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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Domain Admin Tucows.com Co.

Case No. D2006-1488

 

1. The Parties

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

The Respondent is Domain Admin Tucows.com Co., of Toronto, Canada, represented by Cathcart, Collins & Kneafsey, LLP, United States of America.

2. The Domain Name and Registrar

The disputed domain name <roche.org> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2006. On November 22, 2006, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain name at issue. Later that day, Tucows Inc. transmitted by email to the Center its verification response confirming that it 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 November 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response December 19, 2006. The Response was filed with the Center December 20, 2006.

On December 21, 2006, the Complainant filed a Supplemental Filing said to arise out of the Response.

The Center appointed Warwick A. Rothnie, Franзois Dessemontet and David E. Sorkin as Panelists in this matter on February 14, 2007. The Panel finds that it was properly constituted. Each member of 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.

After appointment of the Panel, the Complainant’s Supplemental Filing was forwarded to the Panel for consideration of its admissibility on February 15, 2007. Concurrently, the Respondent sought clarification of whether or not the Supplemental Filing formed part of the record and foreshadowed that it needed a day to respond formally. As the Panel had reviewed the Supplemental Filing, in the interests of procedural fairness Administrative Panel Procedural Order No. 1 was issued on February 20, 2007, affording the Respondent an opportunity to file any responding material within two further business days. The projected date for decision was extended to March 2, 2007, to accommodate this extension. The Respondent sought to file a Supplemental Response on March 1, 2007. There was no explanation for the delay nor a request for an extension of time. In these circumstances, and having regard to the need for UDRP proceedings to be conducted fairly, expeditiously and efficiently, the Panel determined not to take into account the late-filed Supplementary Response.

4. Factual Background

According to the Complaint, the Complainant and its affiliated companies are one of the world’s largest research-focused healthcare groups, particularly in the field of pharmaceuticals and diagnostics. It states that its group has operations in more than 100 countries.

The Complainant states that it has registered ROCHE as a trademark in many countries. Annex 3 to the Complaint includes official details for International Registration Nos. 2R135432 and 832631 as well as Community Trademark (CTM) No. 000223107. Each of these registrations claims a range of goods across international classes relevant to drugs and medicines. The CTM includes a range of services too. The International Registrations designate a number of countries and are based on a Swiss registration dating from December 16, 1913.

In the Supplemental Filing, the Complainant provided material showing that its Annual Report for 2005 stated that the group’s net income was 6,730 million Swiss Francs and its market capitalization was 170,879 million Swiss Francs.

The Response states that the Respondent is a wholly owned subsidiary of Tucows Inc., a publicly traded company which is, amongst other things, an ICANN accredited registrar earning most of its revenue from domain name registration services plus hosted email, spam and virus protection, blogware, website building tools and the like.

In June 2006, Tucows Inc. acquired Mailbank Inc. which carried on business as NetIdentity.

The NetIdentity business has been operating since 1996. An important part of the NetIdentity business since that date has been the provision of personalized email, blogging and web hosting services through a collection of personal surname addresses. Since 1996, NetIdentity claims to have acquired tens of thousands of such addresses, including <smith.net> and <schafer.org>. Using these, it provides so-called “vanity” email addresses to its customers such as bill@smith.net and sue@smith.net (where Bill and Sue may be wholly unrelated) and third level domain names such as <bill.smith.net>. It is able to provide such services to multiple customers provided of course each address is unique. The Respondent estimates that it has acquired domain name registrations covering over 70% of surnames in the United States of America.

The Respondent acquired the domain name as part of its acquisition of NetIdentity. NetIdentity first registered the domain name on December 13, 1996.

The United States census data in 1990 identified the surname “Roche” as the 2,053rd most common surname in the United States of America. Some 27,000 surnames accounted for approximately 66% of surnames in use. At that time, some 15,000 Americans had the surname. This made it comparable in commonality to names like “Lombardi” and “Jameson”, twice as common as names like “Maclean” and “O’Sullivan” and three times more common than “Neilson”.

There have been up to 20 individual customers using the domain name. Currently, the Respondent has 12 active customers using the domain name for email or web hosting services.

5. Discussion and Findings

Under paragraph 4(a) of the Policy the Complainant has the burden of proof in respect of the following three elements:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) The domain name has been registered and is being used in bad faith.

The Panel deals with each of these elements in turn.

A. Identical or Confusingly Similar

There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to it?

