WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Melissa S
Case No. D2014-1263
1. The Parties
Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
Respondent is Melissa S of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <ocevient.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 July 23, 2014. On July 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 2014, 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 July 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 18, 2014.
The Center appointed Mark Partridge as the sole panelist in this matter on August 26, 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 the Rules, paragraph 7.
Due to exceptional circumstances, the Decision due date was extended by the Panel until October 29, 2014.
4. Factual Background
Complainant is F. Hoffmann-La Roche AG, a leading research-focused Swiss global healthcare group in the field of pharmaceuticals and diagnostics. Together with its affiliated companies, Complainant has global operations in more than 100 countries. On April 2, 2014 at 2:38 PM, Complainant filed its OCEVIENT Mark with the Swiss Federal Institute of Intellectual Property (Certificate Swiss Reg. No. 657293). The OCEVIENT Mark designates a pharmaceutical preparation for the treatment of multiple sclerosis, which has not yet launched on the market.
Based on the aforementioned Swiss application, Complainant concurrently filed several additional trademark applications for the OCEVIENT Mark on April 2, 2014. Complainant designated additional territories through a Madrid International Trademark System filing (International Reg. No. 1203237). Complainant filed the Mark with the Office for Harmonization in the International Market ("OHIM") (Community Trademark Application No. 012755336). Finally, Complainant filed an application for the OCEVIENT Mark (Serial No. 86,240,270) with the United States Patent and Trademark Office ("USPTO") in International Class 5 for goods relating to "pharmaceutical preparations for the treatment of immune diseases and disorders and inflammatory diseases and disorders."
According to the Registrar's verification, Respondent is the registrant of the disputed domain name. WhoIs records indicate Respondent registered the disputed domain name <ocevient.com> on April 2, 2014 at 6:44 PM. See ComplaintAnnex 1. Respondent has used the disputed domain name to link to the GoDaddy Auctions website where the disputed domain name is for sale for USD 850. See Complaint Annex 6.
On April 3, 2014, Complainant acquired the following domain names:
On July 14, 2014, Complainant sent Respondent a cease and desist letter, requesting that Respondent transfer the disputed domain name. Respondent failed to reply.
Subsequently, Complainant filed this Complaint seeking transfer of the disputed domain name from Respondent.
5. Parties' Contentions
Complainant alleges rights in the trademark OCEVIENT dating back to April 2, 2014 at 2:38 PM, as evidenced by filing the aforementioned applications through the Swiss Federal Institute of Intellectual Property, Madrid International Trademark System, OHIM, and USPTO.
Complainant contends: (1) that it is the exclusive owner of the trademark rights to the OCEVIENT Mark; (2) that the disputed domain name is identical or confusingly similar to Complainant's Mark; (3) that Respondent has no right or legitimate interests in the disputed domain name because no license, permission, or authorization was granted by Complainant or any of its affiliates to use the Mark; (4) that Respondent has registered and used the disputed domain name in bad faith because only someone with knowledge of Complainant's applications—considering the fact that the Mark is allegedly fanciful—could have registered the disputed domain name; (5) that Respondent knew of Complainant's applications because Respondent registered the domain name on the same date Complainant's applications were made; and (6) that Respondent is engaged in a pattern or practice of registering domain names that are identical or confusingly similar to existing trademarks and offering them for sale at prices representing a considerable profit over their direct costs of registration.
Complainant highlights the recent UDRP Decision Glaxo Group Limited v. Melissa S, WIPO Case No. D2014–0826, in which Respondent was required to transfer a domain name after a finding of bad faith registration and use.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the UDRP, Complainant must show grounds for this administrative proceeding by proving the following about Respondent's disputed domain name:
(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect to the disputed domain name; and
(iii) Respondent's disputed domain name has been registered and is being used in bad faith.
According to paragraph 15 of the Rules, the Panel "shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
A. Effect of the Default
Paragraph 14(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") states that "[i]n the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint."
Paragraph 14(b) of the Rules further provides that "[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."
