh Nhut, FA1502001605819 (Forum Apr. 17, 2015) (“Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).”). Here, the domain name only adds an additional letter “I” along with a hyphen to Complainant’s mark. Thus, Respondent’s domain name is a typosquatted version of Complainant’s mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <boehringer-ingelheiim.us> domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the <boehringer-ingelheiim.us> domain name to commercially benefit by offering links to third-party services. Using a domain name under the circumstances of this case that trades upon the goodwill of a complainant for commercial gain shows bad faith under Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). As mendtioned, Complainant provides a screenshot of the resolving webpage, which displays links such as “Assurance Auto” and “Booking.” Accordingly, the Panel holds that Respondent has attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Further, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the BOEHRINGER INGELHEIM mark at the time of registering the <boehringer-ingelheiim.us> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name shows 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 given the distinctiveness of the Complainant's trademark and reputation and long-standing use of its mark, it is reasonable to infer that the Respondent registered the <boehringer-ingelheiim.us> domain name with full knowledge of the Complainant's mark. The Panel agrees with Complainant and finds 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 <boehringer-ingelheiim.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 24, 2018
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