WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. RCIPA
Case No. D2008-0637
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, which is self-represented.
The Respondent is RCIPA, Rochester, New York, United States of America, represented by Harter, Secrest & Emery, LLP, United States of America.
2. The Domain Names and Registrars
The disputed domain names <rochealth.net> and <rochealth.org> are registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2008. On April 24, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On April 24, 2008, eNom 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 April 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2008. The Response was filed with the Center on May 14, 2008.
On May 20, 2008, the Complainant communicated with the Center, seeking a suspension of these proceedings with a view to possible settlement. On May 21, 2008, the Center notified the parties that these proceedings would be suspended until June 18, 2008. Some correspondence then passed between the parties, however no settlement was reached. On June 17, the Complainant requested that these proceedings be reinstituted.
The Center appointed James A. Barker as the sole panelist in this matter on June 25, 2008. 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, together with its affiliated companies, one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries.
The Complainant is the owner of the mark ROCHE, which is registered in a number countries, as well as an international and EU mark.
Although not indicated in the Complaint itself, the Complainant has been a previous complainant in various cases under the Policy which have, among other things, recognized the Complainant’s rights in its ROCHE mark. See e.g. F. Hoffmann-La Roche AG v. Titan Net, WIPO Case No. D2005-1151.
The Respondent is named in this proceeding under its acronym, RCIPA. Its acronym stands for “Rochester Community Individual Practice Association, Inc.” The Respondent is a physician-managed not-for-profit corporation located in Rochester, New York. The nature of the Respondent is further detailed at its main website at “www.rcipa.com”.
The disputed domain names were first registered on April 4, 2008 (as indicated by the “creation date” in the WhoIs record).
The Complainant provides evidence that, as at April 22, 2008, the disputed domain names reverted to the essentially the same “portal” or “landing” website. The homepage of that website presented with a photograph of a young girl with, to the left, a vertical list of health-related links including “#health”, “Health Care”, “Healthy Eating” and “Private Health Care”. At the bottom of the page, appearing horizontally, were a smaller number of links titled things such as “Insurance”, “Credit Cards” and “Education Online”.
5. Parties’ Contentions
The following is a summary of the contentions made in the Complaint.
The Complainant claims that the disputed domain names are confusingly similar to its mark seeing that they incorporate the trademark ROCHE in its entirety. “Rochealth” appears to mix two words, the Complainant’s mark ROCHE and the word “health” which is related to the field of the Complainant’s business.
As the Complainant is among the major pharmaceutical and diagnostic enterprises in the world, the mark ROCHE is well-known and notorious. The notoriety will increase the likelihood of confusion.
The Complainant claims that it gave no license or authorization to the Respondent to use its mark in the disputed domain names. 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.
The Complainant suggests that the Respondent’s use of the disputed domain names is the same as that referred to in Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo, WIPO Case No. D2004-0990 (“the sole diversion of Internet traffic by Respondent to other, unrelated websites, does not represent a use of the Domain Name in connection with a bona fide offering of goods and services. Rather, the conduct of Respondent serves the purpose of generating revenues, e.g. from advertised pay-per-click products.”)
Thirdly, the Complainant claims that the Respondent has registered and used the disputed domain names in bad faith. The Complainant claims that, when it registered the disputed domain names on April 4, 2008, the Respondent no doubt knew of the Complainant and its well-known mark. The Complainant claims that the Respondent is using the disputed domain names, to intentionally mislead consumers so as to attract them to other websites, by making them believe that the websites behind those links are associated with or recommended by the Complainant.
The Respondent denies the contentions made by the Complaint, summarized as follows.
The Respondent claims that there is no confusing similarity between the disputed domain names and the Complainant’s mark. The Respondent claims that any similarity is coincidental. “Rochealth” combines a reference to Rochester by its abbreviation “Roc” and the generic word “health”. The former is a widely-used abbreviation for Rochester (the Respondent provides evidence of websites using ‘Roc’ as such an abbreviation). The latter describes the core of the Respondent’s work and practice.
The Respondent denies that the disputed domain names combine the Complainant’s mark with a descriptive word. Following the Complainant’s argument, the domain names combine “Roche” and “alth”, the latter of which is meaningless.
Secondly, the Respondent claims that it has rights or legitimate interests in the disputed domain names. The Respondent claims that it registered the disputed domain names, and various others, for use in connection with a website that will provide the residents of Rochester, New York, with information regarding healthcare issues and resources.
