WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. suntikpemutih, murni ilo
Case No. D2013-1478
1. The Parties
Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
Respondent is suntikpemutih, murni ilo of Banten, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <laroscorbine-roche.com> (“the Disputed Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2013. On August 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 22, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 13, 2013.
The Center appointed Neil A. Smith as the sole panelist in this matter on October 8, 2013. 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
Complainant and its affiliated companies are a health group involved in the field of pharmaceuticals and diagnostics in many countries around the world. Complainant has the trademark ROCHE registered in many countries. As an example reference is made to International Registration Nos. R346223 & 832631 as well as Community Trademark Registration No. 000223107. The priority date for ROCHE is June 19, 1968.
The Disputed Domain Name <laroscorbine-roche.com> was created on August 13, 2013 as per WhoIs records.
5. Parties' Contentions
Complainant submits that it has trademark rights for the trademark ROCHE, and no license/permission/authorization or consent was granted Respondent to use ROCHE in the Disputed Domain Name.
Complainant submits that the Disputed Domain Name of Respondent <laroscorbine-roche.com> is confusingly similar to Complainant’s mark ROCHE. Complainant notes that the remainder of the Disputed Domain Name “Laroscorbine” is a trademark which was formerly owned and used by Complainant before it was divested to a third party in 2004, and that, in any event, the use of another trademark does not sufficiently distinguish the Disputed Domain Names from the trademark at issue here. As Complainant notes the addition of other trademarks causes confusion, that Internet users will be misled that webpages involved originate from Complainant. Complainant’s use and registration of the marks predate Respondent’s registration of the Disputed Domain Name.
Complainant submits that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Respondent uses the Disputed Domain Name for commercial gain and with the purpose of capitalizing on the fame of Complainant’s trademarks ROCHE. Respondent has intentionally attempted, for commercial purpose, to attract Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s well-known mark as to the source, affiliation and endorsement of Respondent’s websites or of the products linked to Respondent’s website. Respondent is using the Disputed Domain Name to redirect Internet users to a pharmacy online, where, according to Complainant, any pharmaceutical product offered or sold named Laroscorbine(-)Roche would be a counterfeit, since Complainant does not own the “Laroscorbine” trademark.
Finally, Complainant submits that the Disputed Domain Name was registered and is being used in bad faith by Respondent.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
6.1 Analysis of the Complaint
Under the Policy, in order to prevail, Complainant must prove the following three elements of a complaint for transfer or cancellation of Respondent’s Disputed Domain Name: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the Disputed Domain Name was registered and is being used in bad faith. See Policy, paragraph 4(a). Regarding paragraph 4(a)(ii) of the Policy, once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
As Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all reasonable factual allegations as true. The Panel may also draw appropriate inferences from Respondent’s default. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
A. Identical or Confusingly Similar
The case record contains ample evidence to demonstrate Complainant’s rights in the registered ROCHE trademark. The Panel determines that the Disputed Domain Name is confusingly similar to Complainant’s ROCHE mark. The test for determining confusing similarity involves a direct comparison of a complainant’s trademark and the textual string which comprises the domain name. In this case, it is clear that the Disputed Domain Name incorporates the whole of Complainant’s ROCHE mark. Additionally, the Panel notes that it is well-established that the top-level domain name suffix (e.g., “.com”) is not generally taken into consideration when assessing identical or confusing similarity. Accordingly, the Panel finds that Complainant has satisfied the first element of the Policy. According to Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793, “[r]espondent’s inclusion of other third party trademarks in its domain name does not change this result. UDRP panels have consistently found a likelihood of confusion under these circumstances.”
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that Respondent may establish rights or legitimate interests in the Disputed Domain Name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to Respondent of the dispute, Respondent used, or made demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed 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 Disputed Domain Name, even if Respondent has not acquired trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. If the circumstances are sufficient to constitute a prima facie showing by Complainant of an absence of rights or legitimate interests on the part of Respondent, the evidentiary burden shifts to Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest.
Complainant has not authorized Respondent to use its ROCHE trademark. There is also no evidence that Respondent is commonly known by the Disputed Domain Name. Further, Respondent’s use of the Disputed Domain Name to redirect Internet users to an online pharmacy does not give Respondent any right or legitimate interest in the use of such Disputed Domain Name, particularly where the Disputed Domain name includes a trademark of a third party.
According to the aforementioned Hoffmann-La Roche Inc. v. 1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793, “the use of sponsor links is not use of the Disputed Domain Name in connection with a bona fide offering of goods or services.” See, also Barceló Corporación Empresarial, S.A. v. Hello Domain, WIPO Case No. D2007-1380; Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946; Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319; Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093. Finally, there is no evidence of record that Respondent is making any legitimate noncommercial or fair use of the Disputed Domain Name. Based on the un-refuted evidence submitted by Complainant, the Panel finds that Respondent is not making fair use of Complainant’s trademark.
This combination of circumstances sufficiently establishes a prima facie case so that the evidentiary burden shifts to Respondent to prove that it has some rights or legitimate interests in respect of the Disputed Domain Name. Respondent has not filed a Response and has therefore failed to satisfy its burden. Having searched the present record, the Panel finds no circumstances that would indicate such rights or interests, as described in paragraph 4(c) of the Policy, or otherwise. Complainant has therefore prevailed on this part of its Complaint.