The Panel finds that the Complainant has proved ownership at least of the International Registrations and the CTM referred to above, details of which are included in Annex 3.

The question of resemblance for the purposes of the Policy requires a comparison of the disputed domain name to the trademark rights which have been proved. This is a different test to that involved in trademark law where questions of the goods or services covered by the trademark rights can be relevant to the likelihood of confusion: see for example Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. The question of the scope of the Complainant’s trademark rights may of course be relevant to the issues under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.

These trademarks are all for the term “roche” alone. The domain name is therefore identical, apart from the addition of the gTLD which can be disregarded for these purposes. See for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, Ticketmaster Corporation v. DiscoverNet Inc., and WIPO Case No. D2001-0252 and Williams-Sonoma d/b/a Pottery Barn v. John Zuccarini, WIPO Case No. D2002-0582.

Accordingly, the Panel finds that the Complainant has successfully established the first requirement under the Policy.

B. Rights or Legitimate Interests

The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.

Paragraph 4(c) of the Policy sets out a list of four examples which could qualify as rights or legitimate interests for the purposes of the Policy. They are examples only as the list is not exhaustive.

The Complainant claims it has exclusive rights for the trademark ROCHE, as evidenced by its trademark registrations, and has not licensed or otherwise authorized the Respondent to use the term “roche”.

The Complainant seeks to bolster its trademark rights as a result of the further information contained in the Supplemental Filing in aid of demonstrating that the trademark is well-known and notorious.

The Complainant next points out that the domain name resolves to a website which is a search engine composed of sponsored links. It contends that the only reason for the Respondent’s registration of the domain name is trade on the fame of the Complainant’s trademark for commercial gain and profit (really a consideration under the third limb of the Policy). It cites Fox News Network, LLC v Warren Reid, WIPO Case No. D2002-1085 in support of that proposition.

The Respondent does not deny it has no licence or authority from the Complainant, but contends it does not require any such licence. It claims that the use of the surname to provide vanity email addresses and the like is a right or legitimate interest within the Policy. It cites a US Ninth Circuit decision, Avery Denison Corp. v. Sumpton 189 F 3d 868 (1999), and a number of UDRP decisions all in favour of its predecessor in business in support of its position. See, e.g., International Raelian Religion and Raelian Religion of France v. Mailbank.com Inc., WIPO Case No. D2000-1210; Buhl Optical Co. v. Mailbank.com, Inc., WIPO Case No. D2000-1277; Bosco Products, Inc. v. Bosco E-Mail Service and Mailbank.com, NAF Case No. FA94828; Josй de Jesъs Velбzquez Jimйnez v. Mailbank.com Inc., WIPO Case No. D2001-0341; Puls Elektronische Stromversorgungen GmbH v. NetIdentity, WIPO Case No. D2002-0205; Dong A/S v. NetIdentity, NAF Case No. FA0404000250240.

In its Supplemental Filing, the Complainant denies the information about the Roche surname advanced by the Respondent, but does not provide objective supporting facts or reasons for this otherwise bare denial. Alternatively, the Complainant contends that the number of persons in the United States of America is so small in relation to the population of the United States of America as a whole, 298 million, that it should be disregarded.

If (as is incontrovertibly the case) Roche is a surname, the Panel does not think that a rule can be adopted which depends on how common the surname is or how successful the Respondent’s efforts to find customers have been. They may be factors which go to the credibility of a respondent’s claim in some cases, but here the Respondent cannot seriously be accused of just registering one or two famous trademarks which may also be surnames. Rather, it claims to have registered thousands of surnames as domain names and to have been doing so for over 10 years. This claim is not seriously contested by the Complainant and the case and decisions referred to above provide some objective support in favour of the Respondent’s claim.

The real question is whether the use claimed by the Respondent, whether it is successful in its commercial plans or not, is sufficient to qualify as a right or legitimate interest under the Policy.

In at least one of the decisions referred to above, Puls Elektronische v. NetIdentity, a three member panel was divided on whether or not the Respondent’s corresponding use there satisfied the requirement of a right or legitimate interests. However, that panel unanimously agreed that the Respondent had rebutted the allegation of registration and use in bad faith. So, it was unnecessary to decide the question under consideration. On the other hand, the three member panel in Jimenez v. Mailbank unanimously accepted that this business model provided a right or legitimate interest. So too did the subsequent panel in Dong A/S v. NetIdentity.

