WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Mohammadali Mokhtari
Case No. DIR2019-0007
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Switzerland, internally represented.
The Respondent is Mohammadali Mokhtari, Iran (Islamic Republic of), self-represented.
2. The Domain Name and Registrar
The disputed domain name <roche.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2019. On the same day, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On July 6, 2019, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Amended Complaint was filed with the Center electronically on July 22, 2019, while hard copies of the Complaint and of the Amended Complaint were received by the Center on July 24, 2019. On August 1, 2019, the Center received an informal email communication from the Respondent regarding the filing of the Response.
The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 6, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2019. On the same day, the Respondent requested a seven day extension to file the Response. On August 28, 2019, the Center extended the due date to file the Response until September 2, 2019. The Response was filed with the Center on September 2, 2019. The Complainant submitted an unsolicited supplemental filing on September 5, 2019. The Respondent submitted an unsolicited supplemental filing on September 11, 2019.
The Center appointed Matthew Kennedy as the sole panelist in this matter on September 13, 2019. 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 Complainant is part of a research-focused healthcare group active in the fields of pharmaceuticals and diagnostics, with operations in over 100 countries. It has an affiliate in Iran named Roche Pars Ltd. which, according to evidence submitted by the Respondent, was registered in or about 2012. The Complainant holds multiple trademark registrations for ROCHE, including international trademark registrations number 340483, registered on November 14, 1967, specifying goods in class 10; international trademark registration number 346223, registered on June 19, 1968, specifying goods in classes 1, 2, 3, 5, 16, 29, 30, and 31; Iranian trademark registration number 3039, registered on February 19, 1946 in respect of goods in classes 3 and 5; and Iranian trademark registration number 32287, registered on December 23, 1968 in respect of services in class 44. These trademark registrations remain current. The Complainant has also registered the domain name <roche.com> that it uses in connection with an official website where it provides information about itself and its products.
The Respondent is an individual resident in Iran. He is the Vice-Chairman of Pars Pardazesh Farda Ltd, an Iranian company founded in 2006 for activities in the areas of computing, import and export, participation in local and international fairs, and administrative services, including computer, communication and network.
The disputed domain name was acquired by the Respondent on May 18, 2010. At the time of this decision, it does not resolve to any active website.
The Complainant’s Iranian affiliate, Roche Pars Ltd., sent emails to the Respondent on May 29, 2019 and June 9, 2019 titled “Purchasing Domain” and attaching a draft transfer of domain agreement, which referred to a contract price of 90 million rials in words (approximately USD 2,100) but “900,000,000” rials in numerals. There is no evidence on the record that the Respondent replied to these emails. The Complainant sent a cease-and-desist letter to the Respondent on June 20, 2019 asking him to agree to the transfer of the disputed domain name.
5. Parties’ Contentions
The disputed domain name is identical or confusingly similar to the Complainant’s ROCHE mark. The ROCHE mark is totally included in the disputed domain name.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. 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 ROCHE mark. The disputed domain name does not currently resolve to any active website, i.e., the Respondent is passively holding it. The Respondent did not reply to the Complainant’s cease-and-desist letter.
The disputed domain name was registered and is being used in bad faith. The Respondent’s registration of the disputed domain name was well after the Complainant’s trademark registrations. The disputed domain name was registered in bad faith with the intent to create an impression of an association with the Complainant's ROCHE mark. The Respondent clearly knew of the Complainant’s well-established reputation in the trademark ROCHE and has intentionally sought to confuse Internet users even if the disputed domain name is currently not yet fully functional. This constitutes opportunistic bad faith. The Respondent has registered other domain names composed of famous marks that have been the subject of irDRP decisions, all decided in favor of the respective complainants.
The Complainant disputes that “roche” is a generic word in Persian and submits that the word used by the Respondent is pronounced “roocheh”. The Respondent did not reply to the Complainant’s cease-and-desist letter or allege any rights and legitimate interests in the disputed domain name at that time. The Respondent’s grape-related website was not active at the time that the Complainant sent its cease-and-desist letter and it may have only been created after the filing of the Complaint.
