WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. Clear Foto Case No. D2009-0501 1. The Parties
Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
Respondent is Clear Foto of Nairobi, Kenya. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2009. On April 17, 2009, the Center transmitted by email to N LLC a request for registrar verification in connection with the Domain Name. On April 17, 2009, N 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” 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was
May 14, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 15, 2009.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on June 5, 2009. 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's company name is “F. Hoffmann-La Roche AG,” which refers to Fritz Hoffmann-La Roche, founder of what is now the Roche Group. Together with its affiliated companies, Complainant is one of the world's leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, having global operations in more than 100 countries. Besides producing pharmaceutical and diagnostic products, Complainant also works as a consultant in health issues.
Complainant has provided evidence that its trademark, ROCHE, is protected in a multitude of countries worldwide. As an example, Complainant has provided copies of the International Registration Nos. R1346223 & 832631, as well as Community Trademark Registration No. 000223107. The ROCHE mark serves as the house-mark for Complainant. The priority date for the ROCHE mark is June 19, 1968.
Respondent registered the Domain Name on March 20, 2009.
A printout of web pages shows that the Domain Name resolves to a website for a company which is stated to be a consultancy firm, “La'Roche International Business Consultants Ltd.” One of the pages indicates that this firm provides consultant services for public health programs, including drugs, AIDS programs, HIV epidemiology, Tuberculosis control programs, and immunization programs. 5. Parties' Contentions A. Complainant
Complainant contends that the Domain Name is confusingly similar to its ROCHE mark, seeing that the Domain Name incorporates the mark in its entirety. Complainant is among the major pharmaceutical and diagnostic companies in the world and the ROCHE mark is well-known and notorious. This notoriety increases the likelihood of confusion. Moreover, the addition of the non-distinctive term “international” to the Domain Name does not assist to avoid confusion, but instead increases confusion because Complainant is working on an international basis in more than 100 countries. Complainant's use and registration of the ROCHE mark predates Respondent's registration of the Domain Name. Therefore, the Domain Name is confusingly similar to Complainant's trademark.
Complainant has exclusive rights for the ROCHE mark and has granted no license, authorization or consent to Respondent to use this mark in the Domain Name. Respondent uses the Domain Name for commercial gain and with the purpose of capitalizing on the fame of Complainant's ROCHE mark. Respondent is using Complainant's ROCHE mark to direct Internet users to a commercial website offering competitive services to those offered by Complainant. Respondent's only reason for registering and using the Domain Name is to benefit from the reputation of the ROCHE mark and illegitimately trade on Complainant's fame for commercial gain. The Domain Name clearly alludes to Complainant, and there is no reason why Respondent has any right or interest in the Domain Name.
Complainant maintains that the Domain Name was registered and used in bad faith, since at the time of registration in March 2009, Respondent, no doubt, had knowledge of Complainant's well-known ROCHE mark and company. The Domain Name is also being used in bad faith because, when viewing Respondent's website, one realizes that Respondent is intentionally attempting (for commercial purpose) to attract Internet users to Respondent's site, by creating a likelihood of confusion with Complainant's mark, which has a good reputation among doctors and people interested in public health issues. Respondent, by using the Domain Name, is intentionally misleading consumers and confusing them so as to attract them to its site, making them believe that the pages behind the links are associated or recommended by Complainant. As a result, Respondent may generate unjustified revenues and is illegitimately capitalizing on the ROCHE mark fame. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel 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.
Under paragraph 4(a) of the Policy, complainant must prove each of the following:
(i) the Domain Name in issue is identical or confusingly similar to the complainant's mark; and
(ii) the respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) are evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which if proved by the respondent may be evidence of Respondent's rights to or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) of the Policy above. In this case, however, Respondent has not submitted a Response. A. Identical or Confusingly Similar
Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
In the Panel's view it is beyond dispute that Complainant has trademark rights in the ROCHE trademark, which is distinctive and internationally recognized in relation to the field of pharmaceuticals, diagnostics and health care services.
The Domain Name entirely incorporates Complainant's ROCHE mark, with the addition of the descriptive term “international” and the prefix “la” before Roche, which prefix serves only to bring the Domain Name closer to part of Complainant's company name, F. Hoffmann-La Roche (italics added).
