WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. Damian Edwards Case No. D2009-1370 1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented internally.
The Respondent is Damian Edwards, Bawtry, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Names and Registrar
The disputed domain names and are registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2009. On October 15, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain names. On the same day, Tucows Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on October 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 13, 2009.
The Center appointed Dan Hunter as the sole panelist in this matter on November 18, 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 A. Complainant and its Mark
The Complainant is a Swiss corporation that is a leading research-focused healthcare organization, and a developer of pharmaceuticals and diagnostics, and is the producer of the anti-lymphoma drug marketed under the name “Mabthera.”
It has registrations for MABTHERA in numerous countries, including an International Registration No. 675893 with a priority date of January 8, 1997.
It holds the domain name where it provides information in relation to its drug and lymphoma treatment. B. Respondent
The Respondent appears to be an English subject, with the address as provided above. He did not provide a response and so no other information is known about him.
The Respondent registered the domain names in issue with Tucows on June 16, 2009. 5. Parties' Contentions A. Complainant
The Complainant asserts that the Respondent's domain names are identical or confusingly similar to the Complainant's mark. Specifically, the Complainant asserts:
(1) The Respondent's domain names are confusingly similar to the Complainant's mark seeing that they incorporate the mark in its entirety.
(2) The Complainant's use and registration of the mark MABTHERA predates the Respondent's registration of the domain names, as does its registration of the domain name, and therefore the registration of the Respondent's domain names are confusingly similar.
The Complainant asserts that the Respondent has no legitimate interest or rights in the domain names. Specifically, the Complainant assert (in pertinent part):
(1) The Complainant has exclusive rights for MABTHERA, and no license was granted to the Respondent to use the mark, and the request by the Respondent for a sum of $10,000 to transfer the domain names is evidence of this.
(2) The Respondent sought to use the domain names for commercial gain and with the purpose of capitalizing on the fame of the Complainant's mark.
The Complainant asserts that the Respondent registered the domain names and is using them in bad faith. Specifically, the Complainant asserts (in pertinent part):
(1) The Respondent registered and is using the domain names in bad faith by creating a likelihood of confusion with the Complainant's registered mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or of a product or service on the Respondent's website.
(2) The Respondent's use of reservation of the domain names amounts to a passive holding situation that falls within the terms of the decision.
Accordingly, the Complainant submits that the Panel should order that the domain names be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Policy, adopted by the Internet Corporation for Assigned Names and Numbers on August 26, 1999, applies to domain name registrations made in the “.net” and “.org” namespaces. Paragraph 4(a) of the Policy requires a complainant to make out three elements to succeed in an administrative proceeding initiated under the Policy:
1. The Complainant has rights in a trade or service mark, with which the Respondent's domain names are identical or confusingly similar (Paragraph 4(a)(i)); and
2. The Respondent has no rights or legitimate interests in respect of the domain names (Paragraph 4(a)(ii)); and
3. The Respondent registered and is using the domain names in bad faith (Paragraph 4(a)(iii)). A. Identical or Confusingly Similar
There are two requirements that a complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain names are identical or confusingly similar to the marks.
The Complainant has provided the registration documents for its MABTHERA mark registered internationally. The Panel concludes that the Complainant, as registered owner of the MABTHERA mark, has established rights in a trademark, sufficient for the purposes of paragraph 4(a)(i) of the Policy.
The second requirement is that the domain name be identical or confusingly similar to the mark. Both of the Respondent's domain names are identical to the registered mark, together with the “.net” or “.org” top level domain signifiers. By now it is well established that the TLD signifier does not change the meaning of the name, and hence The Panel concludes that the domain names are, for the purposes of the Policy, identical to the Complainant's mark.
The Complainant has therefore shown that it has the appropriate rights in a trademark, and that the domain names are identical or confusingly similar to this mark. The Panel finds therefore that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interest in the domain names, as required under paragraph 4(a)(ii) of the Policy. It makes general assertions that the Respondent has no permission to use the mark. The Respondent has provided no Response, and further there is no evidence of any of the canonical examples of legitimate interest that are provided in paragraph 4(c) of the Policy. Further, the distinctive and fanciful character of the mark MABTHERA lends weight to the conclusion that there should be no finding of legitimate interest on the part of the Respondent in this case. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, which the Respondent has failed to rebut.
The Panel concludes therefore that the Complainant has satisfied the requirement of paragraph 4.a (ii) of the UDRP C. Registered and Used in Bad Faith
The Complainant asserts that the Respondent has registered and is using the domain name in bad faith, as required under paragraph 4(a)(ii) of the Policy. It makes the specific assertion that the Respondent has intentionally attempted to attract, for commercial gain, Internet users using the domain name to the Complainant's detriment, as per the requirements of paragraph 4(b)(iv) of the Policy. The Respondent has provided no Response. Since the evidence is that the Respondent is seeking to trade on the name of the Complainant the Panel concludes that the Complainant has made out this element via the exemplar of bad faith as specified in paragraph 4(b)(iv). Moreover the evidence is that the Respondent sought $10,000 for the transfer of the domain name. This falls in the exemplar of paragraph 4(b)(i) of the Policy, and as a result the Panel concludes that bad faith has been established.
The Complainant has therefore satisfied the requirement of paragraph 4(a)(iii) of the UDRP. 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 names, and be transferred to the Complainant.
Dan Hunter
Sole Panelist
Dated: December 2, 2009
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