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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Unasi Inc.

Case No. D2005-1219

 

1. The Parties

The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland.

The Respondent is Unasi Inc., Panama.

 

2. The Domain Names and Registrars

The disputed domain names <hoffmannlaroche.com> and <rocheuse.com> are registered with DomainDoorman, LLC and Capitoldomains, LLC, respectively.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2005. On November 25, 2005, the Center transmitted by email to DomainDoorman, LLC and Capitoldomains, LLC a request for registrar verification in connection with the domain names at issue. On December 1, 2005, Capitoldomains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On January 3, 2006, DomainDoorman, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 January 4, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2006.

The Center appointed Ian Blackshaw as the sole panelist in this matter on February 24, 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.

 

4. Factual Background

The Complainant, together with its affiliated companies, is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, with global operations in more than 100 countries. The Complainant’s mark ROCHE, which serves as a house-mark, is protected as a trademark in over 100 countries worldwide. By way of examples, reference is made to the International Registration Nos. 2R135432 and 832631, and also to the Community Trademark Registration No. 000223107 for the mark ROCHE. The priority date for the mark ROCHE is December 16, 1913. Copies of the corresponding Registration Certificates have been provided to the Panel.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

A1. The domain name is confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))

The domain names of the Respondent are confusingly similar to the Complainant’s mark since they both incorporate the trademark ROCHE in its entirety.

For the domain name <rocheuse.com>, the mere adding of the generic word “use” is not sufficient to distinguish the disputed domain name from Complainant’s trademark ROCHE.

The domain name <hoffmannlaroche.com> creates confusion with the Complainant’s company name F. Hoffmann-La Roche AG (emphasis added).

In view of the fact that the Complainant is amongst the major pharmaceutical and diagnostic enterprises in the world, the mark ROCHE is very well-known. The notoriety increases the likelihood of confusion.

Furthermore, the Complainant’s use and registration of the mark ROCHE predate the Respondent’s registration of the domain names.

Therefore, the domain names are confusingly similar to the trademark of the Complainant.

A2. The Respondent has no rights or legitimate interests in respect of the domain names;

(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))

The Complainant has exclusive rights for ROCHE, as mentioned above, and no license, permission, authorization or consent has been granted to use ROCHE in the domain names. Furthermore, it is obvious that the Respondent uses the domain names for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark ROCHE.

Therefore, the domain names in question clearly allude to the Complainant.

According to the file rocheuse.zip/rocheuse.avi, a copy of which has been provided to the Panel, the Respondent is using the domain name <rocheuse.com> to redirect Internet users to the website “www.hoffmannlaroche.com”, which is also registered by the Respondent, and comprises sponsored links and pop-up advertisements.

According to OfficeMax, Inc. and OMX, Inc. v. Yong Li, WIPO Case No. D2003-0060: “the deliberate use of a confusingly similar domain name to redirect Internet users (...) to unrelated sites displaying pop-up advertisements from which the Respondent most likely generates revenues, cannot grant Respondent’s legitimate rights or interests in the disputed domain name”.

The Respondent’s only reason for registering and using the contested domain names is to benefit from the reputation of the trademark ROCHE and to illegitimately trade on its fame for commercial gain and profit.

There is no reason why the Respondent should have any rights or interests in such domain names.

A3. The domain names were registered and are being used in bad faith;

(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))

The domain names were registered in bad faith, since, at the time of the registrations, i.e. on October 20, 2005, for the domain name <rocheuse.com> and on September 10, 2005, for the domain name <hoffmannlaroche.com>, the Respondent had, no doubt, knowledge of the Complainant’s well-known mark/company ROCHE.

The domain names are also being used in bad faith. This is obvious since, when viewing the Internet websites of the Respondent, one realizes that, by using the domain names to direct Internet users to a search engine website, where links to third parties are displayed, the Respondent is attempting, for commercial purposes, to attract Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of the products or services posted on or linked to the Respondent’s websites.

On the Respondent’s websites, a link to “Roche” appears, but it does not direct Internet users to any official website of the Complainant.

The domain names at issue appear to be used as advertising links to websites promoting and/or offering the products and services of third parties, especially in the pharmaceutical field, this being the business area of the Complainant. According to Gianfranco Ferre’ S.p.A. v. Unasi Inc, WIPO Case No. D2005-0622: “this use of the Domain Name (..) is unable to be considered as a bona fide use of the domain name in issue”.

The Respondent generates profit, if not directly from the redirection of the domain name, at least from the pop-up advertisements, which automatically appear when the user types the address “www.hoffmannlaroche.com”.

