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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Spiral Matrix

Case No. D2006-0781

 

1. The Parties

The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by internal representatives of Complainant.

The Respondent is Spiral Matrix, Eldoret, Kenya.

 

2. The Domain Names and Registrar

The disputed domain names <dangersoftamiflu.com> and <rochemolecularsystems.com> are registered with Intercosmos Media Group d/b/a directNIC.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2006. On June 23, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. The same day, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing Respondent’s contact details for administrative, billing, and technical contacts. 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 4, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2006.

The Center appointed Stefan Naumann as the sole panelist in this matter on August 9, 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

Complainant presents itself as one the world’s leading pharmaceutical companies that operates in more than 100 countries, notably under the corporate and/or trade name “Roche”, alone or in combination with other terms such as “Roche Molecular Systems” and “Hoffman – La Roche”.

Complainant owns the following three ROCHE trademarks:

- international word mark ROCHE (number 135 432) filed on December 16, 1913 and April 16, 1928, renewed on March 18, 1948, 1968, and 1988, and currently in effect to designate products in classes 1, 3, 5 and 29;

- international word and device mark ROCHE (number 832 631) filed on April 8, 2004 and currently in effect to designate products and services in classes 1, 3, 5, 9, 10, 16, 35, 37, 38, 41, 42 and 44;

- European Community word and device mark ROCHE (number 223 107) filed on April 12, 1996 to designate products and services in classes 1, 2, 3, 5, 9, 10, 16, 31, 38, 41 and 42.

International trademark ROCHE (number 832 631) designates Kenya as well as a number of other African countries amongst others.

Complainant has not submitted proof of renewal of the Community trademark “Roche” (number 223 107). The Panel cannot assume, absent evidence of renewal, that a trademark has been renewed.

In the present matter, Complainant has submitted evidence of trademark rights in the term “Roche” that are currently in effect so that the Panel need not further consider the Community trademark.

Complainant also owns the following two TAMIFLU trademarks :

- international word mark TAMIFLU (number 713 623) filed on June 3, 1999 and currently in effect to designate “anti-viral pharmaceutical products” in class 5;

- international word and device mark TAMIFLU (number 727 329) filed on February 7, 2000, to designate “anti-viral pharmaceutical preparations” in class 5.

All of the foregoing trademarks were either filed by Complainant or transferred to Complainant following a corporate reorganization.

Respondent registered the domain name <rochemolecularsystems.com> on April 24, 2006, and the domain name <dangersoftamiflu.com> on March 23, 2006.

Complainant has submitted into evidence the administrative panel decision F.Hoffman-La Roche AG v. Spiral Matrix, WIPO Case No. D2006-0326 between the same parties. This earlier case involved two domain names that included the term “tamiflu”. Respondent had been notified of the complaint in the earlier matter on March 28, 2006, and, in a decision of May 10, 2006, the panel in the earlier case ordered the transfer of the domain names to Complainant.

Based on a further administrative panel decision Finaxa S.A. v. Spiral Matrix, WIPO Case No. D2005-1044 that Complainant submitted into evidence, it appears that Spiral Matrix has been a respondent in a number of prior domain name disputes. Thus, in F.Hoffman-La Roche AG v Spiral Matrix, WIPO Case No. D2006-0326, Dr. Ing h.c. F. Porche AG v. Kentech, Inc. aka Helois Lab aka Orion Web aka Titan Net aka Panda Ventures aka Spiral Matrix and Domain Purchase, NOLDC, Inc., WIPO Case No. D2005-1044 and Finaxa S.A. v. Spiral Matrix, WIPO Case No. D2005-0890, disputed domain names registered by Spiral Matrix were ordered to be transferred to the respective complainants.

 

5. Parties’ Contentions

A. Complainant

Complainant argues that Respondent’s two domain names <rochemolecularsystems.com> and <dangersoftamiflu.com> are confusingly similar respectively to Complainant’s ROCHE and TAMIFLU trademarks, that in the domain name <rochemolecularsystems.com> the addition of the terms “molecular systems” is derived from the name of one of its affiliated companies, and that its trademarks are well-known, thus increasing the risk of confusion. According to Complainant, Respondent has no rights or legitimate interest in the two domain names because Respondent uses the domains for commercial gain in order to benefit from the high reputation of Complainant’s trademarks. Specifically, the domain names lead to a search site with sponsored links to other sites and pop-up advertisements, and Respondent is not authorized or licensed to use Complainant’s trademarks.

Complainant considers that Respondent registered and used the domain names in bad faith because Complainant’s trademarks are well known worldwide and the websites under each domain name contain sponsored links and pop-up advertisements.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

Complainant has established that it has acquired trademark rights in the terms “Roche” and “Tamiflu” and that these rights are prior to the registration of the two litigious domain names.

