World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Roche Diagnostics GmbH v. TedKosher, Ted Kosher

Case No. D2011-1817

1. The Parties

The Complainant is Roche Diagnostics GmbH of Mannheim, Germany, internally represented.

The Respondent is TedKosher, Ted Kosher of Luzern, Switzerland.

2. The Domain Name and Registrar

The disputed domain name <innovatis.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2011. On October 25, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On October 25, 2011, 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” 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 November 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2011.

The Center appointed Gunnar Karnell as the sole panelist in this matter on December 8, 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 available WhoIs information, the disputed domain name <innovatis.com> was “created” on December 17, 1998.

The Complainant has requested that the disputed domain name be transferred to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant bases its claim on its trademarks INNOVATIS and + INNOVATIS registered as Community trademarks 001568773 and 002912541 respectively. First priority date is August 30, 2000.

The disputed domain name is identical with the Complainant’s trademarks.

The Complainant belongs together with Roche Pharmaceuticals and affiliated companies to one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics with global operations in more than 100 countries. Innovatis AG is now a fully integrated part of Roche Applied Science, a global business area of the Diagnostic Division of Roche.

The disputed domain name was registered by Innovatis AG in 1998. It was used continuously as far back as the year 2005 and since the Complainant’s acquisition of Innovatis AG in 2009 together with that company. However, in September 2011, the Complainant found that the disputed domain name <innovatis.com> had been hijacked and brought under control of the Respondent without authorization of the Complainant. Documentary evidence proves that on January 6, 2011 the disputed domain name was still under the control of the Complainant, redirecting to its official webpage. The exact circumstances of the change of ownership of the entry are not known.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. Its website directs to a search engine composed of sponsored links referring to cell analysis, etc., in the area of the Complainant’s specializations. The only reason for its use by the Respondent is to benefit from the reputation of the Complainant’s trademarks and to illegitimately trade on its fame for commercial gain and profit.

The Respondent’s registration, so as presently to own the disputed domain name, was made in bad faith and it is now being used in bad faith. From the Respondent’s Internet website stands out an intentional attempt for commercial purpose to attract Internet users to it by creating a likelihood of confusion with the Complainant’s trademarks as to the source, affiliation and endorsement of the Respondent’s website or of the products or services posted on or linked to it. The website at the disputed domain name refers to services offered by the Complainant (cell analysis). The Respondent may generate unjustified revenues for each “click-through” by on-line consumers of the sponsored links illegitimately capitalizing on the INNOVATIS and + INNOVATIS trademarks fame.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The factual foundation of the Complainant’s contentions, as presented by the Complainant, while supporting its non contradicted Complaint by written evidence and reference to earlier UDRP case decisions, leads the Panel to the following conclusions:

A. Identical or Confusingly Similar

The disputed domain name is identical to the Complainant’s trademark INNOVATIS and it is confusingly similar to its trademark + INNOVATIS.

B. Rights or Legitimate Interests

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and there has been no rebuttal by the Respondent. Nothing in the case file gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Absent any indication in the case file of elements that might tell against giving credence to the Complainant’s assertions regarding facts leading up to its conclusions that the disputed domain name <innovatis.com> has been registered, as presently shown for the Respondent, in bad faith and that it is now used in bad faith, the Panel confirms that the conditions about bad faith registration and bad faith use for a transfer of the disputed domain name to the Complainant are satisfied.

7. Decision

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 <innovatis.com> be transferred to the Complainant.

Gunnar Karnell
Sole Panelist
Dated: December 17, 2011

 

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