It might be argued that none of the trademarks concerned in those rulings were of comparable reknown as the trademark ROCHE. In this connection, the Panel notes that the Ninth Circuit considered Avery Dennison failed to establish its trademarks were sufficiently famous to reach the threshold for protection against dilution under the US Trademark Dilution Act. The Ninth Circuit also ruled, however, as a second basis that the dilution claim would also fail because the Respondent’s registration of surnames as domain names was not a commercial use as a trademark actionable under the Trademark Dilution Act. Rather

“Appellants use words that happen to be trademarks for their non-trademark value.”

189 F 3d at 880[7].

The Panel is conscious that it is applying the Policy and not national trademark law. It is also conscious that there may be some scope for debate about the binding nature of the Ninth Circuit’s finding on trademark use in the Avery Dennison case. Nonetheless, depending on the circumstances, a right to use a trademarked term in a particular fashion under a national law where a substantial part of a respondent’s business is conducted may qualify as a right or legitimate interest under the Policy. Taking into account all the circumstances, the Avery Dennison case provides a credible basis for the Respondent’s argument that it has a right or legitimate interest under United States law to use the domain name in the fashion it does without infringing trademark rights. This conclusion is consistent with the clear preponderance of decisions under the Policy referred to above.

Accordingly, the Panel finds that the Complainant has failed to establish this ground under the Policy.

C. Registered and Used in Bad Faith

In view of the finding under paragraph 4(a)(ii) of the Policy above, it is not strictly necessary for the Panel to deal with this question.

The Complainant contends that the Respondent registered the domain name with knowledge of the Complainant’s well-known trademark and, consequently, did so in bad faith. The Complainant further contends that the Respondent is using the domain name in bad faith as it uses it for a search engine with sponsored links from which it derives revenue. The Complainant stigmatizes this as diverting traffic seeking the Complainant for commercial gain.

In its Supplemental Filing, the Complainant points out that, if one enters Tamiflu or Xenical, which are the trademarks of two of the Complainant’s important products, into the search engine that the domain name resolves to, one is presented with unauthorized links to Complainant’s products, competing products and other services in the field.

The Panel notes that the same or a very similar list of results is generated if one enters Tamiflu into the search field at <puls.net>, the domain name at issue in Puls Elektronische Stromversorgungen GmbH v. NetIdentity, WIPO Case No. D2002-0205 in which the complaint was denied.

The Respondent contends that it registered the domain name for use in its vanity name business as already discussed. Rather than assign the domain name to any particular individual called Roche, the domain name resolves to a generic search engine page which also advertises the NetIdentity business and a prominent link to “Get your own roche.org email address”.

Registration of a domain name with knowledge that it consists of another’s trademark, even a famous trademark, is not in itself sufficient to establish bad faith for the purposes of the Policy. There must also be an intention to trade on the trademark significance of the sign registered as a domain name. In many cases, it is obvious that there can be no other explanation or that the purported justification is nothing more than a pretext. An example is Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003 in which the panelist found there could be no explanation other than an attempt to leverage of the trademark significance of the term. In this connection, the Panel also notes that the earlier Puls Panel unanimously rejected a finding of bad faith even though the complainant there contended that it was entitled to stop the respondent’s activities under German and Austrian law.

That is not this case, however. Here, the domain name has been registered for over ten years. The Respondent is a substantial corporation in its own right with a substantial, legitimate business. The domain name is one of many thousands that have been registered in this part of the Respondent’s business which it claims is because of their surnominal significance. There is both a specific denial of a bad faith purpose and the avowal of a purpose which appears to be legitimate under relevant national law and which is not inherently unbelievable in the particular circumstances of this case. In proceedings which are a decision on the papers, where witnesses are not produced for examination and cross-examination, therefore, the Panel is not in the absence of compelling evidence to the contrary in a position to reject the Respondent’s specific denial of bad faith. Accordingly, it finds that the Complainant has not established registration and use of the domain name in bad faith as required under paragraph 4(a)(iii) of the Policy

D. Reverse Domain Name Hijacking

The Respondent seeks a finding of Reverse Domain Name Hijacking against the Complainant under paragraph 15(e) of the Rules. It does so on the basis that:

(a) the Complainant “must” have recognized the futility of commencing a complaint under the Policy in respect of a word which is a surname;

(b) the Complaint was so lacking in merit that it can only have been brought in the hope that no Response would have been filed so that the Complainant would win by default.