The main pronunciation of “roche” in the Persian language is completely different from the pronunciation of “roche” in the name of “Roche Pars Ltd”.
The Respondent has rights and legitimate interests in respect of the disputed domain name. The word “roche” is a generic term in Persian which refers to a grape variety widely cultivated in Iran. It also means “day” in southern Iran. There is a newspaper named Roche. Several Iranian cities, suburbs and regions incorporate “roche”. The word is also a name and has meanings in other languages. The disputed domain name resolves to a website for an Iranian grape cultivated, used and distributed widely, especially in the south of Iran, and in Afghanistan. The purpose of website is to promote the distribution, trading, import and export of the Roche grape in Iran and Afghanistan and abroad and any related news mainly for grapes and fruits. The Respondent has provided a screenshot, a logo and a business card which demonstrate preparationsfor the website. The Respondent has been using the disputed domain name with a bona fide offering of services. The website provides information on the Respondent’s services and is without intent for commercial gain. The main connotation of “roche” is a grape variety in Persian speaking countries, including Iran, Afghanistan and Tajikistan, which comprise over 120 million speakers.
The disputed domain name was not registered and is not being used in bad faith. The vital question is why the Respondent should be aware of the future business of the Complainant a decade after the registration of the disputed domain name. Registration of a domain name, even one consisting of a famous mark, is not sufficient to establish bad faith, especially where it has been registered for ten years. In the present case, the disputed domain name was registered in 2010, the Complainant established its Iranian affiliate in 2012, the Complainant registered its trademark in 2016 the Complainant’s affiliate contacted the Respondent in 2019 and the Complaint was filed in 2019. The Complainant’s failure to take action against the disputed domain name for so long raises the inference that it did not truly believe that it had been registered or was being used in bad faith. The older the domain name, the harder it is to establish bad faith. Passive holding does not establish bad faith in the present case because the disputed domain name is a dictionary word in some languages with uses by multiple parties and the Respondent has filed a Response. Registering several generic domain names, some of them three to five characters in length, some of them having different meanings in the registrant’s language eo ipso does not constitute bad faith. There is no prohibition on the Respondent registering this type and/or number of domain names related to his company’s business.
The Complainant has engaged in reverse domain name hijacking. The Respondent was contacted many times by the Complainant’s Iranian affiliate, in May and June 2019, for the purpose of purchasing the disputed domain name. These contacts were made a decade after the registration of the disputed domain name. The Complainant has filed 432 complaints at the Center and knows that respondents often default. Having failed to acquire the disputed domain name from the Respondent, the Complaint is a “Plan B”, which constitutes an abuse of the proceeding. Nor did the Complaint disclose that the Complainant had been in contact with the Respondent for the purpose of purchasing the disputed domain name. The Complainant knew, or should have known, that it could not succeed in its Complaint under any reasonable interpretation of the Policy. It is impossible to believe that the Complainant was not aware that the disputed domain name had been registered and was being used by another entity for many years. The Respondent also alleges that the Complaint was falsely certified.
6. Discussion and Findings
6.1 Supplemental filing
The Complainant requests that the Panel accept its supplemental filing of September 5, 2019 because the Response was the first feedback that the Complainant had received from the Respondent. The Respondent argues that the Complaint and the Complainant’s supplemental filing both constitute an abuse of this administrative proceeding and submits his own supplemental filing of September 11, 2019 to respond to the Complainant’s supplemental filing.
Paragraph 10(c) of the Rules requires the Panel to ensure that the administrative proceeding takes place with due expedition. Paragraph 10(d) of the Rules also provides that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Although paragraph 12 of the Rules empowers the Panel, in its sole discretion, to request further statements or documents from either of the Parties, this does not preclude the Panel from accepting unsolicited filings.
The Panel observes that the Complainant’s supplemental filing responds to factual evidence presented in the Response regarding preparations for a website that the Complainant could not have commented on earlier, and that the Respondent’s supplemental filing responds to the Complainant’s supplemental filing. Accepting the supplemental filings will not delay this administrative proceeding. Therefore, the Panel decides, on an exceptional basis, to accept both Parties’ respective supplemental filings as part of the record of this proceeding.