The Respondent provides substantial evidence of various preparations for that purpose, including the registration of other domain names such as <rochesterhealth.net> and <rochesterhealth.org>, which the Respondent notes also contain the Complainant’s mark and which are not the subject of a complaint by the Complainant under the Policy. The Respondent provides evidence of draft overviews for its planned website, as well as a proposed logo and various webpage designs. In those designs, the Respondent included references to e.g. <rochealthy.com> and <rocdoctors.com>. The Respondent used “Roc” in these drafts as a reference to Rochester. Related to these plans, the Respondent provided evidence of draft budgets, minutes of various meetings (including of its Executive Committee and Board of Directors), a business plan, a project administration position to be created to support the proposal, a branding proposal, and an agreement with a website developer. The majority of the 57 exhibits to the Response provide evidence of one of these kinds, in support of the Respondent’s contention that it made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of services.
The Respondent states that, because it had not fully developed its proposed website, it did not provide content for it. The Registrar accordingly “parked” the disputed domain names and displayed the content that is currently and has been on the websites to which the disputed domain names refer. For support, the Respondent provides evidence of the Registrar Agreement, which states that the Registrar will park an unused domain name for free and display advertising.
The Respondent states that the Complainant has provided no evidence that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant merely hypothesizes that the Respondent registered the disputed domain names in an attempt to refer to take advantage of the Complainant’s mark.
Thirdly, for somewhat similar reasons, the Respondent denies that it has registered and used the disputed domain names in bad faith.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain names are 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 disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
These issues are discussed as follows.
A. Identical or Confusingly Similar
It is clear that the Complainant has rights in a mark for the purpose of paragraph 4(a)(i) of the Policy. The question then is whether the disputed domain names are confusingly similar to that mark.
It is relatively frequent that cases under the Policy may involve domain names that include a complainant’s mark, and then add a descriptive word. It is well-established that a domain name which wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy, despite the addition of common or generic words. See, for example: Dr. Grandel GmbH v. Drg Randel Inc., WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493; Playboy Enterprises International, Inc. v. Hector Rodriguez, WIPO Case No. D2000-1016.
This is not clearly one of those cases. The disputed domain names discernibly include both the Complainant’s mark and the word ‘health’. But the disputed domain names do not simply add the word “health” to the Complainant’s mark. Rather, the last two letters of the Complainant’s mark (“he”) overlap with the first two letters of the word “health”.
The Complainant provides no evidence of actual confusion in this case. Such evidence is not a requirement to succeed in demonstrating confusing similarity. Whether there is confusing similarity can be determined by a comparison between the domain names and the Complainant’s mark. As noted by a number of panels, whether a domain name is confusingly similar to a mark may be determined by the overall impression given by the mark and the domain name, bearing in mind any particular distinctive or dominant components, and having regard to visual, phonetic, conceptual similarities. See e.g. Gorstew Limited v. Worldwidewebsales.com, WIPO Case No. D2002-0744, relevantly reiterated in Amanresorts Limited v. Melissa Perlman, WIPO Case No. D2003-0383.
However, it does not appear to the Panel that the Complainant’s mark features more strongly in the disputed domain names than the word “health”, on either an overall, visual, phonetic or conceptual level. From the submissions of both the Complainant and the Respondent, it is clear that there are at least two legitimate ways of viewing the disputed domain names. The domain names could be viewed either as an overlapping combination of the ROCHE mark and the word “health” (as argued by the Complainant) or as the abbreviation “ROC”, for Rochester, and the word “health” (as argued by the Respondent). The existence of these equally legitimate alternatives provides less support for a finding of confusing similarity.
The strongest argument for the Complainant is that the disputed domain names may be confusingly similar, at least for those who are familiar with its mark. It is not necessary for there to be a possibility of widespread confusion. It is enough if there is a possibility of confusion among those who may be familiar with a complainant’s mark. In this respect, see e.g. Skype Limited v. Benjamin Decraene, WIPO Case No. D2005-1112, and this panel in Blue Cross and Blue Shield Association v. Digi Real Estate Foundation/Domain Admin/NA NA, WIPO Case No. D2007-0022.
Relevantly, the disputed domain names contain both the Complainant’s mark entirely, as well as the word ‘health’ which is strongly associated with the Complainant’s products. To those aware of the Complainant’s mark, and not aware of the abbreviation “ROC” for Rochester, it appears to the Panel that there is an arguable likelihood of confusion.
For these reasons, on balance, the Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
Under paragraph 4(c)(i) of the Policy, the following circumstance, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice to it of the dispute, 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.