Furthermore, according to the above-mentioned case: “the Respondent has been involved in at least 8 Mandatory Administrative Procedures regarding 37 domain names. All these procedures ended with the transfer of the disputed domain names to Complainants”.

Furthermore, according to Volvo Trademark Holding AB v. Unasi, Inc, WIPO Case D2005-0556: “the practice of registering domain names containing the trademarks of other companies can indicate that the contested domain names were registered and are being used in bad faith. Ownership of numerous domain names that corresponds to the names or marks of well-known business entities suggests intent to profit from the activities of others”.

The Respondent, by using the disputed domain names, is intentionally misleading the consumers and confusing them so as to attract them to other websites making them believe that the websites behind those links are associated to or recommended by the Complainant.

As a result, the Respondent may generate unjustified revenues for each click-through by on-line consumers of the sponsored links. The Respondent is, therefore, illegitimately capitalizing on the fame of the ROCHE trademark.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions or take any part in them.

 

6. Discussion and Findings

To qualify for cancellation or transfer of the domain names at issue, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondent failed to file a response, the panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default (Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is established case law that, where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The domain name at issue incorporates the trademark ROCHE, which is owned and has been commercially used and promoted by the Complainant in and for the purposes of its business and the sale of its products as a trademark for many years. Furthermore, the Panel accepts and recognizes that the Complainant’s trademark ROCHE is well-established and well-known to and has a good reputation in the pharmaceutical industry.

The Panel agrees with the Complainant’s contention that neither the addition of the word “use”, which is descriptive nor the name “hoffmann”, which is part of the Complainant’s corporate name, add any distinctiveness or source of origin elements whatsoever to the domain names at issue, which essentially incorporate the Complainant’s well-known trademark and business name.

In view of this, the Panel finds that the domain names registered by the Respondent are identical or confusingly similar to the trademark ROCHE, in which the Complainant has clearly demonstrated, to the satisfaction of the Panel, that it has well-established and commercially valuable rights through registration and long exclusive commercial use.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the domain name at issue. Indeed, in view of the worldwide notoriety of the Complainant’s trademark ROCHE and its products, the Respondent must have known, when registering the domain names at issue, that the Respondent could not have - or, indeed, claim - any such rights or interests.

In particular, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the domain names at issue for websites that purport to be those of the Complainant.

Likewise no evidence has been adduced that the Respondent has commonly been known by the domain names; nor is it making a legitimate non-commercial or fair use of the domain names; nor has the Respondent been authorized or licensed by the Complainant to use the Complainant’s well-known trademark ROCHE as part of the domain names at issue.

Furthermore, the adoption by the Respondent of domain names confusingly similar to the Complainant’s trademark inevitably leads to the diversion of the Complainant’s consumers to the Respondent’s websites (see further on this point below) and the consequential tarnishing of the Complainant’s trademark. In other words, the Respondent is trading, for commercial gain, on the good name and worldwide notoriety and reputation of the Complainant’s business and trademark and unfairly attracting to its own business and activities the substantial goodwill that the Complainant has established over many years throughout the world in its name and mark, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.

Therefore, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the domain names at issue.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.”

Based on the evidence provided in the case file, the Panel agrees with the Complainant’s contention that the Respondent, by registering the domain names at issue, is trading on the Complainant’s valuable goodwill established in its trademark ROCHE over many years. Indeed, in the absence of any evidence to the contrary, of which none is forthcoming on the part of the Respondent, the Respondent’s registration of the domain names at issue would not appear to be accidental, but deliberate and calculated to exploit the Complainant’s renown in the pharmaceuticals’ field. This is reinforced by the sponsored links and pop up advertisements on the websites of the Respondent (mentioned above by the Complainant), which refer not to the Complainant or its products and services but to third parties and their products and services. Moreover, as noted by the Complainant above, the Respondent already has a previous history of acting in this unfair manner in respect of many other domain names.

Again, by registering and using the domain names at issue incorporating the Complainant’s trademark, ROCHE, the Respondent is misleading Internet users and consumers into thinking that it is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant, none of which, in fact, is the case.

The Respondent appears to be trading on the Complainant’s goodwill and reputation, which the Complainant has built up over many years. This, without any explanations by the Respondent to the contrary, of which none have been forthcoming, constitutes bad faith.

Furthermore, the failure of the Respondent to file any answer to the present Complaint or otherwise participate in the present proceedings, in the view of the Panel, also shows bad faith on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the domain name at issue in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <hoffmannlaroche.com> and <rocheuse.com> be transferred to the Complainant.


Ian Blackshaw
Sole Panelist

Dated: February 27, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1219.html

 

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