WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Genentech Inc. v. Bao Qiang Li, Li Bao Qiang

Case No. D2015-2241

1. The Parties

The Complainant is Genentech Inc. of South San Francisco, California, United States of America, represented by F. Hoffmann-La Roche AG, Switzerland.

The Respondent is Bao Qiang Li, Li Bao Qiang of Cangzhou, Hebei, China.

2. The Domain Name and Registrar

The disputed domain name <hkherceptin.com> is registered with Bizcn.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2015. On December 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 2015, 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.

On December 16, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On December 16, 2015, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 in both Chinese and English of the Complaint, and the proceeding commenced on December 28, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2016.

The Center appointed Matthew Kennedy as the sole panelist in this matter on January 21, 2016. 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 a company that conducts research and development of pharmaceutical and diagnostic products. It has global operations in more than 100 countries, including China. The Complainant has obtained various registrations of the trademark HERCEPTIN for pharmaceutical preparations for the treatment of cancer. These include International Registration No. 884423 (registered from 2006) and Chinese registration No. 1360814 (registered from 2000) which remain in effect. The Complainant also operates the domain name <herceptin.com>.

The Respondent is an individual who uses the disputed domain name in connection with an online pharmacy that offers for sale what are alleged to be HERCEPTIN pharmaceuticals manufactured by the Complainant and HERCLON pharmaceuticals manufactured by a company related to the Complainant. The disputed domain name was registered on November 21, 2015. The contact address in the Registrar’s WhoIs database contains incorrect information as the town and postcode do not match.

5. Parties’ Contentions

A. Complainant

The Complainant owns the above registrations of the HERCEPTIN trademark. The disputed domain name is confusingly similar to the Complainant’s trademark because it incorporates the mark in its entirety. The prefix “hk” is a mere geographic description of Hong Kong, China.

The Complainant submits that the Respondent has no connection or affiliation with it and that the Respondent has not received any license or consent to use the Complainant’s mark. The Respondent has no rights or legitimate interests in the disputed domain name because it is confusingly similar to a pharmaceutical manufacturer’s mark and is used to operate an online pharmacy.

The disputed domain name was registered and is being used in bad faith. It was registered well after the Complainant’s trademark registrations and simply reproduces the Complainant’s mark with a geographical description. The website to which the disputed domain name resolves promotes and appears to sell HERCEPTIN products, among other things. The Respondent is therefore deliberately using the disputed domain name in order to mislead consumers and confuse them by making them believe that the website is recommended by the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name is in English; that the Respondent is fully aware of the Complainant’s rights in its marks; and that the drug composition on the Respondent’s website is displayed in English.

The Panel notes that all email communications sent by the Center to the Parties have been in both Chinese and English. The Respondent was given an opportunity to object to the Complainant’s request that English be the language of the proceeding but the Respondent did not in fact object.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. (See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).

The Panel observes that in this proceeding the Complaint was filed in English. The Respondent has not expressed any wish to respond to the Complaint or otherwise participate in this proceeding. Further, the website to which the disputed domain name resolves displays certain information regarding the products for sale in English. The Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

6.2 Analysis and Findings

Paragraph 4(a) of the Policy 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 and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in registered trademarks consisting of HERCEPTIN.

The disputed domain name incorporates the Complainant’s trademark in its entirety. The Complainant’s trademark is the dominant element of the disputed domain name.

The disputed domain name contains the additional element “hk” which is the common abbreviation of the place name “Hong Kong”. As a mere geographical term, this additional element is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant’s trademark. (See Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768).

The disputed domain name also contains the generic Top-Level Domain (“gTLD”) suffix “.com” but a gTLD suffix generally has no capacity to distinguish a domain name from a trademark. (See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080). Consequently, the only distinctive element of the disputed domain name for the purposes of this comparison is the Complainant’s trademark.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

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 circumstance, the disputed domain name is being used with a website that offers for sale what are alleged to be pharmaceutical products manufactured by the Complainant and a company related to the Complainant. The evidence does not show that the website displays products from any other source. The Complainant states that it has no connection whatsoever with the Respondent. The Respondent did not respond. The Panel observes that the website prominently claims to sell genuine products and displays a certification-type logo, both in Chinese and English, indicating that its products are not fakes. However, even if the products are genuine, the website does not accurately disclose the Respondent’s lack of any relationship to the Complainant. Given that the disputed domain name is confusingly similar to the Complainant’s trademark, the Panel considers that the Respondent’s website is very likely to confuse Internet users. These facts show that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services. (See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). Accordingly, the Panel does not find that the Respondent’s use falls within the first circumstance of paragraph 4(c) of the Policy.

As regards the second circumstance, the Respondent’s name is “Bao Qiang Li” or “Li Bao Qiang”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.

As regards the third circumstance, the disputed domain name resolves to a website that offers pharmaceuticals for commercial sale. That is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy.

In summary, the Panel considers that the Complainant has prima facie discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The burden now shifts to the Respondent to show that he does have some rights or legitimate interests, but the Respondent did not respond to the Complaint.

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 Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website 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 [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.”

The Respondent registered the disputed domain name in 2015, many years after the Complainant obtained its trademark registrations, including in China where the Respondent is located. The only distinctive element of the disputed domain name is identical to the Complainant’s trademark; the additional element “hk” being a geographical term, as confirmed by the content of the website. The content on the website to which the disputed domain name resolves uses the Complainant’s HERCEPTIN trademark, indicates that it is a registered trademark with the symbol ® and offers for sale what is alleged to be the Complainant’s HERCEPTIN product. This indicates to the Panel that the Respondent intentionally chose to register the disputed domain name containing the Complainant’s trademark.

The Respondent uses the disputed domain name, which wholly incorporates the Complainant’s trademark, with a website that displays the Complainant’s trademark and offers what are alleged to be HERCEPTIN pharmaceuticals for sale. The Respondent has no connection with the Complainant but this is not disclosed on the website to which the disputed domain name resolves. Further, the website combines the Complainant’s trademark with the letters “hk” and presents itself as a Hong Kong-based online pharmacy (although the simplified script, currency and one of the contact telephone numbers displayed all indicate that the website targets the market in mainland China). This gives the impression that the website is a site approved by, or affiliated with, the Complainant to operate in Hong Kong, China. Given these facts, the Panel considers that the Respondent’s use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products on that website. Moreover, the Respondent provided incorrect contact information which is also an indication of bad faith.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 name <hkherceptin.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: February 3, 2016