6.2 Substantive Issues
Paragraph 4(a) of the irDRP provides that the complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; 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 or is being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence presented, the Panel finds that the Complainant has rights in the ROCHE mark.
The disputed domain name wholly incorporates the ROCHE mark. The only additional element in the disputed domain name is a country code Top-Level Domain (“ccTLD”) suffix (i.e., “.ir”), which is a technical requirement of registration. A ccTLD suffix may generally be disregarded in the comparison between a domain name and a trademark for the purposes of the Policy. See, for example, Tetra Laval Holdings & Finance S.A. v. Mohammad Ali Mokhtari, WIPO Case No. DIR2010-0007.
The Respondent argues that “Roche” as used in the company name “Roche Pars Ltd” is pronounced differently from the word “roche” in Persian. However, the Panel notes that “roche” appears in both the trademark and in the disputed domain name in Latin script and it is visually identical in each.
Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the irDRP.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the 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 [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 consumers or to tarnish the trademark or service mark at issue.
As regards the first and third circumstances above, the Complainant submits that the disputed domain name does not resolve to any active website. This is not a use of the disputed domain name in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use of the disputed domain name within the terms of paragraph 4(c)(iii) of the Policy.
As regards the second circumstance, the Respondent’s name is Mohammadali Mokhtari and he is an officer of a company named Pars Pardazesh Farda Ltd. There is no evidence that the Respondent has been commonly known as “Roche” within the terms of paragraph 4(c)(ii) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Turning to the Respondent’s case, he argues that the word “roche” has various meanings in different languages. However, the Respondent only submits evidence intended to show that he is using the word in connection with one of those alleged meanings, regarding grapes. He submits a definition from an Iranian dictionary for the word روچه that refers to a kind of grape. The Panel understands that “roche” can be a transcription of that word. The evidence of use includes preparations for a proposed website providing information regarding grapes, essentially in Persian, with the exception of a logo that includes the words روچه in Persian and “Roche” in Latin characters. This logo appears prominently on every slide. The logo also appears with the website address on a sheet that the Respondent allegedly proposes to use as a business card.
The Panel notes that the Respondent has not activated this grape-related website even though nine years have passed since he acquired the disputed domain name in 2010. The Complainant submits that the Respondent’s grape-related website was not active in June 2019. The Panel has consulted the Internet Archive (“www.archive.org”) which shows no evidence that the disputed domain name has resolved to an active website since October 2010. 1 The Respondent has not drawn the Panel’s attention to anything that would show that his preparations for the grape-related website existed prior to the Complaint in this proceeding.
Accordingly, in light of the above circumstances, the Panel does not consider that the Respondent’s evidence of proposed use indicates that the disputed domain name is demonstrably intended for use in connection with the alleged meaning of “roche” as a kind of grape. Rather, it appears more likely that this evidence was prepared to provide a pretext for claiming rights or legitimate interests in respect of the disputed domain name in this proceeding. In summary, the Panel considers that the Respondent has failed to rebut the Complainant’s prima facie case.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the irDRP.
C. Registered or Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.
The disputed domain name was registered decades after the Complainant obtained its trademark registrations for ROCHE, including in Iran, where the Respondent is resident. The disputed domain name incorporates the Complainant’s ROCHE trademark in its entirety, combining it only with a ccTLD suffix, which is a technical requirement of registration. While there are other possible meanings of “roche” in different languages, there is no evidence that the Respondent registered the disputed domain name based on any of them, except for evidence of a proposed grape-related website that the Panel considers merely pretextual (see the findings in Section 6.2B above). The Respondent’s registration of the disputed domain name forms part of a pattern of conduct whereby he has registered at least five other foreign third parties’ trademarks in the .ir domain in bad faith. See Tetra Laval Holdings & Finance S.A. v. Mohammad Ali Mokhtari, supra, regarding <tetrapak.ir>; Petróleo Brasileiro S.A. - Petrobras v. Mohammad Ali Mokhtari, WIPO Case No. DIR2013-0004, regarding <petrobras.ir>; Amundi v. Mohammad Ali Mokhtari, WIPO Case No. DIR2015-0010, regarding <amundi.ir>; Accor v. Mohammad Ali Mokhtari, WIPO Case No. DIR2016-0004, regarding <novotel.ir>; and Sodexo v. Mohammad Ali Mokhtari, WIPO Case No. DIR2017-0006, regarding <sodexo.ir>. Accordingly, the Panel draws the inference that the Respondent was also aware of the Complainant’s ROCHE trademark at the time that he registered the disputed domain name and that he registered the disputed domain name with the intention of taking unfair advantage of the Complainant’s goodwill attaching to its trademark.
