WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Dr. Rashmi Tyagi, Roche Pathology
Case No. D2016-2457
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Dr. Rashmi Tyagi, Roche Pathology of Delhi, India, represented by Kapil Tyagi, India.
2. The Domain Names and Registrars
The disputed domain names <rochepathlabs.com> and <rochepathology.com> (the “Domain Names”) are registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2016. On December 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 6, 2016, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2016. The Response was filed with the Center on December 24, 2016. The Center received a supplemental filing from the Complainant on January 4, 2017, and on the same day an email communication from the Respondent.
The Center appointed Ellen B Shankman as the sole panelist in this matter on January 13, 2017. 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
The dates of the Domain Names registrations were confirmed by the Registrar to be November 16, 2016.
The trademark ROCHE serves as house-mark of the Complainant and is protected as a registered trademark in multiple jurisdictions worldwide. The Complainant provided evidence of multiple trademark registrations both in and out of India for the mark ROCHE including, inter alia, International Registrations Nos. 340483 (registered on November 14, 1967) and 346223 (registered on June 19, 1968) both for word marks, that predate the date of the Domain Names registrations for a variety of health related goods and services.
The Panel also conducted an independent search to determine that the Domain Names resolve to webpages that promote medical and diagnostic testing and patient support, and which are currently active.
The Complainant also provided evidence of sending a Cease and Desist letter before commencing the proceedings, to which the Respondent answered.
5. Parties’ Contentions
The Complainant alleges that, together with its affiliated companies, it is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries. The trademark ROCHE serves as house-mark of the Complainant and is protected as a registered trademark in a multitude of countries worldwide.
The Complainant has several affiliates in India including offices for its Diagnostics Division, see details under: “www.roche-diagnostics.co.in”, “www.roche-diagnostics.co.in/products.html” and “www.rocheindia.com”. Furthermore, the Complainant owns and uses the domain name <roche.com>.
The Domain Names are confusingly similar to the Complainant’s mark seeing that they incorporate the Complainant’s mark ROCHE in their entirety. The addition of the generic terms “pathology” and “pathlabs” (abbreviation for Pathology and Labs – Laboratories), does not sufficiently distinguish the Domain Names from ROCHE. As a result, the Domain Names are confusingly similar to the Complainant’s ROCHE trademark, making it possible for customers to believe that the Domain Names are related to the Complainant. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s mark ROCHE.
Furthermore, the Complainant alleges that the Respondent is using the Domain Names with the purpose of capitalizing on the reputation of the Complainant’s mark ROCHE and has created websites with same appearance and in identical colours blue and white. In the case of the Domain Name <rochepathology.com> the Respondent even uses the title “Roche Diagnostics”, and compares it with the website of the Complainant’s affiliate in India. Therefore, the Domain Names were registered in bad faith with the intent to create an impression of an association with the Complainant’s ROCHE mark.
The Complainant also argues that the Respondent could not ignore the ROCHE mark because of previous correspondence and warning letters dated September 7, 2016 as well in citing a previous decision in F. Hoffman-La Roche AG v. Rashmi Tyagi, Roche Pathology, WIPO Case No. D2016-1590 issued on September 14, 2016 regarding the domain name <roche-india.com> between the same parties.
The Complainant provided evidence that it sent the Respondent the Cease and Desist letter on November 21, 2016 requesting the voluntary transfer of the domain name to the Complainant. The Complainant alleges that the Respondent’s responses of November 27 and 29, 2016 were mere delaying tactics seeking to obtain additional time.
To summarize the Complaint, the Complainant is the owner of numerous registrations for the trademark ROCHE and the ROCHE house logo, in respect of a wide range of health related goods and services. The Domain Names are confusingly similar to the trademark owned by the Complainant. The addition of the generic or descriptive words “pathlabs” and “pathology” to the term “roche” does not prevent a finding of confusing similarity. Therefore, the Domain Names could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Domain Names were registered and are being used in bad faith. Thus, the Respondent’s registration and use of the Domain Names constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Names.
The Respondent takes issue with the UDRP decisions cited by the Complainant and alleges that the current situation is distinguishable from those previous decisions.
The Respondent alleges that it is a legally formed healthcare services company in Delhi, India, that is promoted by a group of medical doctors and well-known for economical healthcare service for less privileged. The Respondent claims that one important area of its operations is pathological lab testing hematological diseases. The Respondent alleges that the Complainant has no registered operational hospital/clinics/pathology labs service in India and that it has a service mark registered that has no connection with the Complainant.
The Respondent also provides examples of other healthcare related uses with the term “roche”, and argues that it should not be treated differently or singled out because they are an Indian Company, and claims it “should be given full right to web presence to commence our business which is an important part of human society”, since they are services for ‘less privileged”.