The Respondent provides substantial evidence to demonstrate that it has made demonstrable preparations to use the disputed domain names, within the meaning of paragraph 4(c)(i) of the Policy. As noted summarily above (in relation to the Respondent’s contentions), the Respondent provided voluminous exhibits evidencing is preparations to use the disputed domain names. In this respect, the Respondent provided evidence of its activities relating to the development of its proposed website, including:
– draft budgets,
– minutes of meetings of its Executive Committee, where the proposed website was discussed,
– minutes of meetings of its Board of Directors where the website proposal was also discussed,
– updates the Respondent provided to its board of development progress,
– a business plan,
– a project administration position to be created to support the proposal,
– a branding proposal,
– an agreement with a website developer,
– and outline of a presentation the website developer gave to the Respondent,
– an overview of the proposed website’s functionality,
– evidence of its registration of other domain names that it intended to use for a similar purpose (e.g. <rocdoctors.com>, <rocdoctors.net> and <rocdoctors.org>).
This evidence is extensive and thorough. There is little more that the Respondent could provide to demonstrate that it was making preparations in connection with a legitimate offering of services.
It is clear that the Respondent carried out preparations to use some domain names, even if it had not conclusively settled on which ones to use in connection with its proposed website. In this case, the bulk of the Respondent’s evidence indicates that the Respondent was making preparations to establish a health-related website well before it registered the disputed domain names in April 2008. It might be asked whether the Respondent was making demonstrable preparations to use the disputed domain names in particular. That is, one view of paragraph 4(a)(i) of the Policy is that it requires demonstrable preparations with respect to the disputed domain names, rather than more general preparations done without a particular domain name in mind.
The answer to this is twofold. Firstly, it is clear that the Respondent’s registration of the disputed domain names was part of the overall development of the Respondent’s proposed website. Those preparations were substantial, and began before, and continued after, the registration of the disputed domain names in April 4, 2008. Even if all the Respondent’s preparations before April 4, 2008 were ignored, it is clear that the Respondent continued to work towards the development of its website after the disputed domain names were registered. Those registrations were not the beginning or the end of the Respondent’s preparations. Those registrations were part of the Respondent’s preparations, and were consistent with the other activity it had undertaken. As such, there is a clear inference that the Respondent continued to make preparations after it registered the disputed domain names, and before it had notice of this dispute – when the Complaint was first filed in late April 2008. Even on the most narrow approach, the Respondent has demonstrated that it made such preparations for the purpose of paragraph 4(c)(i) of the Policy.
Secondly, the Panel does not read paragraph 4(c)(i) of the Policy so narrowly. That paragraph does not require preparations done prior to registering a disputed domain name to be ignored. It will naturally be easier to demonstrate that preparations made after the registration of a domain name were preparations to use that particular domain name. But it does not follow that prior preparations cannot also be made, at least in part, for the same purpose.
There is a clear connection between the character of the disputed domain names and the services which the Respondent proposed to offer. In particular, the Respondent provided evidence that the abbreviation “ROC” is a common abbreviation for Rochester, New York. The Respondent also provided substantial evidence that it is a community healthcare organization with aims of providing healthcare for residents of Rochester, New York. Therefore the combination of “ROC”, together with the word “health”, was clearly intended to reflect the services the Respondent proposed to provide. The Respondent’s selection of other domain names with similar associations is also consistent with that purpose.
Even apart of the weight of the evidence presented by the Respondent, the Respondent’s case is plausible and substantive. The Panel also notes that the Respondent’s particular registration of the disputed domain names occurred only shortly prior to these proceedings being instituted. This is not therefore a case of the Respondent passively holding the disputed domain names for a significant period of time.
Against this, the Complainant’s argument is less substantial. The Complainant essentially argues that the Respondent’s only purpose in registering the disputed domain names was to capitalize on the Complainant’s mark. This, the Complainant states, is ‘obvious’ from the fact that the disputed domain names revert to a ‘portal’ website.
As noted above, the Respondent has strongly rebutted that argument and provided a significant amount of evidence to the contrary. The Respondent has also directly rebutted the allegation against it in relation to the disputed domain names being held in connection with a portal website, noting that this is a result of its agreement with the Registrar and the fact that its plans for the disputed domain names had not been finalized.
For these reasons, the Panel finds that the Respondent has established that it has legitimate interests in the disputed domain names for the purpose of paragraph 4(c)(i) of the Policy. It necessarily follows that the Complainant has not established its case under this ground.
For the reasons set out above, it is unnecessary for the Panel to make a finding on this ground. However, the Panel notes that there is little evidence on the present record that the Respondent registered and used the disputed domain names to take advantage of the Complainant’s mark. The evidence presented by the Respondent points substantially to a different conclusion: that the Respondent registered the disputed domain names to establish a website in connection with a bona fide offering of services, targeted at the community of Rochester, New York.
For all the foregoing reasons, the Complaint is denied.
James A. Barker
Dated: July 9, 2008