WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roche Therapeutics Inc. v. Venkateshwara Distributor Private Limited/ PrivacyProtect.org
Case No. D2010-1391
1. The Parties
The Complainant is Roche Therapeutics, Inc. (“Roche”) of Nutley, New Jersey 07110-1199, United States of America, represented by Lathrop & Gage LLP, United States of America.
The Respondents are Venkateshwara Distributor Private Limited (“VDP”) of Mumbai, Maharashtra, India and PrivacyProtect.org, Domain Admin of Null, Netherlands, (collectively, “Respondent,” of India).
2. The Domain Name and Registrar
The disputed domain name <wwwboniva.com> (the “Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (“Directi”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2010.
On August 18, 2010, the Center transmitted by email to Directi a request for registrar verification in connection with the domain name at issue. On August 27, 2010, Directi replied by email to the Center its verification response, disclosing that Respondent VDP is listed as the registrant of the Domain Name and provided full contact details for the administrative, billing, and technical contacts of VDP.
In response to a notification by the Center that Directi had identified VDP as being different to the entity originally named in the Complaint as the original respondent and inviting the Complainant to amend the complaint, the Complainant filed an Amended Complaint on September 3, 2010.
The Center verified that the Complaint, together with the Amended Complaint, satisfied the formal requirements of the Uniform Doman 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 Respondent of the Complaint, and proceedings commenced on September 6, 2010. In accordance with the Rules, paragraph 5(a) the due date for Response was September 26, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent of the default on October 6, 2010.
The Center appointed Felipe Claro as the Sole Panelist in this matter on November 1, 2010. 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
Roche is a pharmaceutical company organized under the laws of the State of Delaware with its principal place of business in New Jersey.
Roche is one of the leaders in the research and development of pharmaceuticals and diagnostic products in the world.
Roche produces and sells a pharmaceutical preparation for the prevention and treatment of bone diseases that bears the trademark BONIVA.
Since July 2000, F. Hoffmann-La Roche AG, the Swiss parent of Roche, owns and has registered the domain name <boniva.com> through which customers of Roche obtain information about the BONIVA prescription medication.
Roche has used its pharmaceutical preparation bearing the BONIVA mark since 2005.
Roche owns the following United States federally registered trademarks for use in connection with the sale and advertising of the prescription drug BONIVA:
a) BONIVA Registration No. 2,931,724, registered March 8, 2005 and having a first use date of August 24, 2004 for the pharmaceutical preparation for the prevention and treatment of bone diseases.
c) Once-monthly BONIVA (and design) - Registration No. 3,165,165, registered October 31, 2006 with a first use date of July 26, 2005, for providing health information via an internet website, namely providing educational information directed to patients and physicians regarding osteoporosis and treatment options.
Advertising and promotion of the prescription drug BONIVA is extensively used and widely circulated in the United States. As a result of such advertising, the BONIVA mark of Roche has become well-known in the United States, with sales reaching approximately USD 850 million.
5. Parties’ Contentions
Complainant contends that the Domain Name is confusingly similar to a registered trademark in which Complainant has rights.
Complainant also asserts that Respondent’s registration and use of the Domain Name creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of Respondent’s website associated with the disputed Domain Name by Complainant.
Complainant argues that Respondent has no rights or legitimate interests in the Domain Name because at no point did Roche authorize Respondent to use its trademark BONIVA, nor ever granted Respondent a license to use the BONIVA mark. Therefore, Respondents’ use of the BONIVA mark without permission from Roche constitutes trademark infringement.
Complainant submits that Respondent is not using the Domain Name in connection with a bona fide offering of goods and services because Respondent uses the Domain Name to divert Internet users seeking Complainant’s website associated with the domain name “www.boniva.com”, or the BONIVA drug to unrelated commercial websites without a license or authorization of any kind, whose sales include third-party competitors’ pharmaceutical products.
Complainant further asserts that Respondent is not making a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain, and that Respondent registered and is using the Domain Name in bad faith.
Complainant requests that the Domain Name be transferred to Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
It is the responsibility of the Panel to consider whether the Policy’s requirements have been met, regardless of the fact that Respondent failed to submit a reply.
Per paragraph 4(a) of the Policy, in order to prevail on its claim, Complainant must prove that:
(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.