The Respondent produces the results of Google image searches conducted in Iran for various search terms that he claims show that roche refers to a kind of grape. However, the Respondent has not submitted any text search results nor any results for the search term “roche” alone, as it appears in the disputed domain name. Instead, he has produced image results using search terms in Persian script followed by “roche” in Latin characters or the English word “grape” and he has also searched for “roche grape”. The Respondent also submits a list of grape-producing countries. None of this evidence assists in determining whether “roche” as used in the disputed domain name in Iran and other Persian-speaking countries is more likely to refer to the Complainant or to a kind of grape.
The Respondent argues that the older the disputed domain name, the harder it is for a Complainant to win. The Panel has noted that the disputed domain name was created in 2007 and acquired by the Respondent in 2010, nine years before the Complaint was filed. The Complainant did not explain its delay in initiating this proceeding because it incorrectly inferred from the information in the Registrar’s public WhoIs database that the disputed domain name was registered in 2019. However, the Panel does not consider that mere delay after the registration of a domain name necessarily bars a trademark owner from filing a complaint and ultimately prevailing. See WIPO Overview, section 4.17. In the present case, the Panel notes that the disputed domain name appears to have been held only passively for most of the time since its registration and the Respondent has not relied on the delay in the filing of the Complaint to its detriment. The Panel sees no other circumstances related to the delay that would overcome the Complainant’s case on the merits, as set out in the findings above.
Therefore, the Panel finds that the disputed domain name has been registered in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the irDRP.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking, or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. “Reverse Domain Name Hijacking” is defined in paragraph 1 of the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The Respondent alleges that the Complainant has engaged in reverse domain name hijacking.
The Panel notes that the Complainant’s Iranian affiliate, Roche Pars Ltd., contacted the Respondent twice regarding a possible transfer of the disputed domain name shortly before the Complainant filed the Complaint. The emails were sent from addresses in the <roche.com> domain. It is not possible from the evidence to determine what price the Complainant’s affiliate offered to pay for the transfer, but the Panel does not consider that any of the evidence can be construed as an admission that the Respondent had rights or legitimate interests to the disputed domain name or that the Complainant could not succeed in its Complaint under any reasonable interpretation of the Policy. On the contrary, the Panel has upheld the Complaint.
The Panel regrets that the Complainant provided an incomplete account of the pre-Complaint correspondence. The Complaint referred to the cease-and-desist letter but not the prior requests to purchase the disputed domain name sent shortly before. The Complainant’s supplemental filing did not address the evidence of these prior requests submitted in the Response. Nevertheless, the Panel does not consider that those prior requests undermine the Complainant’s case, for the reason given in the preceding paragraph.
The Respondent draws the Panel’s attention to the large number of complaints that the Complainant has previously filed under the Uniform Domain Name Dispute Resolution Policy and dispute resolution policies for country code TLDs. However, the Respondent does not refer to any case where the Complainant was found to have filed an abusive complaint.
Therefore, the Panel finds that the Complaint was not brought in bad faith and that it does not constitute an abuse of this administrative proceeding.
For the foregoing reasons, in accordance with paragraphs 4(i) of the irDRP and 15 of the Rules, the Panel orders that the disputed domain name <roche.ir> be transferred to the Complainant.
Date: September 23, 2019
1 The Panel undertook this limited factual research into a matter of public record because it considered such information useful to assessing the case merits and reaching a decision. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.8.