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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Digi Real Estate Foundation

Case No. D2005-1286

 

1. The Parties

The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by Jйrфme Rhein, Switzerland.

The Respondent is Digi Real Estate Foundation, Panama City, Panama.

 

2. The Domain Name and Registrar

The disputed domain name <rochebioscience.com> is registered with ! $ ! Bid It Win It, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2005. On December 12, 2005, the Center transmitted by email to ! $ ! Bid It Win It, Inc. a request for registrar verification in connection with the domain name(s) at issue. On December 16, 2005, ! $ ! Bid It Win It, Inc. 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 together with the amendment to 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 December 20, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2006.

The Center appointed Torsten Bettinger as the Sole Panelist in this matter on January 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 is one of the world’s leading healthcare groups in the fields of pharmaceuticals and diagnostics with operations in more than 100 countries. The Complainant’s mark ROCHE is protected as trademark in a multiple of countries worldwide.

Complainant submitted screen shots of Respondent’s web pages that show that use of the domain name redirects a user to websites that offer advertisements for a variety of products or to websites that offer information about biotechnology that compete with Complaints’ products.

 

5. Parties’ Contentions

A. Complainant

Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

In reference to the element in paragraph 4(a)(i) of the Policy, Complainant argues that the word “bioscience” is descriptive and therefore does not eliminate the similarity between Complainant’s trademark ROCHE and the disputed domain name.

In reference to the element in paragraph 4(a)(ii) of the Policy, Complainant contends that none of the situations described in paragraph 4(c) of the Policy can be established in this case. Complainant states that Respondent has no permission or authorization to use the mark ROCHE in its domain name and that the use of Complainant’s trademark in a domain name in order to redirect Internet users interested in Complainant’s goods to sites that offer links to competing websites is not a use in connection with a bona fide offering of goods and services pursuant to Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy  paragraph 4(c)(iii).

In reference to the element in paragraph 4(a)(iii) of the Policy, Complainant asserts that Respondent uses Complainant’s mark in the disputed domain name in order to exploit Complainant’s famous marks ROCHE as a way to generate revenue from “click-through” links which Respondent has on their site as well as through clicks on pop-up advertisements.

Respondent contends that by using ROCHE, Respondent is creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and the products offered on the website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, such as the “Sleekcraft factors” – AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,346 (9th Cir. 1979), usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 , Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843, AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327, BWT Brands, Inc. and British Am. Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).

The disputed domain name meets the test of confusing similarity under the Policy. The disputed domain name wholly incorporates the Complainant’s well-known trademark ROCHE. The fact that the word “bioscience” is added to Complainant’s trademark does not eliminate the similarity between Complainant’s trademark and the disputed domain name, as “bioscience” is a descriptive component of the disputed domain name. In numerous cases, it has been held that a domain name that wholly incorporated a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words to such marks.

It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).

The Panel thus finds that the domain name <rochebioscience.com> is confusingly similar to the trademark ROCHE in which the Complainant has rights.

B. Rights or Legitimate Interests

Although paragraph 4(a) (ii) requires that the Complainant proves that Respondent has no right or legitimate interest in respect of the domain name, Panels in a number of decisions found that once a Complainant makes a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to, or legitimate interests in the domain name. The Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the domain name.

Respondent has not provided evidence of circumstances giving rise to a right or legitimate interest in the domain name.

The Complainant has not yet licensed or otherwise permitted the Respondent to use any of its trademarks or business names and has not permitted the Respondent to apply for or use any domain name incorporating the trademark.

Before notice to the Respondent of the dispute, there is no evidence of its use, 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.

The combination of words “rochebioscience” is obviously connected with the Complainant’s trademark and is not a word a trader would legitimately choose unless seeking to create an impression of an association with the Complainant.

Respondent’s use of the domain name to divert Internet users to its website to redirect users to competing sites and thus capitalizing on the Complainant’s mark is not a bona fide use pursuant to paragraph 4(c)(i) of the Policy.

Further, nothing in the record suggests that the Respondent trades under the domain name or the name “rochebioscience”, or is commonly known by said domain name or the name “rochebioscience”, or is making a legitimate non-commercial or fair use of the domain name.

Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied

C. Registered and Used in Bad Faith

The Panel also agrees with the Complainant’s contention that the Respondent registered and is using the domain name <rochebioscience.com> in bad faith.

The Complainant’s trademark ROCHE is long established and widely known. It is therefore inconceivable that Respondent registered the domain name unaware of Complainant’s rights in its trademark ROCHE.

Screen shots of Respondent’s web pages submitted with the Complaint show that use of the domain name redirects a user to websites that offer advertisements for a variety of products or to websites that offer information about biotechnology that compete with Complainant’s products.

Respondent registered a domain name nearly identical to Complainant’s trademark. That and the nature of the website Respondent maintains makes it clear that his purpose is to divert traffic intended for Complainant’s site to his own, in the hope that Respondent will earn ad revenue from the diverted traffic.

This qualifies as bad faith under paragraph 4(b)(iv) in that the Respondent’s use of the domain name attempts to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website.

Moreover, Respondent’s default in this proceeding reinforces an inference of bad faith. If it had arguments that it acquired the domain name in good faith, and had good faith bases for using the domain name, it should have asserted them.

The Panel therefore concludes that Respondent registered and is using the domain name <rochbioscience.com> in bad faith and that the requirement of the paragraph 4(a)(iii) of the Policy is satisfied.

 

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 name <rochebioscience.com> be transferred to the Complainant.


Torsten Bettinger
Sole Panelist

Dated: February 7, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1286.html

 

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