Because Respondent has failed to file a reply as required by paragraph 5 of the Rules, this proceeding has taken place by way of default. Therefore, under paragraphs 5(e), 14(a), 14(b) and 15(a) of the Rules, the Panel shall decide this administrative action based on the Complainant’s undisputed representations, and may accept all reasonable and supported allegations and inferences made in the Complaint as true. Teleperformance v. Venkateshwara Distributor Private Limited and PrivacyProtect.org, WIPO Case No. D2010-0685 (citing Rules, paragraphs 5(e) and 14(a) (“Where there is no response to the complaint, the panel must decide the dispute based on the complaint.”), Rules, paragraph 15(a) (“The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems to be applicable.”), and Rules, paragraph14(b) (“Respondent’s failure to answer entitles the panel ‘to draw such inferences therefrom as it considers appropriate.’”)). See Allianz SE v. Venkateshwara Distributor Private Limited/PrivacyProtect.org, WIPO Case No. D2010-0951 (citing Charles Jourdan v. Holding AG v. AAIM, WIPO Case No. D2000-0403 (stating that the panel may draw adverse inferences from Respondent’s failure to reply to the complaint) and Vertical Solutions Mgmt., Inc. v. webnet-marketing, Inc., NAF Case No. 905095 (holding that Respondent’s default permits all reasonable inferences of fact in the allegations of the complaint to be deemed true)).
A. Identical or Confusingly Similar
The Complainant demonstrates that it owns the registrations of the trademarks BONIVA and once-monthly BONIVA (and design); therefore, Complainant has established legal rights in the marks.
The question presented here, under paragraph 4(a) of the Policy, is whether, from an objective standpoint, the Domain Name is identical or confusingly similar. Allianz SE v. Venkateshwara Distributor Private Limited/Privacy Protect.org, WIPO Case No. D2010-0951; see also The Vanguard Group, Inc. v. John Zuccarini, WIPO Case No. D2002-0834 (holding that Complainant need not establish actual confusion because the test is objective).
Upon comparing Complainant’s website, “www.boniva.com”, to the Domain Name, it is noticeable that Complainant’s trademark, BONIVA, is entirely contained in Respondent’s Domain Name. The only difference present is that the generic prefix “www” is incorporated in the Domain Name. The <wwwboniva.com> adds the “www” at the beginning without a doubt to capture any misdirected traffic as a result of a typographical error. If a domain name incorporates a distinctive mark, such as Complainant’s, in its entirety, “it is confusingly similar to that mark despite the addition of other words”. Nationwide Mutual Insurance Company v. Great Wall Domains, WIPO Case No. D2005-1251, citing Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (citing Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (holding that the first element of the Policy was satisfied where a domain name wholly incorporates complainant’s mark)). In addition, domain names such as Respondents’ have repeatedly been found to be confusingly similar to the owners’ trademarks in UDRP proceedings. Nationwide Mutual Insurance Company v. Great Wall Domains, WIPO Case No. D2005-1251. The letters “www” have no distinguishing capacity in the context of domain names for they represent, when followed by a period, an extremely common prefix to the domain name in a URL for a web page on the Internet. Reuters Limited v. Global Net 2000 Inc., WIPO Case No. D2000-0441. In short, adding the “www” prefix is insufficient to distinguish Complainant’s mark from the Domain Name and prevent confusion between <wwwboniva.com> and BONIVA. MasterCard International Incorporated v. DL Webb, WIPO Case No. D2008-0324.
Therefore, Complainant has established that the Domain Name is confusingly similar to satisfy the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Complainant represents and warrants that it has never licensed, authorized, or otherwise consented to the use of its BONIVA trademark by Respondent. Complainant further asserts that Respondent’s association of the Domain Name to a website that profits from Complainant’s fame, goodwill and reputation and its trademark BONIVA cannot give rise to any right or legitimate interest in the Domain Name to Respondent’s benefit.
It is Complainant’s burden to prove that Respondents have no rights or legitimate interests in the Domain Name. Carol House Furniture, Inc. v. PrivacyProtect.org/Venkateshwara Distributor Private Limited, WIPO Case No. D2010-0961. Once Complainant makes a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name, the burden to rebut then shifts to Respondent. H Samuel Limited v. PrivacyProtect.org/Venkateshwara Distributor Private Limited, WIPO Case No. D2009-0973. However, the burden of proof remains with Complainant.
Paragraph 4(c) of the Policy states that 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 rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii):
(i) Before any notice to Respondent of the dispute, 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; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights; or
(ii) Respondent is making a legitimate noncommercial 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.
Given the evidence presented by Complainant, the WhoIs data does not support the conclusion that Respondent is commonly known by the Domain Name. Respondent created the Domain Name in February 2010, years after Complainant created “www.boniva.com” (Complaint, Exhibit 1 and Exhibit 6). Respondent is not a licensee of, nor has been, nor currently is affiliated with Complainant.