The Respondent further argues that its design is different and there is no competition or confusion. The Respondent further asks the Panel to make a finding of reverse domain name hijacking under paragraph 15(e) of the Rules.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(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;
(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 used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for ROCHE.
The Panel finds that the Domain Names are confusingly similar to the Complainant’s trademark. Further, the Panel finds that the mere addition of the generic and/or descriptive terms “pathlabs” and “pathology” to the Domain Names does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Names and the Complainant’s trademark and if anything, enhances it to suggest the offer of the Complainant’s goods and services, and even gives the impression of ‘partnership’. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”.
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Names are identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. Based on the available record, the Panel finds that the Complainant has established a prima facie case, that the Respondent lacks rights or legitimate interests in the Domain Names.
The Panel understand that the Respondent’s assertion that it has a legitimate right to use the Domain Names falls essentially into three buckets: (1) because it has established a company under that name and has rights in the name; (2) because the Complainant doesn’t have laboratories in India; and (3) because the Respondent is doing important work for a disadvantaged population.
The Panel is not persuaded that the Respondent in recently registering a company name in 2016 provides the Respondent with legitimate rights to use the Complainant’s well-known trademark for similar goods/services under the Domain Names. Further, the Panel is not persuaded by the Respondent’s evidence that the Complainant is not active in India, nor does the Panel agree that the Complainant waives its registered trademark rights in India by virtue of its alleged non-activity or non-identical activity. The Panel also believes that even where the Respondent may be doing important work in trying to provide health care and diagnostics to a disadvantaged population – while laudatory – it does not confer legitimate rights or interest in the name “roche” by the Respondent in the Domain Names.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Names, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Names with full knowledge of the Complainant’s ROCHE trademark and that the registration and use of the Domain Names is in bad faith. This finding is consistent with F. Hoffmann-La Roche AG v. Clear Foto, WIPO Case No. D2009-0501, “Complainant's ROCHE trademark has acquired worldwide reputation, identifying the products and services marketed by Complainant. It is therefore highly unlikely that Respondent, whose consultancy business is involved in public health services, registered the Domain Name in March 2009 without knowledge of Complainant's ROCHE mark.” See also Pfizer Inc. v. Legal Dept, Barry McMahon and Pfizer ltd, Sys Admin, WIPO Case No. D2013-2046.
In addition, it has been held in previous UDRP cases that knowledge of the corresponding trademark at the time of the domain name’s registration suggests bad faith (LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Caixa D’Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464) and see, e.g., Bartercard Ltd & Bartercard International Pty Ltd. v. Ashton-Hall Computer Services, WIPO Case No. D2000-0177.
It is clear to the Panel that the look and feel of the Respondents websites, together with the name ROCHE as well as the logo in blue that is the name “ROCHE” contained in a circle is a deliberate play on the Complainant’s well-known logo of ROCHE in a hexagon. Further, the Panel finds that this is not the first time that the Respondent is trying to find a way to take commercial advantage of the Complainant’s mark. It appears to the Panel that when the Respondent did not succeed in registration of the domain name <roche-india.com>, it sought other alternatives, similarly in bad faith. In examining the circumstances of this case, the Panel finds the Respondent is using the Domain Names in bad faith. The Panel further finds that even if the Respondent has “good faith” intentions with the health work it is doing with disadvantaged populations, that does not justify the registration and use of the Domain Names nor does it undermine a finding that the registration and use of the Domain Names was done in bad faith.
This finding is consistent with the decision in F. Hoffman-La Roche AG v. Rashmi Tyagi, Roche Pathology, WIPO Case No. D2016-1590, in which the Respondent did not choose to provide a response: “For decades, the Complainant has made use of its widely-known trademark ROCHE around the world, including in India. It could be concluded that the Respondent had previous knowledge of the reputation of the trademark ROCHE before registering the disputed domain name, selected without authorization the disputed domain name with the purpose of intentionally attempting to attract, for commercial gain, Internet users to the disputed domain name’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website within the meaning of paragraph 4(b)(iv) of the Policy.”
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Names and the Respondent’s use of the Complainant’s well-known trademark in the website under the Domain Names, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names in bad faith, under paragraph 4(a)(iii) of the Policy.
With regard to the Respondent’s claim that this is a case of Reverse Domain Hijacking, the Panel does not feel the need to go into greater analysis of this, since the Panel believes this a legitimate case filed by the Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <rochepathlabs.com> and <rochepathology.com> be transferred to the Complainant.
Ellen B Shankman
Date: January 16, 2017