WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rotta Research Laboratorium S.p.A. & Rottapharm S.r.l. v. Jacques Stade
Case No. D2003-0532
1. The Parties
The Complainants ("Complainant") in this administrative proceeding are Rotta Research Laboratorium S.p.A. of Milan, Italy and Rottapharm S.r.l. of Monza, Italy. Complainant's authorised representatives are Dr. Massimo Introvigne and Dr. Fabrizio Jacobacci, Studio Legale Jacobacci & Associati, Torino, Italy.
The Respondent in this administrative proceeding is Mr. Jacques Stade ("Respondent"), of Paris, France.
2. The Domain Name and Registrar
The domain name at issue is <rotta-pharm.com> ("Domain Name"), registered with eNom, Inc., Bellevue, Washington, United States of America.
3. Procedural History
A complaint ("Complaint"), pursuant to the Uniform Domain Name Dispute Resolution Policy, implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, ("Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy, implemented by ICANN on the same date ("Rules"), was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on July 7, 2003, by e-mail and was received on July 8, 2003, in hardcopy.
The Acknowledgement of Receipt of Complaint was submitted to the Complainant by the WIPO Center on July 7, 2003.
On the same date, a Request for Registrar Verification was transmitted to the Registrar, which failed to submit a Verification Response. Therefore, the Center made a WHOIS printout on July 30, 2003, which showed that the disputed Domain Name was registered with eNom Inc., and that Respondent, Jacques Stade, was the current registrant of the disputed Domain Name.
The assigned WIPO Center Case Manager completed a Formal Requirements Compliance Checklist on July 30, 2003, without recording any formal deficiencies.
The Panel independently determines and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the applicable requirements.
A Notification of Complaint and Commencement of Administrative Proceeding ("Commencement Notification") was transmitted to the Respondent on July 30, 2003, setting a deadline of August 19, 2003, by which the Respondent could file a response to the Complaint.
Since Respondent failed to submit any response to the Complaint within the set time-limit, a Notification of Respondent Default was sent by the WIPO Center to Respondent on August 21, 2003. The Panel would like to note that Respondent has until today failed to file any form of response to the Complaint.
Complainant requested a single-member panel. Since Respondent did not file a response, the WIPO Center invited the undersigned to serve as sole panelist in WIPO Case No. D2003-0532 and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence which was duly signed and returned to the WIPO Center on August 28, 2003.
The WIPO Center transmitted to the parties on August 29, 2003, a Notification of Appointment of Administrative Panel and Projected Decision Date as of September 12, 2003. The Administrative Panel finds that it was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.
4. Factual Background
The following facts and statements appear from the Complaint and its annexed documents which have not been contested by Respondent:
Complainant Rottapharm Srl is a wholly owned subsidiary of the other Complainant Rotta Research Laboratorium S.p.A. They are both part of the Rottapharm group, an international pharmaceutical group headquartered in Italy. The Rottapharm group is the owner of several trademarks including the words ROTTAPHARM, ROTTA PHARM and ROTTA throughout the world, most of them owned by Complainant Rotta Research Laboratorium S.p.A. (see printout list in Annex 1 to Complaint). They cover mostly, but not exclusively, pharmaceutical products. Enclosed in Annex 2 and 3 to Complaint are the Italian registration 269845 ROTTA PHARM (dating back to 1972), and the international registration 397811 ROTTA PHARM, which through the Madrid Agreement has been duly extended to France where Respondent is located.
Furthermore, Complainant is the registrant and owner of several active domain names, including <rottapharm.com>, <rottapharm.biz>, <rottapharm.info>, <rottapharm.it>, <rottapharm.tv>, <rottapharm.ws>, <rottapharm.cc>, <rottapharm.net> and <rottapharm.us>.
The disputed Domain Name <rotta-pharm.com> was registered by Respondent on April 22, 2003.
5. Partiesí Contentions
Complainant contends that:
- the Domain Name is identical to a trademark or service mark in which the
Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the Domain Name; and
- the Domain Names were registered and are being used in bad faith; and
- the Domain Name <rotta-pharm.com> should be transferred to the Complainant.
Additional respective contentions of the Complainant are contained in the following discussions and findings.
As mentioned above, Respondent has been notified in accordance with paragraph 2(a) of the Rules but failed to submit a response in accordance with the requirements under the Policy. Thus, Complainant's allegations are deemed to be unchallenged.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
"(i) that 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) that the respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith."
