According to paragraph 4(a) of the UDRP Policy the Complainant is required to prove each of the following three
elements to obtain the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
I. RIGHTS AND IDENTITY OR CONFUSING SIMILARITY
The Complainant has established that it has rights in the company name "BOEHRINGER INGELHEIM" and the trademark "BOEHRINGER-INGELHEIM" since 1959. The Complainant's trademark was registered prior to the registration of the disputed domain names (September 25, 2017) and is widely well-known just as the activity of the Complainant.
The Panel finds that the domain name <boehringer-ingeheim.com> is confusingly similar to the Complainant's trademark and company name, since it is consensus view of UDRP Panels that adding, deleting or substituting letters or numbers of the Complainant’s registered mark does not preclude a finding of confusing similarity. Therefore, slight differences, as the deletion of the letter "L" of the word "INGELHEIM" of the Complainant’s trademark and company name and the addition of a hyphen between the words the Complainant's company name are insufficient to negate the confusingly similarity between the disputed domain name and the Complainant's marks.
UDRP Panels also agree that the top-level domain (TLD), in this case <.com>, is usually to be ignored for the purpose of determination of identity or confusing similarity between the disputed domain name and the trademark of the complainant as it is a technical requirement of registration (see paragraph 1.11.1 WIPO Overview 3.0).
The similarity of the disputed domain name to the Complainant's marks, is likely to lead to confusion and/or association for the Internet users.
Accordingly, the Panel finds that the Complainant has proven the first element of the paragraph 4(a) of the UDRP Policy.
II. LACK OF RIGHTS OR LEGITIMATE INTERESTS
It is a consensus view of UDRP Panels that the Complainant shall establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name to shift the burden of proof to the Respondent (see paragraph 2.1 of the WIPO Overview 3.0: "[...] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.")
The Complainant has no relationship with the Respondent whatsoever. The Respondent has never received any approval of the Complainant, expressed or implied, to use the Complainant's trademark or any other mark or domain name identical or confusingly similar to such mark.
As per the WHOIS records, confirmed by the Registrar, the Respondent is "Cimpress Schweiz GmbH" and there is no evidence that the Respondent has been commonly known by the domain name <boehringer-ingeheim.com> or has acquired any rights in a trademark or trade name corresponding to the disputed domain name. The Respondent was involved in other typosquatting cases before the CAC in which the Panels decided the transfer of the domain names to the Complainant (CAC 101623 <baehringer-ingelheim.com>; CAC 101588 <boehrnger-ingelheim.com>).
The elements that the disputed domain name resolves to parking page displaying "sorry, we couldn't find that page" and the Respondent has not replied to the cease and desist letter of the Complainant makes it likely that the Respondent lacks rights and/or legitimate interests in respect of the domain name.
The Panel finds that the Complainant has established its prima facie case and the Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate any rights or legitimate interests in the disputed domain name. Thus, the Panel is satisfied that the Complainant has met the second requirement of the paragraph 4(a) of the UDRP Policy.
III. BAD FAITH REGISTRATION AND USE
Given the distinctiveness and reputation of the Complainant's trademark and activity, it is inconceivable that the Respondent could have registered the disputed domain name without actual knowledge of the Complainant's rights in such marks.
Considering:
- that the Respondent has registered the disputed domain name confusingly similar to the well-known trademark and company name of the Complainant, by deleting the letter "L" of the word "INGELHEIM" of the Complainant’s trademark and company name and adding a hyphen between the words of the Complainant's company name and by creating a likelihood of confusion with the Complainant's marks the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website;
- that the Respondent was involved in other typosquatting cases against the Complainant before the CAC and, hence, it is involved in a pattern of conduct;
- that the disputed domain name resolves to a parking page displaying "sorry, we couldn't find that page";
- the failure of the Respondent to reply to the cease and desist letter sent by the Complainant or to submit a response or to provide any evidence of actual or contemplated good faith use,
this Panel finds that the Complainant has discharged the burden of proof under paragraph 4(a)(iii) of the UDRP Policy and the domain name has been registered and is being used in bad faith.
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