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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Boehringer Ingelheim Pharma GmbH & Co. KG, v. Jonathan Valicenti
Case No. D2006-0910
1. The Parties
The Complainant is Boehringer Ingelheim Pharma GmbH & Co. KG, Ingelheim, Germany, represented by Hofstetter, Schurack & Skora Patent-und Rechtsanwдlte, Germany.
The Respondent is Jonathan Valicenti, Canada.
2. The Domain Names and Registrar
The disputed domain names <boehringeringelheimindia.com> and <flomaxmr.com>
are registered with GoDaddy.com, Inc. (“GoDaddy”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2006. On July 20, 2006, the Center transmitted by email to GoDaddy a request for registrar verification in connection with the domain names at issue. On July 21, 2006, GoDaddy 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 July 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2006.
The Center appointed Michael A. Albert as the Sole Panelist in this matter on September 1, 2006. 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.
On September 18, 2006, the Panel issued a procedural
order, requesting more data from Complainant on ownership of the FLOMAX mark.
On September 20, 2006, Complainant responded to the order with a supplement
to its Complaint. The Respondent did not submit any response to this supplement.
4. Factual Background
As Respondent failed to respond to Complainant’s contentions, the Panel finds that the assertions of fact in the Complaint are undisputed. Complainant is one of the world’s 20 leading pharmaceutical companies. The Complainant’s name is “Boehringer Ingelheim Pharma”: the “GmbH & Co. KG” simply indicates Complainant’s legal status. As Complainant is a pharmaceutical company, the “Pharma” portion of the name is merely a description of Complainant’s business. Therefore, the dominant part of the Complainant’s company name is “Boehringer Ingelheim”.
Complainant has provided evidence that it uses “Boehringer Ingelheim” as a trade name for itself and the 143 companies that make up the Boehringer Ingelheim group of companies throughout the world. 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 Annual Report 2004 of the Boehringer Ingelheim group, the worldwide net sales of Boehringer Ingelheim in 2004 amounted to 8,157 million Euros, with about 37,000 employees and 143 affiliate companies spread around the globe.
Complainant has provided undisputed evidence of use in commerce by the companies of the Boehringer Ingelheim group of the BOEHRINGER INGELHEIM mark for pharmaceutical products, as well as Complainant’s multiple registrations of the mark in many countries, including Canada, Germany and the United States.
Complainant has provided evidence that the FLOMAX mark is extensively used by the Complainant and other companies of the Boehringer Ingelheim group for pharmaceuticals, specifically for the treatment of benign prostatic hyperplasia (i.e., urinary tract disfunction). Flomax is the “global topseller” of Complainant’s human pharmaceuticals. In 2004 the global net sales of Flomax were 736 million Euros. Complainant has provided undisputed evidence that this drug is also sold under the name FLOMAX MR.
The Panel notes that the trademark registrations for FLOMAX are listed on the trademark office websites of the United States and Canada as being owned by Astellas Pharma Inc (“Astellas”), a Japanese company that appears to be unrelated to Complainant. Complainant has provided undisputed evidence, however, that Astellas assigned its rights in these registrations to Complainant.
Respondent registered <boehringeringelheimindia.com>
on March 28, 2005, and <flomaxmr.com> on February 12, 2005. Both domain
names resolve to web pages operated by PharmaWeb Canada, a health care product
and service company that appears to be a competitor to Complainant. The web
page to which <flomaxmr.com> resolves sells, amongst other products, a
generic version of Complainant’s Flomax drug.
5. Parties’ Contentions
Complainant first contends that the disputed domain names are identical or confusingly similar to trademarks or service marks in which Complainant has rights. Complainant argues that it operates under the trade name Boehringer Ingelheim, and has established rights in this mark via long use in commerce and multiple registrations. Complainant argues that the addition of a geographic term like “India” to this mark does not prevent the <boehringeringelheimindia.com> from being confusingly similar to its mark. Complainant also argues that it has rights in the marks FLOMAX and FLOMAX MR by virtue of its significant sales under those marks, and that the <flomaxmr.com> domain name is identical or confusingly similar to those marks.
Complainant next contends that Respondent has no rights or legitimate interests in either of the domain names, as he has not used the domain names in connection with a bona fide offering of goods or services, has not been commonly known by either of the domain names, and is not making a legitimate noncommercial or fair us of the domain names.
Complainant finally argues that the domain names were registered and are being used in bad faith, due to Respondent’s awareness of Complainant’s rights in the trademarks, the fact that the domain names include the entirety of Complainant’s marks, and Respondent’s use of the domain names to redirect users to the website of a pharmaceutical competitor.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
A. Identical or Confusingly Similar
The Panel finds that the <boehringeringelheimindia.com> domain name is identical or confusingly similar to a mark in which Complainant has rights. First, the Panel finds that Complainant has submitted sufficient evidence of its rights in the BOEHRINGER INGELHEIM mark, in the form of its use of the mark as its trade name, its long-established commercial use of the mark, and its multiple registrations of the mark.
Second, the <boehringeringelheimindia.com> domain name is confusingly
similar to that mark. The “.com” top-level domain name is properly
ignored in this analysis. See Segway LLC v. Chris Hoffman, WIPO
Case No. D2005-0023 (February 25, 2005) (“[I]t is well-established
that the top-level domain name (i.e. “.com”) should be disregarded”).
