WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG and Genentech, Inc. v. Privacy Hero Inc / “F. Hoffmann-La Roche AG”

Case No. D2015-1497

1. The Parties

The Complainants are F. Hoffmann-La Roche AG of Basel, Switzerland and Genentech, Inc. of South San Francisco, California, United States of America (“United States”), internally represented.

The Respondent is Privacy Hero Inc of St. Peter, Barbados / “F. Hoffmann-La Roche AG” of Basel, Switzerland.

2. The Domain Names and Registrar

The Disputed Domain Names <buybonviva.com> and <buypulmozyme.com> are registered with Rebel.com Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2015. On August 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On August 27, 2015, August 31, 2015 and September 8, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names, which reflected the contact details of the Complainant. The Center sent an email communication to the Complainant on September 9, 2015 providing the registrant and contact information disclosed by the Registrar. The Complainant, refusing to amend the named registrant in accordance with the provided information, filed an amendment to the Complaint on September 11, 2015.

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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2015. On request of the Complainant, the proceeding was suspended on September 16, 2015. The proceeding was reinstituted on September 24, 2015.

After reinstitution, the due date for Response was extended through October 14, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2015.

The Center appointed Anders Janson as the sole panelist in this matter on October 27, 2015. 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

F. Hoffmann-La Roche AG, the first Complainant, is a worldwide leader in research, pharmaceutical and diagnostic products and has global operations in more than 100 countries. The Complainant has several trademark registrations for BONVIVA, inter alia International Trademark Registration No. 594 093 (word mark) for which the priority date is October 28, 1992, and Barbados Trademark Registration No. 81/25160 (word mark). The BONVIVA trademark designates a drug for the prevention or treatment of osteoporosis/bone diseases. The trademark BONVIVA is registered in an alternative form as BONIVA in the United States Patent and Trademark Office by F. Hoffman-La Roche AG’s United States branch Roche Therapeutics Inc.

Genetech Inc., the second Complainant, holds protection for the trademark PULMOZYME according to International Trademark Registration No. 859 614, for which the priority date is May 3, 1991, and Canadian Trademark Registration No. TMA431,019. PULMOZYME designates a drug that is used to improve pulmonary function in people with cystic fibrosis and to reduce the risk of respiratory tract infections.

The first and second Complainants are part of the same umbrella corporate entity, the Roche Group.

The Disputed Domain Names, <buybonviva.com> and <buypulmozyme>, were registered with the Registrar on December 29 and December 30, 2010, respectively. Both Disputed Domain Names resolve to the online pharmacy “www.canadianpharmacymeds.com”.

5. Parties’ Contentions

A. Complainant

The Disputed Domain Names are confusingly similar to trademarks or service marks in which the Complainants have rights.

The Disputed Domain Names incorporate the Complainants’ marks BONVIVA and PULMOZYME in their entirety. The addition in each domain name of the descriptive word “buy” does not sufficiently distinguish the Disputed Domain Names from the Complainants’ registered trademarks BONVIVA and PULMOZYME.

The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainants have exclusive and prior rights in the trademarks BONVIVA and PULMOZYME, which precede the Respondent’s registration of the Disputed Domain Names.

The Respondent has no connection or affiliation with the Complainants and has not received any license or consent, expressed or implied, to use the Complainants’ marks BONVIVA and PULMOZYME and neither to use the BONIVA mark of F. Hoffman-La Roche AG’s US branch Roche Therapeutics Inc.

By falsely implying that its pharmaceutical products are related or similar to those of the Complainants, the Respondent is using the Disputed Domain Names with the purpose of trading on the Complainants’ goodwill and on Roche Therapeutics Inc.’s goodwill.

The Respondent operates an online pharmacy at the Disputed Domain Names, which appears to sell only Bonviva and not Pulmozyme. In any event, such activity does not represent a legitimate noncommercial or fair use under the Policy, paragraph 4(c)(iii). According to Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 “several cases have found that a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and that is being used to direct consumers to an on-line pharmacy.”

Furthermore, whilst the Respondent did react to the Complainants’ cease and desist letter by statitng “[w]e do not agree with the assertions made in your e-mail regarding the domain name[s] buybonviva.com [and buypulmozyme.com]. However, to avoid any possible misunderstandings, we are prepared, on a without prejudice basis, and without any admission of liability to transfer the ownership of the domain name[s] to your company”, the Respondent did not take the opportunity to present any case of rights or legitimate interests that the Respondent might have in the Disputed Domain Names. Therefore there is no reason why the Respondent should be found to have any rights or legitimate interests in the Disputed Domain Names.

The Disputed Domain Names were registered and are being used in bad faith. The Disputed Domain Names were registered in bad faith. There is no doubt that at the time of the registrations the Respondent had knowledge of the Complainants’ marks BONVIVA and PULMOZYME and of the alternative mark BONIVA.

The Disputed Domain Names contain the words “Bonviva” and “Pulmozyme”, respectively, and display the same online pharmacy webpage in order to attract Internet users searching for the Complainants’ BONVIVA and PULMOZYME marks via search engines, including users who expect to be led to the Complainants’ genuine websites or to sites endorsed by the Complainants. This shows that the Disputed Domain Names are being used in bad faith.

