WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Texas International Property Associates – NA NA
Case No. D2008-0752
1. The Parties
Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented internally.
Respondent is Texas International Property Associates – NA NA, Dallas, Texas, United States of America, represented by Law Office of Gary Wayne Tucker, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2008. On May 15, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On the same day, Compana LLC 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”), 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2008. The Response was filed with the Center on June 9, 2008.
On June 12, 2008, following Complainant’s request to suspend the proceeding to allow an amicable settlement and transfer of the domain name, the Center suspended the administrative proceeding until July 12, 2008. On June 25, 2008, Complainant informed the Center that no settlement and transfer of the domain name could be reached, and requested the Center to re-institute the proceeding. On June 26, 2008, the Center re-instituted the proceeding.
The Center appointed Roberto Bianchi as the sole panelist in this matter on July 10, 2008. 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 following facts and circumstances are uncontested:
– Complainant and its affiliated companies are one of the world’s leading healthcare groups in the fields of pharmaceuticals and diagnostics. The group has global operations in more than 100 countries.
– Complainant’s mark ROCHE is protected as trademark in many countries worldwide. Evidence of such trademark rights are, inter alia, International Registration Nos. R346223 and 832631 and Community Trademark Registration No. 000223107. Priority date for the ROCHE trademark is June 19, 1968.
– Respondent registered the disputed domain name on March 18, 2005.
– Respondent is using the disputed domain name in a website containing links to third parties and providing a search engine.
5. Parties’ Contentions
A. Complainant
In essence, Complainant contends as follows:
– The disputed domain name is confusingly similar to the ROCHE trademark of Complainant. The mark ROCHE serves as house-mark of Complainant, and is protected as trademark in many countries worldwide. Respondent’s domain name is confusingly similar to Complainant’s mark since it incorporates this mark in its entirety. The domain name creates confusion with Complainant’s company name “F. Hoffmann-La Roche AG”. In view that Complainant is among the major pharmaceutical and diagnostics enterprises in the world, the mark ROCHE is well known and notorious. The notoriety will increase the likelihood of confusion. Complainant’s use and registration of the mark ROCHE do predate Respondent’s registration of the domain name.
– Respondent has no rights or legitimate interests in respect of the domain name. Complainant has exclusive rights for ROCHE. No license, permission, authorization or consent was granted to use ROCHE in the domain name. Respondent uses the domain name for commercial gain and with the purpose of capitalizing on the fame of the mark ROCHE. Therefore, the domain name in question clearly alludes to Complainant. Respondent’s website is a search engine with sponsored links. Respondent’s only reason in registering and using the contested domain name is to benefit from the reputation of the trademark ROCHE and illegitimately trade on its fame for commercial gain and profit. There is no reason why Respondent should have any right or interest in such domain name.
– The domain name was registered in bad faith since at the time of the registration i.e. on March 19, 2005, Respondent had knowledge of Complainant’s well-known mark/company ROCHE. The domain name is being used in bad faith. When viewing Respondent’s website one realizes that, by using the domain name to address Internet users to a search engine website where links to third parties are displayed, Respondent is attempting (for commercial purpose) to attract Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s well-known mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of the products or services posted on or linked to Respondent’s website. The use of domain name seems to be advertising links to websites promoting and/or offering products and services of third parties. Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them so as to attract them to other websites making them believe that the websites behind those links are associated or recommended by Complainant. As a result, Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the ROCHE trademark fame.
B. Respondent
In its Response, Respondent states the following:
“After receipt of a cease and desist letter, Respondent investigated Complainant’s claims and was willing to transfer the disputed domains but was unable to effectuate the transfer. Since Respondent was willing to transfer prior to today’s date, Respondent agrees to the relief requested by the Complainant and will, upon order of the panel, do so. This is not an admission to the three elements of 4(a) of the policy but rather an offer or “unilateral consent to transfer” as prior panels have deemed it.”
After citing to various panel decisions addressing the issue of a respondent’s consent to transfer, Respondent requests that the Panel order the immediate transfer of the disputed domain name.
6. Discussion and Findings
UDRP Panels must decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any applicable rules and principles of law. Under paragraph 4(a) of the Policy, a complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In the instant case, Respondent agrees to the relief sought by Complainant in what Respondent calls “an offer or ‘unilateral consent to transfer’ as prior panels have deemed it.” Respondent adds that its agreement to the relief of transfer “is not an admission to the three elements of 4(a) of the policy”.
Apart from this “non-admission”, Respondent’s Response does not respond to any of Complainant’s allegations or include any bases to retain registration and use of the disputed domain name, pursuant to Rules, paragraph 5(b)(i). In the Panel’s opinion, Respondent’s “non-admission” is not a specific denial or contestation of Complainant’s arguments and evidence.
In any case, Respondent’s statements do contain a genuine unilateral consent to the relief of transfer sought by Complainant. In order to grant this remedy the Panel need not address the elements of Policy paragraph 4(a). See Williams-Sonoma, Inc. v. EZ-Port,WIPO Case No. D2000-0207 (holding that because respondent has consented to the relief requested by complainant, it is not necessary to review the facts supporting the claim); see also Infonxx.Inc v. Lou Kerner, WildS,WIPO Case No. D2008-0434 (considering that a genuine unilateral consent to transfer by the respondent provides a basis for an order for transfer without consideration of the paragraph 4(a) elements, citing The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132 and Williams-Sonoma Inc., supra.)
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Dated: July 24, 2008
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