WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Roche Diagnostics GmbH v. Ted Kosher
Case No. D2011-1610
1. The Parties
The Complainant is Roche Diagnostics GmbH of Mannheim, Germany, represented by F. Hoffman – La Roche AG, Switzerland.
The Respondent is Ted Kosher of Luzern, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <454.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2011. On the same day, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name and eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On September 23, 2011, the Complainant informed the Center that it had forwarded the Complaint to the Respondent.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 October 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2011.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on November 22, 2011. 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
According to the Complainant, it is along with Roche Pharmaceuticals, an important part of the foundation that modern healthcare builds upon. Together with its affiliated companies, it belongs to one of the world's leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics. It has global operations in more than 100 countries.
The Complainant offers a broad range of innovative diagnostic tests and systems which play an important role in the ground breaking area of integrated healthcare solutions and cover the early detection, targeted screening, evaluation and the monitoring of disease.
The Complainant, Roche Diagnostics GmbH, is active in all market segments from scientific research and clinical laboratory systems to patient self-monitoring.
454 Life Sciences is a center of excellence of Roche Applied Science which develops and commercializes the innovative Genome Sequencer system for ultra-high-throughput DNA (deoxyribonucleic acid) sequencing. Specific applications include de novo sequencing and re-sequencing of genomes, metagenomics, RNA (ribonucleic acid) analysis, and targeted sequencing of DNA regions of interest. The hallmarks of 454 Sequencing are its simple, unbiased sample preparation and long, highly accurate sequence reads, including paired reads. At Annex 3 to the Complaint, there is an online extract from the website for 454 Life Sciences. Of particular note is a media release dated March 29, 2007 referring to the acquisition by Roche Diagnostics GmbH of 454 Life Sciences to strengthen its presence in ultra-fast gene sequencing. It clearly sets out the importance of 454 Life Sciences as part of Roche Diagnostics GmbH. It points out that Roche Diagnostics GmbH is the world leader for in-vitro diagnostics, the leading supplier of drugs for cancer and transplantation and a market leader in virology. It is also engaged in other important therapeutic areas including auto-immune, inflammatory and metabolic diseases and diseases of the central nervous system. In 2006, Roche Diagnostics GmbH achieved sales of CHF 8.7 billion.
The Complainant's marks 454 and 454.COM are protected as marks in various countries. Exhibited at Annex 4 to the Complaint, is evidence of, inter alia, European Community Trademarks No. 001999952 for the mark 454 and No. 002570604 for the mark 454.COM. There is also exhibited a printout from the United States Patent and Trade Mark Office website of the registration of the mark 454 No. 2995485, registered in the name of 454 Corporation Delaware which is part of the Roche Group of Companies. The Community Trademarks are both registered in the name of the Complainant, Roche Diagnostics GmbH.
The disputed domain name <454.com> was first registered in 1997 by CuraGen Corporation (the parent company of 454 Life Sciences). The disputed domain name has been used by the Complainant since the acquisition of 454 Life Sciences in 2007.
In early September 2011, the Complainant realized that the disputed domain name <454.com> had been hijacked and brought under the control of the Respondent, Ted Kosher, without the Complainant's authorization. The Complainant has since been forced to use, instead of the disputed domain name, <my454.com> in order to maintain Internet accessibility for clients and customers.
At Annex 7 to the Complaint is a search dated September 22, 2011 in a "Internet Archive WayBackMachine" which shows that on July 7, 2011, the disputed domain name, <454.com>, was still under the control of the Complainant and directed to its official website. The Complainant does not know the exact circumstances of the change of ownership of the entry.
5. Parties’ Contentions
The Complainant submits that:
(i) The disputed domain name <454.com> is confusingly similar to the marks 454 and 454.COM in which the Complainant has rights.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no reason why the Respondent should have any such rights or legitimate interests.
(iii) The disputed domain name was registered and is being used in bad faith on the basis, inter alia, that the Respondent is intentionally attempting (for commercial purposes) to attract internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's well known mark as to the source, affiliation and endorsement of the Respondent's website or of the products posted on or linked to the Respondent's website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to a mark in which the Complainant has rights.
The Panel is satisfied that, on the basis of the evidence referred to above, the Complainant has rights in the marks 454 and 454.COM. It is therefore satisfied that the disputed domain name as used by the Respondent, <454.com>, is confusingly similar to the Complainant's mark 454 and identical to the Complainant's mark 454.COM
It follows that the Complainant is successful in this element of its Complaint.
B. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel is satisfied that the Complainant has exclusive rights to use the marks 454 and 454.COM as mark owner and that no licences have been granted to the Respondent. Accordingly, there is no evidence as to why the Respondent should have any rights or legitimate interests in the disputed domain name.
This can be seen from Annex 5 to the Complaint. The Respondent's website directs to a search engine composed of sponsored links. It is therefore a reasonable inference that the Respondent is only using the disputed domain name to benefit from the established reputation of the marks 454 and 454.COM and in the absence of evidence to the contrary, has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant points out that it does not know the exact circumstances of the change of ownership of the disputed domain name. However, it is clear that the Respondent is using the disputed domain name <454.com>. As can be seen from Annex 5 to the Complaint, the Respondent is intentionally attempting (for commercial purposes) to attract Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's registered marks as to the source, affiliation and endorsement of the Respondent's website and of the products and services posted on the website.
Under the terms of the Policy, it is established that such use can constitute bad faith. In particular, the Complainant relies upon previous cases decided under the UDRP. See L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, where it was held that "such exploitation and the reputation of trade marks to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions."
A consequence of such click-through access is that the Respondent may be able to generate unjustified revenues from on-line consumers of the sponsored links.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <454.com> be transferred to the Complainant.
Clive Duncan Thorne
Dated: December 6, 2011