Complainant argues, without submitting evidence on this issue, that its marks are well-known. The Panel does not need to address this issue.

A. Identical or Confusingly Similar

Under general trademark law principles, the addition of common or descriptive terms to a distinctive sign does not diminish the risk of confusion.

In the present matter, Respondent added the terms “molecular systems” to the term “Roche” which is phonetically and visually identical to Complainant’s ROCHE trade marks set forth above. The Panel considers that the addition of the descriptive terms “molecular systems” does not diminish the distinctiveness of the term “Roche” within the disputed domain name.

As for the domain name <dangersoftamiflu.com>, Respondent added the phrase “dangers of” to the term “Tamiflu”, which is identical to Complainant’s TAMIFLU trademarks set forth above. The Panel considers that the addition of the phrase “dangers of” does not diminish the distinctiveness of the term “Tamiflu” within the disputed domain name.

The Panel therefore finds that the domain names <rochemolecularsystems.com> and <dangersoftamiflu.com> are confusingly similar to Complainant’s ROCHE and TAMIFLU trademarks.

B. Rights or Legitimate Interests

In order to establish that it has legitimate rights in either or both the domain names <rochemolecularsystems.com> and <dangersoftamiflu.com>, Respondent could attempt to demonstrate that it has made preparations to use, or actual use of one or both of these domain names, or of a name corresponding to the domain names, in connection with a bona fide offering of goods or services, that it has been commonly known by the domain name or is making a legitimate, non-commercial or fair use thereof without intent of commercial gain and without misleadingly diverting consumers or tarnishing the trademarks.

In particular, the domain name <dangersoftamiflu> could conceivably be used for a website with discussion or criticism of the drug “Tamiflu”, which might then raise the issue of whether such use could fall under one of the exceptions under paragraph 4(c) of the Policy.

But the name is not so used, and Respondent has not offered any explanation or observations in the present matter. Complainant states that it has not authorized Respondent to make use of either its TAMIFLU or its ROCHE marks in the disputed domain names.

Without prejudice to the legal position in the event that a domain name with the expression “dangers of” or a similar type of expression were actually used for a site containing criticism or discussion of a trademark owner’s products or policies, the Panel finds that in the present case Respondent has no right or legitimate interest in the domain names <rochemolecularsystems.com> and <dangersoftamiflu.com>.

C. Registered and Used in Bad Faith

For Complainant to prevail, the Panel must be persuaded that the domain names at issue were both registered and used in bad faith.

In the present matter, Respondent registered the terms <rochemolecularsystems.com> and <dangersoftamiflu.com> as domain names in bad faith insofar as it has not shown any right or legitimate interest in either term, and was or should have been aware of Complainant’s prior rights in the terms “Tamiflu” and “Roche”, the latter being registered as trademark notably in Kenya.

In addition, Respondent (i) registered the exact name of one of Complainant’s affiliated companies as domain name, (ii) has a track record of bad faith domain name registrations as shown by prior panel decisions, and (iii) has used the registrations in bad faith.

The Panel therefore finds that both domain names were registered in bad faith.

Complainant further alleges that the domain names are used in bad faith. Complainant’s evidence of use are printouts of June 21, 2006, of the websites respectively under the domain names <rochemolecularsystems.com> and <dangersoftamiflu.com>.

The domain name <rochemolecularsystems.com> contains the title “Web Search” and links under common terms such as “design”, “molecular biology”, “DNA” as well as names including “Roche”, “La Roche” and “Xenical”. The web page contains the tagline “Buy this domain name ! Find out more Click here !” and a copyright notice “© 2004 Kentech, Inc. all rights reserved”. Complainant clicked on one of the links and the following web page, under the same domain name, lists a number of hyperlinks notably to pharmaceutical and cosmetics retailers offering Roche and other products. The search results are listed under the heading “Sponsored results : roche”.

The print-outs of the website under the domain name <dangersoftamiflu.com> show the same structure with the following differences in content :

- the links on the first page are generic, and “Tamiflu” does not appear among the links;

- the search results for “Tamiflu” refer to pharmaceutical retailers only.

The Panel finds that the domain names are being used in bad faith by Respondent to attract Internet users to a website by creating a likelihood of confusion with Complainant’s trademarks. This view is confirmed by the fact that Respondent has repeatedly registered as domain names third party trademarks without right or legitimate interest as set forth in prior panel decisions, and has used the name of one of Complainant’s affiliated companies.

 

7. Decision

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

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Stefan Naumann
Sole Panelist

Dated: August 23, 2006