The fact that Respondent has not submitted a response does not automatically result in a decision in favor of Complainant. However, the failure of Respondent to file a response may result in the Panel drawing certain inferences from Complainant's evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true. See Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009–1437; Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000–0403 (finding "it appropriate [. . . ] to draw an adverse inference from the Respondent's failure to reply to the Complaint and detail any legitimate rights or interests he may have in the Domain Name of the type defined in paragraph 4(c) of the ICANN Policy."). Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., WIPO Case. No. D2000–0441; RX America, LLC v. Matthew Smith, WIPO Case No. D2005–0540.
B. Identical or Confusingly Similar
Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the OCEVIENT Mark on the Swiss Federal Institute of Intellectual Property Register pursuant to Certificate Swiss Reg. No. 657293 (filed on April 2, 2014). Pursuant to Section 6: Priority of Filing, Swiss trademark law provides that "[t]rademark rights shall be generated on entry in the Register." Therefore, rights belong to the first to file, such rights are generated on entry in the Register, and a registration is effective as of filing and need not wait until the mark is published. See 5 World Trademark Law and Practice CHE § 7. There are no provisions requiring proof of use under the laws of Switzerland. See5 World Trademark Law and Practice CHE § 4. In any event, the ownership of a domain name registration may be questioned by comparing it to a trademark registered in any country. See Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358. The Panel finds that the Complainant has rights in the OCEVIENT Mark beginning on April 2, 2014.
The confusing similarity test sets a low threshold for the Panel to find whether a complainant has sufficient rights to bring a complaint. See Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227.
It is well-established that the mere addition of the generic Top-Level Domain ("gTLD") ".com" is not a distinguishing feature and may be disregarded. L'OREAL v. Lewis Cheng, WIPO Case No. D2008-0437; 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.The relevant comparison to be made in this case is with the second-level portion of the disputed domain name "ocevient." Where a domain name includes an identical match to a complainant's mark, a complainant has satisfied the burden of proving that the domain name is identical or confusingly similar under paragraph 4(a)(i) of the Policy. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000–0163; The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137.
Turning to whether the disputed domain name is identical or confusingly similar to the OCEVIENT Mark, the Panel observes that the disputed domain name comprises an exact reproduction of Complainant's Mark followed by the gTLD extension ".com" all in one continuous domain name.
Accordingly, the Panel finds that Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must show that Respondent has no rights or legitimate interests in the disputed domain name. Under paragraph 4(c) of the Policy, a respondent may demonstrate rights or legitimate interests if:
(i) before any notice of the dispute, respondent's use 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 it has acquired no trade mark 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 consumers or to tarnish the trade mark or service mark at issue.
Acknowledging the inherent difficulties in proving a negative, the general view is that the complainant need only provide a prima facie case that the respondent lacks rights or legitimate interests. Subsequently, the burden of production then shifts to the respondent to rebut that prima facie case. See World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306. The Policy provides that one way to show a legitimate interest is to present evidence of "use, or demonstrable preparations to use, the domain name [. . .] in connection with a bona fide offering of goods or services." Policy ,Paragraph 4(c)(i). The complainant's prima facie showing that the respondent lacks a legitimate interest places upon the respondent a burden of production on this factor. UNIVERSAL CITY STUDIOS, INC. v. G.A.B. ENTERPRISES, Case No. D2000-0416. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that there is no evidence to show that Respondent has any rights in any trademarks or service marks that are identical, similar or related to the disputed domain name. Therefore, the Panel will assess Respondent's rights in the disputed domain name (or lack thereof) based on Respondent's use of the disputed domain name in accordance with the available record.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name because Respondent has no connection or affiliation with the OCEVIENT Mark, Complainant, or its affiliates. Complainant contends that Respondent has not been authorized by Complainant or its affiliates to use or license the Mark and has never sought such permission. Complainant further alleges that Respondent is engaged in a practice of observing the trademarks that Complainant files, then registers the corresponding domain names, and offers it for sale on GoDaddy Auctions at a price substantially exceeding the cost of its registration.
Respondent, Melissa S, is the current registrant of the disputed domain name employing Complainant's trademark. Based on a screenshot (dated July 23, 2014 by Complainant's attorney) submitted by Complainant, Respondent's website directs Internet users to an auction website where the disputed domain name is for sale for USD 850.See Complaint Annex 6.
