WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Domain Admin / This Domain is For Sale, Home of Domains
Case No. D2017-1145
1. The Parties
Complainant is F. Hoffmann-La Roche AG, of Basel, Switzerland, represented internally.
Respondent is Domain Admin / This Domain is For Sale, Home of Domains of Phoenix, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <prelumino.com> (the “Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2017. On June 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 12, 2017, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 12, 2017.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on July 20, 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
Complainant, together with its affiliate companies, is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics. It has operations in more than 100 countries.
On April 11, 2017, Complainant filed an application for the word mark PRELUMINO with the Swiss Federal Institute of Intellectual Property in class 5. On April 24, 2017 the mark was registered under No. 701384. Complainant also filed an application for an international trademark on the basis of its Swiss national trademark.
Also on April 11, 2017 the Disputed Domain Name was registered.
On May 31, 2017, Complainant sent a cease and desist letter to Respondent, and received the following answer on the same day:
Prelumino.com is for sale on NameSilo.com, 950 USD
There is no other opportunity to buy this premium name
Buy Link: www.prelumino.com
The Disputed Domain Name refers to a parking page.
5. Parties’ Contentions
Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. Complainant argues that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the Disputed Domain Name. Complainant claims that the Disputed Domain Name was registered and used in bad faith. Complainant claims that the time of registration of the Disputed Domain Name suggests bad faith, and that Respondent registered the Disputed Domain Name primarily for the purpose of selling it to Complainant for valuable consideration in excess of Respondent’s out-of-pocket expenses.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. The standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i. the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. 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.
The Panel will deal with each of these requirements in turn.
A. Identical or Confusingly Similar
To prove this element Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has established that it has rights in the registered trademark PRELUMINO, which it intends to use in connection with a pharmaceutical ophthalmic preparation to be launched on the market.
The Disputed Domain Name incorporates Complainant’s PRELUMINO trademark in its entirety. The Panel is of the opinion that the addition of generic Top-Level Domains (“gTLDs”) can be disregarded when comparing the similarities between a domain name and a trademark (See Bialetti Industrie S.p.A. v. Onno Brantjes, Stichting Taxaceae, WIPO Case No. D2016-1450; Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah, WIPO Case No. D2014-0269). Therefore, the Panel considers the Disputed Domain Name to be identical to Complainant’s PRELUMINO trademark.
Accordingly, Complainant has made out the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant has the burden of establishing that respondent has no rights or legitimate interests in respect of the disputed domain name.
It is well established under the Policy that it is sufficient for a complainant to make a prima facie showing that respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on respondent. See, Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
The Panel notes that Respondent has not been commonly known by the Disputed Domain Name and that Respondent does not seem to have acquired trademark or service mark rights. Respondent’s registration or use of the Disputed Domain Name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed. For the reasons that the Panel sets out when assessing whether the Disputed Domain Name was registered and used in bad faith, the Panel is of the view that the Disputed Domain Name was registered with Complainant’s marks in mind.
In view of the above, the Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that is being used in bad faith (see e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors are circumstances indicating that respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the disputed domain name.
In the instant case, Respondent must have known of Complainant when acquiring the Disputed Domain Name. The fact that Respondent registered the Disputed Domain Name at the same date of Complainant’s trademark application being made is suggestive that Respondent knew of Complainant’s trademark (see Glaxo Group Ltd. V. Melissa S, WIPO Case No. D2014-0826; Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598). It is extremely unlikely that Respondent had the same idea at the same time to have the same sequence of letters as Complainant’s trademark application registered as a domain name. The facts of the case establish that Respondent’s intent in registering the Disputed Domain Name was to unfairly capitalize on Complainant’s nascent trademark rights; accordingly the Panel finds that Respondent acted in bad faith. See section 3.8.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Respondent’s immediate offer in response to Complainant’s cease and desist letter to sell the Disputed Domain Name for USD 950 suggests Respondent’s intention to sell the Disputed Domain Name to Complainant for valuable consideration in excess of Respondent’s out-of-pocket expenses. Respondent’s bad faith intention to sell the Disputed Domain Name to Complainant is further corroborated by the mention in the WhoIs records that the “Domain is For Sale”.
Finally, by failing to respond to the Complaint, Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.
In view of the above, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used 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 <prelumino.com> be transferred to Complainant.
Flip Jan Claude Petillion
Date: August 10, 2017