According to the above mentioned case Pfizer Inc. v. j a/k/a Josh Green, supra, bad faith is established when a “[r]espondent is using the domain names as a forwarding address to a for-profit on-line pharmacy.” Therefore, the Respondent may generate unjustified revenues and is illegitimately capitalizing on the Complainants’ marks BONVIVA and PULMOZYME.

Moreover, the Respondent is using the Disputed Domain Names to redirect to an online pharmacy, which advertises and sells products of competitors of the Complainants. According to Hoffman-La Roche Inc. v. Domain Admin / Michael Carrillo, WIPO Case No. D2015-0160, which refers to Hoffman-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240, “it is well-established that using a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among Internet users as to the source of products or to confusingly suggest sponsorship by the trademark owner”.

The Complainants also point out that they intended to reach an amicable settlement with the Respondent without success due to the Respondent’s conduct intentional attempt trying to stall for time when in fact it was clearly not willing to transfer the Disputed Domain Names. The bad faith of the Respondent is also evident from the fact that it has used a privacy service and has never revealed its genuine identity.

As a result, the Respondent is deliberately using the Disputed Domain Names in connection to the Complainants’ BONVIVA and PULMOZYME marks in order to mislead the consumers and confuse them by making them believe that the Complainants’ recommend the websites at the Disputed Domain Names.

In accordance with the reasons described above, the Complainants request that the Disputed Domain Names be transferred to the Complainant F. Hoffmann-La Roche AG.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Given the case file and the Respondent’s failure to file a response, the Panel accepts as true the reasonable contentions of the Complainant. The Respondent’s default does not however automatically lead to a transfer of the Disputed Domain Names. On the contrary, the Complainant still must establish that is it entitled to a transfer of the Disputed Domain Names under the Policy.

According to paragraph 4(a) of the Policy, in order to succeed, the Complainants must establish each of the following elements:

(i) The Disputed Domain Names are identical or confusingly similar to the trademark or service mark in which the Complainants have rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) The Disputed Domain Names have been registered and are being used in bad faith.

A. Preliminary Procedural Matters

Multiple Complainants

The Panel finds the consolidation of multiple complainants appropriate in the circumstances of this case. Paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) records the consensus view that consolidation of multiple Complainants in a single proceeding is allowable when “(i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation.” Here, given that the Complainants are both drug manufacturers in the same corporate family, and the two Disputed Domain Names are used to resolve to the same unauthorized online pharmacy, the respondent has clearly engaged in common conduct affecting the complainants’ rights in a similar fashion. In these circumstances consolidation of multiple complainants into a single proceeding is also equitable.

Respondent Identity

The Respondent has been confirmed by the Registrar as “F. Hoffmann-La Roche AG”. However, as maintained by the Complainants and uncontroverted by the Respondent, neither Complainant controls the disputed domain names. In these circumstances, the Panel finds that the name provided by the Respondent to the Registrar is false, and that the Respondent’s true identity remains unknown. The Panel has indicated this by placing the Registrar-confirmed Respondent identity in quotation marks in the caption of this decision.

B. Identical or Confusingly Similar

The Panel finds that the Complainants have trademark rights in BONVIVA and PULMOZYME with reference to the trademark registrations.

The Disputed Domain Names are <buybonviva.com> and <buypulmozyme> and therefore contain the entire words “Bonviva” and “Pulmozyme”, which are the Complainants’ registered trademarks. The fact that the Disputed Domain Names also contain the term “buy” does not diminish the risk of confusion. The Panel therefore finds that the Disputed Domain Names are confusingly similar to the Complainants’ trademarks.

Accordingly, the Panel finds that the Complainants have satisfied the requirements under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

In this case, the Complainants have offered convincing explanations and enough evidence of their exclusive rights in the BONVIVA and PULMOZYME trademarks. The Panel finds that the Complainants have made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names.

Therefore, the burden of production shifts to the Respondent to bring forward appropriate allegations or evidence of its rights or legitimate interests. The Respondent has not replied to the Complainants’ contentions. The failure to file a response leaves the Panel to decide the case on the basis of the available record and the evidence provided by the Complainants. Upon consideration of the available record, the Panel is satisfied that the Respondent has no rights or legitimate interests in the Disputed Domain Names.

Accordingly, the Panel finds that the Complainants have satisfied the requirement under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The Panel finds that the Complainants’ trademarks are well-known, and, further, that it is highly unlikely that the Respondent was unaware of the Complainants’ trademarks as the Disputed Domain Names display an online pharmacy webpage in order to attract Internet users searching for the Complainants’ Bonviva and Pulmozyme products via search engines, including users who expect to be led to the Complainants’ genuine website or to sites endorsed by the Complainants. Accordingly, the Panel finds that the Disputed Domain Names were registered in bad faith.

With respect to use, the Respondent has used the Disputed Domain Names to divert visitors to its websites for its own commercial benefit via confusion with the Complainants’ marks. The Respondent registered the Disputed Domain Names in order to gain commercial benefit. This constitutes evidence of registration and use of the Disputed Domain Names in bad faith in accordance with paragraph 4(b)(iv) of the Policy. There is no material in the record which displaces this presumption.

The Panel finds that the Complainants have fulfilled the requirements under paragraph 4(a)(iii) of the Policy.

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 Names, <buybonviva.com> and <buypulmozyme.com>, be transferred to the Complainant F. Hoffmann-La Roche AG.

Anders Janson
Sole Panelist
Date: November 10, 2015