Furthermore, the addition of a geographic term (i.e. “India”) to
a trademark does not sufficiently distinguish the disputed domain name from
the Complainant’s trademark. See, e.g., Advance Magazine Publishers
Inc. and Les Publications Condй Nast S.A. v. ChinaVogue.com, WIPO
Case No. D2005-0615 (August 9, 2005), and cases cited therein (“The
Panel finds, as have numerous previous UDRP panels, that the addition of a geographic
term to a well known trademark does not sufficiently distinguish the disputed
domain name from the Complainant’s mark.”). The remaining portion
of the domain name, namely the words “boehringeringelheim”, are
identical to Complainant’s BOEHRINGER INGELHEIM mark.
The Panel also finds that the <flomaxmr.com> domain name is identical
or confusingly similar to marks in which Complainant has rights. Complainant
has demonstrated that it has rights in the FLOMAX and FLOMAX MR marks, as a
result both of its substantial sales of products under those marks and ownership
of trademark registrations in FLOMAX. Complainant’s rights in these marks
have been acknowledged in Boehringer Ingelheim Pharma GmbH & Co. KG v.
Domains by Proxy, Inc / Pradeep Dadha / Jonathan Valicenti, WIPO
Case No. D2006-0465 (June 14, 2006). Disregarding the “.com”
top-level domain name, the <flomaxmr.com> domain name is identical to
Complainant’s FLOMAX MR trademark, and confusingly similar to its FLOMAX
trademark, as it adds only two arbitrary letters at the end of the trademark.
The Panel finds that Complainant has established under paragraph 4(a)(i) of the Policy that the disputed domain names are identical or confusingly similar to marks in which Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has established that Respondent has no rights or legitimate
interests in either of the disputed domain names. First, Respondent failed to
file a response, which, in appropriate circumstances after a prima facie
showing by Complainant, can suggest that a respondent lacks rights or legitimate
interests as to that domain name. See Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., WIPO Case No. D2000-1221
(December 4, 2000) (finding that respondent’s failure to respond in a
UDRP proceeding can be construed, in appropriate circumstances, as an admission
that it has no legitimate interest in the contested domain names). Second, as
a result of not filing a response, Respondent has failed to contradict Complainant’s
evidence that Respondent has not demonstrated any of the factors under paragraph
4(c) of the Policy. There is no evidence that Respondent is commonly known by
the names “boehringeringelheimindia” or “flomaxmr”.
See Charles Jourdan Holding AG v. AAIM, WIPO
Case No. D2000-0403 (June 27, 2000) (panel held that a lack of rights or
legitimate interest could be found where (1) respondent is not a licensee of
complainant; (2) complainant’s rights in its related trademarks precede
respondent’s registration of the contested domain name; and (3) respondent
is not commonly known by the domain name in question). All of these factors
Nor is there any evidence that Respondent is using the domain names in connection
with a bona fide offering of goods or services or use of the pages for
a legitimate noncommercial or fair use. Instead, both domain names resolve to
pages operated by competitor of Complainant, one of which sells a generic version
of the Flomax drug. This simply cannot constitute a bona fide offering
of services. See Am. Online, Inc. v. Fu, WIPO
Case No. D2000-1374 (December 11, 2000) (“[I]t would be unconscionable
to find … a bona fide offering of services in a respondent’s operation
of [a] web-site using a domain name which is confusingly similar to the complainant’s
mark and for the same business”).
The Panel finds that Respondent has no rights or legitimate interests in the domain names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain names were registered and used in
bad faith. Given Complainant’s long-established use of the BOEHRINGER
INGELHEIM mark, its significant (co-marketing) sales of drugs under the FLOMAX
and FLOMAX MR marks, and Respondent’s use of the domain names to redirect
users to the website of a competitor, the Panel is convinced that Respondent
was aware of Complainant and its activities when he registered the domain names.
See Wal-Mart Stores, Inc. v. Jeff Milchen, WIPO
Case No. D2005-0130 (April 10, 2005), and cases cited therein (respondent’s
knowledge of complainant’s mark at the time of registration of the domain
name suggests bad faith).
Furthermore, the fact that the domain names include the entire BOEHRINGER INGELHEIM,
FLOMAX, and FLOMAX MR marks also supports a finding of bad faith. See; Cellular
One Group v. Paul Brien, WIPO Case No. D2000-0028
(March 10, 2000); Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO
Case No. D2000-0003 (February 18, 2000).
In addition, the <flomaxmr.com> domain name redirects to a site featuring
generic versions of Flomax for sale. Bad faith can be shown in part “trading
on the value established by Complainant in its marks to attract users to a website
which includes Complainant’s” marks. Lilly ICOS LLC v. Tudor
Burden d/b/a BM Marketing/Burden Marketing, WIPO
Case No. D2005-0313 (June 21, 2005).
Finally, Respondent is using widelyknown trademarks (including Complainant’s
company name) to attract visitors to the websites of a potential competitor.
This strongly suggests bad faith. See Lilly ICOS LLC v. Emilia Garcia,
WIPO Case No. D2005-0031 (March 29, 2005)
(redirection to website of competitor offering generic version of complainant’s
drug evidence of bad faith).
The Panel finds that Respondent has registered and used the disputed domain
names in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <boehringeringelheimindia.com> and <flomaxmr.com> be transferred to the Complainant.
Michael A. Albert
Dated: October 11, 2006