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 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 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 A. Complainant
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. B. Respondent
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