The evidence further shows that Respondent does not appear to be using, nor has Respondent produced any evidence of demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods and services. Instead, Respondent uses the Domain Name to divert Internet users to not only Complainant’s website, but also to Walgreens Pharmacy, CVS Pharmacy, Wal-Mart, and the online pharmacy Drugstore.com, all of which promote and sell medications for competitors in business to Complainant and to Complainant’s detriment (Complaint, Exhibit 8). It is well settled by former UDRP decisions that this sort of “re-routing” of Internet users is neither a bona fide offer of goods and services, nor is a legitimate, non-commercial or fair use of the Domain Name involved. Carol House Furniture, Inc. v. PrivacyProtect.org/Venkateshwara Distributor Private Limited, WIPO Case No. D2010-0961. See also Nationwide Mutual Insurance Company v. Great Wall Domains, WIPO Case No. D2005-1251.
Based on the uncontested evidence by Complainant, the Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. Because Respondent failed to reply, it also failed to rebut Complainant’s assertions, and the Panel may deem the Complainant’s assertions as true.
Therefore, the Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the Domain Name, and thus satisfied the requirements under paragraph 4(a) (ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant must also prove that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(b) (iv) of the Policy provides that the following, among other criteria, constitutes evidence of the registration and use of a domain name in bad faith:
By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site…by creating a likelihood of confusion with the 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 web site or location. Teleperformance v. Venkateshwara Distributor Private Limited and PrivacyProtect.org, WIPO Case No. D2010-0685.
Respondent is no stranger to the proceedings at hand. Since 2009, six complaints (including that of Complainant) have been filed against it, and the Panels have all found Respondent to have registered and used the domain names in bad faith. See Carol House Furniture, Inc. v. PrivacyProtect.org/Venkateshwara Distributor Private Limited, WIPO Case No. D2010-0961 (“Respondents benefitted from pay-per-click revenue resulting from the likely confusion between the trademark and the domain name”); Allianz SE v. Venkateshwara Distributor Private Limited/ PrivacyProtect.org, WIPO Case No. D2010-0951 (“Respondent’s website is made up exclusively of sponsored hyperlinks, advertising banners, and commercial pop-ups, without any goods or services being offered for sale. It is beyond cavil that this type of use of the domain name constitutes bad faith in the context of the Policy.”); Teleperformance v. Venkateshwara Distributor Private Limited and PrivacyProtect.org, WIPO Case No. D2010-0685 (“Respondent’s scheme is essentially to exploit an Internet user’s typing or spelling error to divert the user from Complainant’s website for the purpose of Respondent’s own commercial gain. This constitutes sufficient evidence of bad faith…”); Lernco, Inc. v. Venkateshwara Distributor Private Limited, WIPO Case No. D2009-1012 (Respondent found to be using the disputed domain name intentionally to attract Internet users for commercial gain in the form of click-through commissions by creating likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website and/or products promoted on it); H Samuel Limited v. PrivacyProtect.org and Venkateshwara Distributor Private Limited (“To have proceeded with registration and use knowing of Complainant’s rights in the H SAMUEL mark demonstrates Respondents’ bad faith.”). Nevertheless, Respondents’ bad faith use and registration of the Domain Name in this case must be established independently from the prior UDRP panel decisions. Teleperformance v. Venkateshwara Distributor Private Limited and PrivacyProtect.org, WIPO Case No. D2010-0685.
Here, the evidence shows that Complainant’s mark BONIVA is an invented and coined mark with a strong worldwide reputation, and that no relationship exists between Complainant and Respondent because at no point has Complainant licensed, authorized, or otherwise consented to Respondent’s use of the mark in any manner. Given the dates of the creations of the websites of both Complainant and Respondent, BONIVA’s worldwide reputation, and Respondent’s listing of “www.boniva.com” as a sponsored link on its website, the Panel finds that Respondent was aware of the BONIVA trademark at the time the Domain Name was registered and converted that trademark to its own benefit. Furthermore, prior decisions also hold that using the Domain Name containing the BONIVA mark to offer BONIVA and other pharmaceutical products of third party competitors is evidence of bad faith. See Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814 (citing Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784); see also Google Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240.
The evidence also shows that, as has occurred in the five prior complaints filed, Respondent has intentionally attempted to attract for financial gain Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website, profiting from a pay-per-click mechanism. Respondent’s name does not include the word BONIVA. All of the content currently on Respondent’s website is misleading and confusing to consumers who commit a slight typographical error. Without question, Respondents are intentionally exploiting the user’s confusion between Complainant’s trademark and the Domain Name in order to obtain financial benefit for themselves; this conduct constitutes sufficient evidence of bad faith registration and use within the meaning of the Policy. See Nationwide Mutual Insurance Company v. Great Wall Domains, WIPO Case No. D2005-1251, citing Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492 (when a domain name is obviously connected with a Complainant and its products, its very use by a Registrant with no connection to the Complainant suggests “opportunistic bad faith”). Thus, the Complainant has satisfied the third and final element of the Policy.
Therefore, the Panel finds that the Domain Name was registered and used in bad faith.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name, <wwwboniva.com> be transferred to the Complainant.
Dated: November 15, 2010