The mere addition of generic terms, such as “international” which can be taken to refer to the geographic scope of the Complainant's operations cannot be considered sufficient to avoid confusion between a domain name and a complainant's trademark (Sanofi Aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045 (“A disputed domain name which consists of the Complainant's mark plus the addition of a descriptive word linked to the services that the Complainant markets can be confusingly similar to a mark”); GA Modefine SA v. Riccardo Bin Kara-Mat,WIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc.,WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International,WIPO Case No. D2000-1219; and Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp.,WIPO Case No. D2000-0464). B. Rights or Legitimate Interests
As noted above, paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name.
Complainant has provided evidence of its strong rights in the trademark ROCHE and that the Domain Name was registered by Respondent only recently in March 2009. Based on Complainant's submissions, the Panel considers that, at that time, Complainant had acquired a considerable reputation throughout the world for the ROCHE mark in respect of pharmaceuticals and health care services.
Complainant also contends that Respondent has never been licensed or authorized to use the ROCHE mark. Moreover, there is no evidence that the Respondent, listed in the Domain Name registration as “Clear Foto,” is commonly known by the Domain Name. The Panel can find no reason whatsoever for why the Domain Name was selected by Respondent. Moreover, Respondent's use of the Domain Name does not constitute a use in connection with a bona fide offering of goods and services, since Respondent's website is using Complainant's mark to direct Internet users to a commercial website offering competitive services to those offered by Complainant.
In line with previous UDRP decisions, the Panel considers that no good faith can be assumed in Respondent's conduct, in view of the fact that the Domain Name is confusingly similar with Complainant's trademark, there is no link between Respondent and the Domain Name, and the Domain Name is used in connection with the promotion of competing services. See Pfizer Inc v. Juan Gonzales,WIPO Case No. D2004-0589 (“the Panel considers that no good faith can be assumed in Respondent's conduct, in view of the fact that the Domain Name is confusingly similar with Complainant's trademark and is used in connection with the promotion and sale of competing products”); Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809; National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700; Pfizer Inc. v. The Magic Islands, WIPO Case No. D2003-0870; and Nikon, Inc. and Nikon Corporation v. Technilab Inc., WIPO Case No. D2000-1774).
In the light of the above analysis, Complainant has established prima facie evidence that none of the circumstances establishing legitimate interests or rights mentioned above applies. As stressed by many UDRP decisions, in such a case the burden of proof shifts to Respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; and International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683). However, because Respondent failed to submit a Response to the Complaint, and given that the allegations of the Complaint prima facie do not raise any substantial doubts, the Panel accepts as true the allegations set forth in the Complaint and holds that Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
As mentioned above, Complainant's ROCHE trademark has acquired worldwide reputation, identifying the products and services marketed by Complainant. It is therefore highly unlikely that Respondent, whose consultancy business is involved in public health services, registered the Domain Name in March 2009 without knowledge of Complainant's ROCHE mark. Instead, Respondent appears rather to have intentionally registered the Domain Name, entirely incorporating Complainant's mark and the prefix “la”, to take advantage of the goodwill associated with the ROCHE trademark and Complainant's company name. There is no plausible reason for why Respondent would have otherwise registered the Domain Name. Moreover, when viewing Respondent's website, one can observe that it attracts Internet users by creating a likelihood of confusion with Complainant's mark, which has a strong worldwide reputation among doctors and people interested in public health issues, and offers some competing services.
This is evidence of Respondent's bad faith registration and use of the Domain Name under paragraph 4(c)(iii) of the Policy for which, due to the lack of any response from Respondent, there is no attempt at any rebuttal. (Kabushiki Kaisha Toshiba d/b/a Toshiba Corp. v. Liu Xingdong, WIPO Case No. D2003-0408; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; The Body Shop International plc v. A-Team/ Lasse Nygaard,WIPO Case No. DAS2003-0001; and Bartercard Ltd & Bartercard International Pty Ltd . v. Ashton-Hall Computer Services.,WIPO Case No. D2000-0177). 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.
Christopher S. Gibson
Sole Panelist
Dated: June 22, 2009
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