C. Registered and Used in Bad Faith
Finally, Paragraph 4(a)(iii) of the Policy requires that Complainant establish both bad faith registration and bad faith use of the Disputed Domain Name by Respondent. See e.g. World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001. Paragraph 4(b) of the Policy provides the following four exemplary circumstances, each of which, if proven, shall be evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that a registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”. In this Panel’s view, circumstances (i), (ii), and (iii) are concerned with the intention or purpose of the registration of the domain name, and circumstance (iv) is concerned with an act of use of the domain name.
Complainant is required to prove both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith because in paragraph 4(a)(iii) of the Policy, the provision contains the conjunction “and” rather than “or” and it refers to both the past tense (“has been registered”) and the present tense (“is being used”) hence circumstances at the time of registration and thereafter have to be considered by the Panel. Complainant is required to prove that the registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith.
The Panel has considered Complainant’s assertions and evidence with regard to Respondent’s registration and use of the Disputed Domain Names in bad faith. By not submitting the Response, Respondent has failed to invoke any circumstances that could demonstrate that Respondent did not register and use the Disputed Domain Name in bad faith.
Respondent’s true purpose in registering the Disputed Domain Name, which incorporates Complainant's marks appears to have been to capitalize on the reputation of the well-known trademark of Complainant by diverting Internet users seeking Complainant’s websites or products to Respondent’s own website or online pharmacy.
Respondent, by using the Disputed Domain Name, is misleading consumers and confusing them by making them believe that the website or products which may be offered or sold through the use of the Disputed Domain Name behind those links are associated or recommended by Complainant. However, there is additional evidence that Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source of the pharmaceuticals offered on the website. The hyphenated multi-trademark structure of the Disputed Domain Name is likely to cause confusion. This hyphenated structure suggests an affiliation between and among these marks and the drugs they identify, even though they are all owned by different unrelated companies. See the aforementioned case of Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793. This is likely to lead to confusion about the source or origin of the products offered on Respondent’s site. It is likely that some consumers will mistakenly believe that the hyphens suggest a “family of marks” owned by a single company or affiliated companies.
This sort of confusion satisfies paragraph 4(b)(iv) of the Policy. Respondent intentionally adopted the hyphenated multi-trademark Disputed Domain Name in order to increase Internet search exposure. The foreseeable result was likely confusion about source, origin, sponsorship of the drugs offered on Respondent’s website. Respondent may not want or benefit from the confusion, but it does want the commercial benefit-increased search exposure- that the hyphenated multi-trademark structure affords. To get this benefit, it adopted a multi-trademark Disputed Domain Name that is likely to cause confusion about the relationship between the several marks that comprise the Disputed Domain Name.
Put simply, in order to maximize Internet search exposure, and thereby increase its commercial gain, Respondent has fused together several trademarks that belong to different owners and represent different reservoirs of goodwill. These different trademark owners would never consent to such an amalgamation of their marks in the real world and there is no reason to allow it in the cyberworld. This reckless disregard for the confusion caused by the hyphenated fusion of unaffiliated trademarks for the purpose of maximizing Internet traffic constitutes bad faith.
Respondent’s website has no legitimate business connection with Complainant or its ROCHE trademark. Complainant has not granted Respondent permission or a license of any kind to use its trademark. Such unauthorized use of Complainant’s mark by Respondent suggests opportunistic bad faith.
The case is squarely covered by paragraph 4(b)(iv) of the Policy.
The Panel finds that the Disputed Domain Name <laroscorbine-roche.com> has been registered and is being used by Respondent in bad faith. The Panel therefore accepts that Respondent has intentionally registered and used the Disputed Domain Name to attract Internet users for commercial gain through confusion as to the source, affiliation or endorsement of the website or location. This amounts to evidence of bad faith use under paragraph 4(b)(iv) of the Policy. See Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462. Further, Respondent, by such use of the Disputed Domain Name, would also draw Internet users away from Complainant’s websites to its own website and thus damages Complainant’s business. Accordingly, the Panel finds that Respondent registered the Disputed Domain Name primarily for the purpose of attracting Internet users to another site by creating confusion and this is evidence of bad faith under paragraphs 4(b)(iii) and (iv) of the Policy. For the foregoing reasons, the Panel finds that Complainant has satisfied the third element of the Policy.
D. Requested Remedy
The Panel notes that this results in the transfer to Complainant of a domain name that includes the LAROSCORBINE mark now owned by a third party, which is not a party to this proceeding. In other cases, Complainant has made of record the consent of other trademark owners with a potential interest in the transferred domain. See, e.g., Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793 and Yahoo, Inc. v. M&A Enterprise, WIPO Case No. D2000-0748 (domain name <visa-yahoo.com> transferred to sole Complainant Yahoo with notation of Visa’s consent). This would seem to be the better practice. However, neither the Policy nor the Rules expressly require such consent once a prima facie case for transfer has been made. Accordingly, the Panel orders the transfer.
For all 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 <laroscorbine-roche.com> be transferred to Complainant.
Neil A. Smith
Date: October 21, 2013