6.1. Identical or confusingly similar Domain Name: Policy 4(a)(i)
The domain name at issue is <rotta-pharm.com>. Complainant is the holder of the registered trademarks ROTTAPHARM and ROTTA PHARM. Hence, Complainant owns one trademark where ROTTA and PHARM are clearly separated and one where ROTTAPHARM is written as a single word. In the disputed Domain Name the two words ROTTA and PHARM are connected by hyphen. This spelling obviously is confusingly similar with the registered trademarks of Complainant. The hyphen between the two words is an insignificant distinction that does not remove the likelihood of confusion.
Therefore the Panel holds that the Complainant has readily met the burden of proof as established by subparagraph (i) of the Policy's paragraph 4(a).
6.2. Respondent's Rights or Legitimate Interests in the Domain Name: Policy 4(a)(ii)
It is first convenient to recall that, according to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are 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."
Respondent has not provided any evidence of legitimate rights or interests in the above sense and has not shown any other circumstances reflecting right or legitimate interest in the disputed Domain Names.
Respondent failed to submit any proof of the fact that he as an individual, business, or other organization has been commonly known by the Domain Name and, to this Panelís knowledge, the Respondent is not presently conducting real activities under the name "rotta-pharm". The default page of <rotta-pharm.com> shows some kind of a suspicious search page which randomly shows search results for accidental terms such as "seats", "sink", "furniture", "telekinesis" or the like, changing each time when a user is entering or returning to the site. In any event, after having thoroughly examined the site, the Panel is convinced that the Domain Name at present is not in use for any sort of business matters in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use of the Domain Name.
Hence, in the absence of any indications as to a legitimate interest of Respondent to use the Domain Name, the Panel finds that Complainant has fulfilled its burden of proof under paragraph 4(a)(ii) of the Policy.
6.3. Domain Name Registered and Used in Bad Faith: Policy 4(a)(iii)
The third element to be established by Complainant is that the Domain Name has been registered and used in bad faith.
Paragraph 4(b) states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name:
"(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or
(ii) you [Respondent] have 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 you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or your location."
Complainant alleges that Respondent registered and intends to use the Domain Name in bad faith.
Complainant holds that there is no way that Respondent may not have been aware of the trademarks and trade name of Complainant, and therefore registration may only have occurred in bad faith. When it may be presumed that "the Respondent (Ö) knew of the renown of the Complainantís trademarks", a finding of "opportunistic bad faith" is in order (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157). Respondent is located in France, a main market for Complainantís products. "Rotta-pharm" has no known meaning in Italian, nor in French or any other language, and is known only as the trademark and trade name of Complainant, i.e. of a pharmaceutical ("pharm") group of companies whose name is Rotta. Therefore Respondent could not conceivably ignore Complainantís rights.
Furthermore, Complainant didnít authorize Respondentís activities. Complainant has no control of what Respondent currently includes, or will include in the future, in its website. By the use of the contested Domain Name Respondent may divert traffic which would otherwise go to Complainantís websites <rottapharm.com> and others, which promote genuine ROTTA PHARM products.
That Respondent operates in bad faith is also evidenced by his registration of several other domain names identical to, or confusingly similar with, well-known trademarks, such as, for example, <ferrari-scuderia.info>, <ciuffo-gatto.com> and <nutella.bz> (Annexes 5, 6 and 7 to Complaint).
On May 19, 2003, Complainant Rottapharm S.r.l. sent a warning letter to Respondent, who answered: "First of all, I am the only owner of the domain name, please deal with me only. There is nothing forbidding this kind of registrations. At any rate if you want to buy it, I am offering it for sale for forty thousand (40.000) Euros" (see Annex 8 to Complaint). Hence Respondent has offered to sell the Domain Name to Complainant for an amount far in excess of its reasonable out of pocket expense which is regarded as evidence of "use in bad faith" under the Policy (Design Escrow, Inc. v. Weatherite Roofing, WIPO Case No. D2001-0703, Häfele America Co. v. Hafele, LLC, WIPO Case No. D2000-1839 and Ottaway Newspapers, Inc. v. Cameron Barrett, WIPO Case No. D2001-0726).
In an overall assessment of the contentions and the facts mentioned above, the Panel concludes that the requirements of paragraph 4(a)(i) and 4(a)(iii) of the Policy have been sufficiently made out by the Complainant, and that Respondent's bad faith registration and use of the Domain Name has been proven.
In view of the circumstances and facts discussed above, the Panelist decides that the disputed Domain Name is confusingly similar to the registered trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the disputed Domain Name has been registered and is used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panelist requires that the disputed Domain Name, <rotta-pharm.com>, shall be transferred to the Complainant.
Bernhard F. Meyer-Hauser
Dated: September 10, 2003