The mere failure of the Complaint is not sufficient to found a finding under paragraph 15(e) of the Rules; such a finding is intended only for the worst cases where there is bad faith such as malice or dishonesty or some other abuse of process. See e.g. Jazeera Space Channel TV Station v AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309.

Here, the Complainant does in fact have legitimate trademark rights which it is entitled to protect. It may also, as the previous panel in the Puls decision was prepared to acknowledge, have rights under some national laws that would permit it to block the Respondent’s activities in those jurisdictions. Given the body of prior decisions on the issues raised by this case, one might have thought the Complainant should have been aware of the speculative nature of its claim although, as previously noted, it might be argued that the prior decisions did not concern a trademark as well-known as the one at issue here. In any event, the Panel is not prepared to make the requested finding of reverse domain name hijacking.

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Warwick A. Rothnie
Presiding Panelist

David E. Sorkin
Panelist

Dated: February 27, 2007

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Dissenting Opinion

The dissenting Panelist agrees with the Panel’s conclusion that the Complainant has trademark rights which the domain name is identical to.

The right or legitimate interest of the Respondent, acting formerly as NetIdentity, to register domain names with surnames such as “Smith” or “Doe” does not, in this Panelist’s view, have priority over the right of trademark owners on well known marks consisting in surnames, when these rights are well established (in that case since 1913). Correspondingly, this Panelist considers that NetIidentity or the Respondent could not validly maintain, for example, the registration of <gucci.com>, <cartier.com>, <pernod.com> or <baccardi.com>, in case of opposition of one of the owners of those famous patronymic marks. The balance of interest between the Complainant and the Respondent appears to this Panelist to be in favor of the Complainant, since the Complainant is exposed to lose the benefit of its identification through dilution of its famous trademark or possibly, although this is vigorously contested by Respondent, through wrong redirecting of messages to commercial sites which are not authorized to sell its products, while the Respondent is only losing the insignificant turnover related to 12 customers having chosen the service offered in connection with <roche.org>. The Respondent cannot argue that it has proxy powers for and invoke the rights to their surnames for 15,000 United States residents who might conceivably use its services in respect of the disputed domain. It should be noted that the business method of the Respondent is not at issue here, but only the particular violation of the trademark rights for “roche”.

Further, bad faith is not solely a question of intent. It is an objective standard of fairness rather than the evidence of a subjective willingness to commit an act of piracy. If objectively, the Respondent trades on the reputation of the trademark right owner, it may be acting in bad faith even though some precedents might have turned out to be favorable to its practice. First, the decisions quoted by the Respondent do not concern world famous trademarks, as far as this Panelist can see. It is so in particular of the decision in Puls Elektronische Stromversorgungen GmbH v. NetIdentity, WIPO Case No. D2002-0205 on which the majority of the Panel relies for exempting the Respondent of any blame in connection with the redirecting operations if they happen in fact at all, which is not certainly beyond doubt. Second, the United States decisions such as the 9th US Circuit Court of Appeals case Avery Denison Corp v. Sumpton are inapposite in the URDP context. It is not maintained here that Swiss law should apply either—if it were to apply, the Complainant would certainly be entitled to the disputed domain name. However, if disconnected to a point from national laws, the standards to be applied by URDP panels must be consistent with international standards as ensconced in international conventions. There is bad faith in appropriating famous trademarks and the world has reacted against such misappropriation, for example by article 16(3) of the TRIPS Agreement of 1994, two years before the <roche.org> domain name has been registered.

It is absolutely certain that NetIdentity must have known about the ROCHE trademark, as every consumer of medicine knows it throughout the world, and as a large organization having conducted due diligence, the Respondent must have known that misappropriating a well-known trademark is not in conformity with fair practices (Article 10bis, Paris Convention of 1883). Finally, there is no doubt that, even if there are other explanations than piracy for the choice of a domain name, the net effect of this choice - to wit, dilution of the trademark, redirecting Internet users to a website allowing for ROCHE brands drugs to be ordered and capitalizing on its reputation - is constitutive of objective bad faith.

The dissenting Panelist did hesitate to reach this dissent on the result because <roche.org> has been registered for ten years and it may be asked whether the Complainant did not lose the right to invoke its superior rights by delaying its Complaint so long. Nevertheless, the Panel has not been briefed on this point, and the Panelist cannot allow sheer speculations to detract from the substantive solution which would seem most advisable in this and similar cases.

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Franзois Dessemontet
Dissenting Panelist

Dated: February 27, 2007