WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Transure Enterprise Ltd.
Case No. D2008-0422
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, of Switzerland, internally represented by Jerome Rhein, Switzerland.
The Respondent is Transure Enterprise Ltd., of British Virgin Islands, Over Seas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <wwwroche.com>is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2008. On March 20, 2008, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the domain name at issue. On April 8, 2008, Above.com, Inc. 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 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2008. The Respondent did not submit any response. Accordingly, the Center subsequently notified the Respondent’s default.
The Center appointed John Swinson as the sole panelist in this matter on May 13, 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, a company based in Basel, Switzerland, has existed since 1896 and has operated worldwide since the early 1900’s. It is a well-known international healthcare company involved in the development, manufacture and marketing of a range of healthcare products including pharmaceuticals and diagnostics. The Complainant operates a website at “www.roche.com”.
The Complainant is the proprietor of a number of registered trademarks containing the word “Roche” throughout the world. A copy of several of the Complainant’s trademark registrations were attached as Annexure 3 to the Complaint.
5. Parties’ Contentions
A. Complainant
The Complainant makes the following contentions:
The Complainant has global operations in more than 100 countries. The Complainant’s mark ROCHE is well-known and notorious and is protected in a multitude of countries worldwide.
The disputed domain name is confusingly similar to the Complainant’s notorious mark and incorporates the mark in its entirety. The notoriety of the mark will increase the likelihood of confusion.
The Complainant’s use and registration of the mark predates the Respondent’s registration of the disputed domain name.
The Complainant has exclusive rights for ROCHE and has not authorized, licensed or otherwise consented to the Respondent using ROCHE in the disputed domain name.
The Respondent’s website is a search engine with sponsored links. The Respondent’s only reason for registering and using the disputed domain name is to benefit from the reputation of the Complainant’s trademark, ROCHE.
The Respondent registered the disputed domain name in bad faith as it would undoubtedly have had knowledge of the Complainant’s well-known mark ROCHE prior to registration.
The disputed domain name is being used in bad faith by the Respondent who is relying on the notoriety of the Complainant’s mark ROCHE to attract Internet users to its website. The Respondent, by using the disputed domain name, 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 or recommended by the Complainant.
The Respondent is illegitimately capitalizing on the ROCHE trademark fame.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the domain name registered by the Respondent 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights, and the disputed domain name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of a number of registered marks containing the words “Roche” (see for example International Trade Mark Registration No. 2R 135,432; International Trade Mark Registration No. 832 631; and Community Trade Mark Registration No. 000,223,107).
The Panel therefore finds that the Complainant has registered trade mark rights in ROCHE. The next question is whether the disputed domain name is identical or confusingly similar to the Complainant’s ROCHE trade mark.
The disputed domain name contains the entirety of the Complainant’s trade mark. It has been held in many prior panel decisions that when a domain name incorporates a distinctive mark in its entirety it is confusingly similar to that mark (see for example EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc, WIPO Case No. D2000-0047).
Here, the only addition is “www”, which is a typical part of most website URLS.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).
The Respondent did not submit a response or attempt to demonstrate any rights or legitimate interest in the disputed domain name.
The Panel finds that the Respondent, at the time of registration of the disputed domain name, most likely knew or should have known of the existence of the Complainant’s trade mark ROCHE. The ROCHE is famous and known globally for its connection with medical development, research and pharmaceuticals. There is no evidence that the Respondent is commonly known by the disputed domain name, the word “Roche” or anything similar. The Complainant, who is known by its notorious trademark “ROCHE”, has not licensed, authorized or otherwise consented to the Respondent using its ROCHE mark.
The Respondent has not attempted to make any bona fide use of the disputed domain name. The disputed domain name currently resolves to a website that contains sponsored advertising links to websites where, amongst other things, employment, hotels, travel, entertainment and medical insurance are advertised. The evidence suggests that the Respondent registered, and is using the disputed domain name, only because it is similar to the Complainant’s well known mark, and due to user confusion, will generate a lot of traffic by mistake so that the Respondent can receive commercial gain from advertising to the Internet users who intend to visit the Complainant’s website by using the disputed domain name by mistake. The Panel finds that, in these circumstances, this is not use of the domain name in connection with a bona fide offering of goods or services.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt 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.
The Respondent’s website associated with the disputed domain name only contains sponsored advertising links and does not offer goods or services for sale. In addition, when consumers connect to the website a number of additional advertisements open up in separate web pages. It is clear that the Respondent is using the disputed domain name to direct traffic to a website where the Respondent obtains commercial gain through sponsored listings. As the panel found in Digital Spy Limited v. Moniker Privacy Services and Express Corporation, WIPO Case No. D2007-0160, “Registering a domain name with knowledge of another company’s rights in the name, and with intention to divert traffic is evidence of bad faith”.
The Panel finds that the disputed domain name is aimed at attracting Internet traffic from users who mistype when aiming to visit the Complainant’s website, but leaving out the “dot” that usually occurs after the “www”. Compare, for example, Hilton Group Plc v. Grand Slam Co., WIPO Case No. D2003-0136.
The Panel notes that in a previous decision involving the Respondent, it was found that “the Respondent had mislead consumers by diverting Internet traffic away from the Complainant’s website in an attempt to generate business by luring potential customers to the Respondent’s website”. See Wolters Kluwer U.S. Corporation v. Transure Enterprise Ltd., WIPO Case No. D2008-0384.
The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademarks of another. Match.com LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. The evidence in this dispute, in the Panel’s view, supports the conclusion that the Respondent sought to profit from, or exploit the trademarks of the Complainant. Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.
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, <wwwroche.com> be transferred to the Complainant.
John Swinson
Sole Panelist
Date: May 26, 2008