DECISION

Boehringer Ingelheim Pharmaceuticals, Inc. and Boehringer Ingelheim International GmbH v. Uwe Hofman d/b/a Add4 Internetdienste

Claim Number:  FA0306000162192

PARTIES

Complainant is Boehringer Ingelheim Pharmaceuticals, Inc., Ridgefield, CT and Boehringer Ingelheim International GmbH, Ingelheim am Rhein, Germany (“Complainant”) represented by Timothy X. Witkowski.  Respondent is Uwe Hofmann Add4 Internetdienste, Groeditz, Germany (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bi-pharm.com>, registered with Key-Systems Gmbh.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 12, 2003; the Forum received a hard copy of the Complaint on June 16, 2003.

On June 18, 2003, Key-Systems Gmbh confirmed by e-mail to the Forum that the domain name <bi-pharm.com> is registered with Key-Systems Gmbh and that Respondent is the current registrant of the name. Key-Systems Gmbh has verified that Respondent is bound by the Key-Systems Gmbh registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On June 18, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 8, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@bi-pharm.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 14, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <bi-pharm.com> domain name is confusingly similar to Complainant’s family of marks.

2. Respondent does not have any rights or legitimate interests in the <bi-pharm.com> domain name.

3. Respondent registered and used the <bi-pharm.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant holds multiple registrations for its family of marks.  Complainant holds two registrations for its BOEHRINGER INGELHEIM mark including United States Patent and Trademark Office (“USPTO”) Reg. Nos. 718,142, registered on July 11, 1961 and 2,096,336, registered on September 16, 1997.  Complainant also holds USPTO Reg. No. 641,166, registered on February 5, 1957, for the BOEHRINGER-INGELHEIM mark.  Complainant began using its family of marks in 1912.

Complainant markets pharmaceutical products using its family of marks.  In addition, Complainant has registered and uses the <bi-pharma.com> domain name in connection with its pharmaceuticals business. 

Due to its length, consumers often shorten or abbreviate the BOEHRINGER INGELHEIM mark to the acronym “bi” and “pharm,” which is a recognized shortened form of pharmaceuticals.  Accordingly, “bi-pharm” is connected with the sale of pharmaceutical products by Complainant. 

Respondent registered the <bi-pharm.com> domain name on December 20, 2002.  Previously, Respondent was using the disputed domain name in connection with offering goods or services by linking Internet users to websites that were unrelated to Complainant’s business.  At the website hosted by the disputed domain name, Respondent included a disclaimer when it posed the question, “Searched for: BOEHRINGER INGELHEIM Pharmaceuticals, Inc?” and offered a link purporting to be Complainant’s website by stating, Click here: <us.boehringer-ingelheim.com>.  Currently, Respondent is using the disputed domain name to link Internet users to an astrology website at the <horoskop.bz> domain name.   

DISCUSSION

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."

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(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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 and is being used in bad faith.

Identical and/or Confusingly Similar

Respondent has established rights in it family of marks through registration with the USPTO and continuous use in commerce since 1912.  See Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that Complainant has common law rights in the mark FISHTECH which it has used since 1982).

The <bi-pharm.com> domain name is confusingly similar to Complainant’s family of marks because Complainant’s marks are frequently shorted to “bi-pharm.”  Based on the common abbreviation of Complainant’s family of marks and the lack of evidence presented by Respondent, the Panel finds that the disputed domain name is not sufficiently distinguishable from Complainant’s mark.  See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.   

Rights or Legitimate Interests

Respondent did not submit a Response to the Panel in this proceeding.  Since Respondent has not provided any circumstances showing that it had rights or legitimate interests in the disputed domain name the Panel chooses to accept as true all allegations and inferences as set forth by Complainant in the Complaint.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (stating that “[i]n the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

The WHOIS contact information does not indicate that Respondent is commonly known by the <bi-pharm.com> domain name.  In addition, the disputed domain name is unique and is very similar to Complainant’s registered domain name and Complainant’s long established family of marks.  Thus, the Panel finds that Policy ¶ 4(c)(ii) does not apply to Respondent.  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent”).

Respondent is not using the disputed domain name in connection with a bona fide offering of goods or service or for a legitimate noncommercial or fair use.  Initially Respondent was using the  <bi-pharm.com> domain name to link Internet users to websites that offered goods and services unrelated to Complainant’s business.    Currently, Respondent is using the disputed domain name to link Internet users to an astrology website, which is also unrelated to Complainant’s business.  Thus, the Panel finds that Policy ¶ 4(c)(i) and Policy ¶ (4)(c)(iii) do not apply to Respondent.  See Wells Fargo & Co. v. Nadim, FA 127720 (Nat. Arb. Forum Nov. 29, 2002) (finding that Respondent’s use of Complainant’s WELLS FARGO mark to redirect Internet users to a domain name featuring magazine subscriptions was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); see also Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where Respondent was using Complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under Complainant’s mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied. 

Registration and Use in Bad Faith

The Panel is authorized to look at the “totality of the circumstances” when it is determining whether Respondent registered and used the disputed domain name in bad faith.  In its earlier use of the <bi-pharm.com> domain name, Respondent included a disclaimer and a link to Complainant’s website.  Thus, it is clear that Respondent

knew about Complainant’s family of marks and Complainant’s similar domain name, <bi-pharma.com>.  Further, Respondent’s disclaimer shows that Respondent was aware of the likelihood of confusion that the <bi-pharm.com> domain name would cause among Internet users who were searching for Complainant’s website.  Thus, the Panel concludes that Respondent registered and used the disputed domain name in bad faith.  See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding bad faith where Respondent failed to provide any evidence to controvert Complainant's allegation that it registered the domain name in bad faith and where any future use of the domain name would do nothing but cause confusion with Complainant’s mark, except in a few limited noncommercial or fair use situations, which were not present).

Although Respondent included a link to Complainant’s website, Respondent’s inclusion of a disclaimer on the website associated with the <bi-pharm.com> domain name is evidence of bad faith by itself.   See Thomas & Betts Int’l v. Power Cabling Corp., AF-0274 (eResolution Oct. 23, 2000) (finding bad faith based upon initial interest confusion despite disclaimer and link to Complainant’s website on Respondent’s website); see also Ciccone v. Parisi (Madonna.com), D2000-0847 (WIPO Oct. 12, 2000) (finding that “Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith.  First, the disclaimer may be ignored or misunderstood by Internet users.  Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions.  Such confusion is a basis for finding a violation of Complainant’s rights”).

Furthermore, Respondent’s current use of the <bi-pharm.com> domain name is evidence of bad faith.  Respondent is using the disputed domain name to attract Internet users to an astrology website by creating a likelihood of confusion with Complainant’s family of marks as to the sponsorship of its website.  Since there is no evidence to the contrary, the Panel reasonably infers that Respondent is commercially benefiting by redirecting Internet users to the astrology website.  Thus, the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Goto.com, Inc., v. Walt Disney Co., 200 F.3d 1199, 1206 (9th  Cir. 2000) (“With respect to Internet services, even services that are not identical are capable of confusing the public”).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <bi-pharm.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  July 28, 2003

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