WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Online Management
Case No. D2013-2028
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Online Management of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <rochewebex.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2013. On November 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 29, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 29, 2013.
The Center verified that the Complaint together with the amendment to 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 22, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 24, 2013.
The Center appointed Brigitte Joppich as the sole panelist in this matter on January 6, 2014. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is together with its affiliated companies one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and has global operations in more than 100 countries.
The Complainant owns right in the trademark ROCHE in a multitude of countries worldwide, inter alia through International Registration no. 346223 ROCHE, registered on June 19, 1968, International Registration no. 832631 ROCHE & Design, registered on April 8, 2004, and Community Trademark Registration no. 000223107 ROCHE & Design, registered on October 1, 1999, (hereinafter referred to as the “ROCHE Marks”).
The disputed domain name was registered on November 10, 2013 and is used in connection with a parking website providing advertising links to websites promoting and/or offering products and services of third parties as well as the Complainant’s products.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
(1) The Complainant contends that the disputed domain name is confusingly similar to the ROCHE Marks as it incorporates these marks in their entirety, as the ROCHE Marks are well-known and notorious and as such notoriety will increase the likelihood of confusion, and as the inclusion of the third party trademark “WEBEX does not hinder a finding of confusing similarity. In this context, the Complainant states that it is a duly authorized user of the “CISCO/WEBEX” Technology and that the website to enter a ‘Roche Webex Meeting’ reads “roche.webex.com”.
(2) The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name as the Complainant has exclusive rights in the ROCHE Marks, as no license, permission, or other authorization respectively consent to use the ROCHE Marks in the disputed domain name was granted to the Respondent, and as it is obvious that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s ROCHE Marks.
(3) The Complainant finally alleges that the disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant argues that the Respondent doubtlessly knew of the ROCHE Marks when registering the disputed domain name. Furthermore, the Complainant argues that the disputed domain name is also being used in bad faith as the Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent's websites 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 or services posted on or linked to the Respondent's website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trade mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the well-established ROCHE Marks in which the Complainant has exclusive rights.
The fact that the third party trademark WEBEX is included in the disputed domain name does not hinder a finding of similarity between the Complainant’s trademark and the disputed domain name as the Complainant is a duly authorized user of the “CISCO/WEBEX” Technology which provides online conference services and as the website to enter a ‘Roche Webex Meeting’ reads ”roche.webex.com”. Under such circumstances, the combination of the trademarks ROCHE and WEBEX in the disputed domain name strengthens the likelihood of confusion as it directly refers to a URL used by the Complainant itself.
Furthermore, it is well established that the generic top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore the Panel finds that the Complainant has satisfied the requirements of the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or 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) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. In particular, the Respondent’s use of the disputed domain name in connection with a parking website with links to third parties’ products and services is no bona fide use under the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out of pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the ROCHE Marks. The disputed domain name fakes a URL used by the Complainant itself in commerce. Given that both trademarks included in the disputed domain name are highly distinctive, it is inconceivable that the Respondent built up the disputed domain name by coincidence without targeting the Complainant’s ROCHE Marks.
As to bad faith use, by fully incorporating the ROCHE Marks into the disputed domain name and by using the website at such domain name as a parking website providing links to third parties, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant's website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (cf. L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, with further references).
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <rochewebex.com> be transferred to the Complainant.
This transfer is ordered without prejudice to any rights that might be asserted by Cisco Technology, Inc.
Date: January 17, 2014