In this case, Respondent is not commonly known by the disputed domain name. In light of the fact that (a) Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those trademarks; (b) Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy; or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name that could amount to a legitimate noncommercial or fair use; and (c) the fact that the word "ocevient" appears to be invented by Complainant, this Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that Complainant has satisfied its burden that Respondent does not have any rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy requires that Complainant show Respondent registered and is using the disputed domain name in bad faith. The following circumstances, among other indicia, evidence such bad faith:
(i) circumstances indicating that you have registered or you 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 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 have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are non-exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
Bad faith may be found when Respondent is aware of Complainant, and it is readily apparent that the aim of the registration was to take advantage of the confusion between the domain name and any potential Complainant rights. See MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598 (transferring <2m12.com> et al. because the respondent registered disputed domain names containing complainant's applied-for "2M12" mark). In Madrid 2012, supra, the panel found the term "'2M12 to be a very imaginative creation… [and] [i]t is extremely unlikely that two persons have the same idea at the same time and create the same sequence of letters in a period of just 6 days aiming at a similar purpose." Id. The panel therefore assumed that the respondent knew about the complainant's trademarks when registering the domain names and it was therefore in bad faith. Further, in Kangwon Land, supra, the panel analyzed whether respondent had knowledge that trademark rights would soon arise through use or registration of a mark by complainant. See Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc.), WIPO Case No. D2003-0320. In that case, the panel recognized that "respondent's registration of the Domain Name was prior to any of the trademark or service mark registration applications of complainant." Id. Nevertheless, in transferring the domain name to complainant, the panel found bad faith because "respondent registered the Domain Name fully conscious of what 'business' he could make out of mistakenly being affiliated with the Complainant." Id.
Complainant argues in view of circumstances of the registration of the disputed domain name in such close temporal proximity to Complainant's Swiss trademark filing and then offering it at auction for USD 850, Respondent is generating unjustified revenues by illegitimately attempting to capitalize on Complainant's trademark. Complainant asserts that only someone with knowledge of the filed marks—considering the fact that the mark consists of an invented term—could have registered the disputed domain name. Further, Complainant contends that the disputed domain name is being used in bad faith because Respondent is engaged in the practice of registering domain names identical or similar to existing trademarks or service marks and offering them for sale at prices representing considerable profit over their direct costs of registration. Respondent has failed to present evidence to rebut Complainant's contentions.
These circumstances support a finding of bad faith. Indeed, the fact that Respondent registered the disputed domain name on April 2, 2014, after the Complainant filed the aforementioned trademark applications, while not sufficient to establish a pattern of conduct, is suggestive that Respondent knew of Complainant's applied-for marks. See Home Interiors & Gifts, Inc. v. Home Interiors, WIPO Case No. D2000-0010. In the Panel's view, it is impossible, at least without a response to the Complaint, to identify a reason why the Respondent registered the disputed domain name other than to take advantage of Complainant's Mark. Respondent's use of the disputed domain name is to all appearances for domain name monetization unconnected with any bona fide supply of goods or services by Respondent. Complainant's OCEVIENT Mark is the result of imaginative creation. Thus, Respondent's business model appears to consist of observing what trademarks Complainant is filing, swiftly registering the corresponding domain name, and then offering the disputed domain name for sale on GoDaddy Auctions at a price exceeding the registration price. This Panel therefore finds that the disputed domain name was registered in bad faith.
Here, the domain name resolved to a webpage that embeds a link to buy the dispute domain name for USD 850. In light of the circumstances surrounding the registration of the disputed domain name in such immediate succession to Complainant's trademark applications and then offering it for sale, this Panel also finds that Respondent use of the disputed domain name is in bad faith. Respondent has used Complainant's mark in the disputed domain name without authorization, for the specific purpose of selling it for valuable consideration in excess of the costs related to the registration of the disputed domain name in bad faith pursuant to paragraph 4(b) of the Policy.
On balance, the Panel finds that Complainant has satisfied its burden of proving that Respondent has registered and is using the disputed domain name in bad faith.
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 <ocevient.com> be transferred to the Complainant.
Date: October 29, 2014