WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Roche Diagnostics GmbH v. Land Merchandising Corp Case No. D2010-0173 1. The Parties
The Complainant is Roche Diagnostics GmbH of Mannheim, Germany, represented by an internal representative.
The Respondent is Land Merchandising Corp of Collierville, Tennessee, United States of America. 2. The Domain Name and Registrar
The disputed Domain Name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2010. On February 5, 2010, the Center transmitted by email to God Inc. a request for registrar verification in connection with the disputed Domain Name. On February 9, 2010 GoD, Inc., transmitted by email to the Center its verification response, disclosing the registrant and contact information for the disputed Domain Name, which differed from the named Respondent, confirming that the Respondent's name is Land Merchandising Corp.
The Center sent an email to the Complainant on February 9, 2010 providing the correct registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 9, 2010.
The Center verified that the Complaint, together with the amendment to 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 February 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 4, 2010.
The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on March 10, 2010. 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 Roche Diagnostics GmbH, an important healthcare institution. The Complainant is a global company that is active in all market segments, from scientific research and clinical laboratory systems to patient self-monitoring.
The Complainant's mark DISETRONIC is protected as trademark world wide and presented as evidence to these proceedings, the Complainant provided a copy of its International Registration No. 522636 for the mark DISETRONIC with a priority date of November 26, 1987.
The Complainant argues that the disputed Domain Name is confusingly similar or identical to the trademark DISETRONIC in which they have rights, that the Respondent has no rights or legitimate interest in any name corresponding to the name “Disetronic” and therefore in the disputed Domain Name and finally that the Respondent registered and has used the disputed Domain Name in bad faith.
According to the Registrar GoD Inc, the disputed Domain Name was transferred to GoD Inc from Network Solutions, Inc. on January 1, 2010. 5. Parties' Contentions A. Complainant A. The Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant is one of the world's leaders in diagnostic tests and systems that play an important role in the groundbreaking area of integrated healthcare solutions and cover the early detection, targeted screening, evaluation and monitoring of disease.
The Complainant asserts that they have the exclusive intellectual property rights in the trademark DISETRONIC, and that it is protected as a trademark in a multitude of countries worldwide. The Complainant presented as evidence to these proceedings the certificate of the international trademark DISETONIC, with Registration Number 522636, that clearly certifies that the priority date for the mark DISETRONIC is November 26, 1987. Therefore the Complainant argues that the disputed Domain Name is confusingly similar to the Complainant's trademark because it exactly reproduces the mark DISETRONIC. B. The Respondent has no rights or legitimate interests in respect of the Domain Name
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed Domain Name because the Complainant holds the exclusive rights for the trademark DISETRONIC and had not given the Respondent any license, permission, authorization or consent to use the DISETRONIC mark in the Domain Name.
The Complainant also argues that the Respondent registered and uses the disputed Domain Name for commercial gain and with the purpose of making profits out of the Complainant's mark DISETRONIC. The Respondent's website is a search engine page which also displays sponsored links including links offering among others, competitive products like Medtronic pumps.
The Complainant sustains that the Respondent's only interest in registering and using the Domain Name is to benefit from the reputation of the trademark DISETRONIC and illegitimately trade on its goodwill for commercial gain and profit.
The Complainant claims that there is no reason why the Respondent should have any rights or legitimate interests in the Domain Name . C. The Domain Name was registered and is being used in bad faith
The Complainant argues that the disputed Domain Name was previously registered by the Complainant, before being registered by the Respondent. According to Complainant, the Respondent's registration was in bad faith, and occurred when the Complainant failed to recently renew the Domain Name.
Also, the Complainant argues that the use of the disputed Domain Name is in bad faith because when one visits the website of the Respondent, one can confirm the fact that the Respondent is intentionally attempting (for commercial purposes) to attract Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's well-known mark as to the source, affiliation and endorsement of the Respondent's website or of the products or services posted on or linked to the Respondent's website.
The Complainant argues that the Respondent's main use of the Domain Name is for advertising links to websites promoting and/or offering products and services of third parties and competitive products such as “Medtronic pumps”.
The Complainant sustains that the Respondent's use of the disputed Domain Name, is intentionally misleading to consumers and confuses them so as to attract them to other websites making them believe that the websites behind those links are associated with or recommended by the Complainant. As a result, the Complainant states that the Respondent may generate unjustified revenues for each click-through of the sponsored links by on-line consumers. B. Respondent
The Respondent did not reply to the Complainant's contentions in this proceeding. 6. Discussion and Findings
Because the Respondent did not respond to the Complaint, the Panel must decide the dispute based upon the Complaint.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements of its case in order to obtain the requested remedies:
(i) Respondent's Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent's Domain Name has been registered and is being used in bad faith.
The Panel considers each element in the order below: A. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant provided to these proceedings enough evidence of their International registration for DISETRONIC, Registration No. 522636, with a priority date of November 26, 1987.
The Complainant also sustains that the disputed Domain Name is identical or confusingly similar to its trademark DISETRONIC. This Panel finds that there is no doubt that the disputed Domain Name is identical to the trademark DISETRONIC.
In fact. in this case, the disputed Domain Name consist of a reproduction of the Complainant's trademark with the mere addition of the generic top level domain (gTLD)“.com” that does not give any distinctiveness to the disputed Domain Name. Because the gTLD “.com” is part of the Domain Name System and, without it the disputed Domain Name simply does not function, the addition of the “.com” does not suggest anything that could give distinctiveness to the Domain Name.
Therefore, for this Panel, the disputed Domain Name is identical to the Complainant's trademark and the Policy, Paragraph 4(a)(i), is fulfilled. B. The Respondent has no rights or legitimate interests in respect of the Domain name
The Complainant must prove that the Respondent has no rights or legitimate interests in the disputed Domain Name. Then, the Respondent must forward a Response and prove that it has rights or legitimate interests in the disputed Domain Name. In these proceedings, we face the fact that the Respondent did not answer and did not provide any evidence on which the Panel could rely, to confirm the existence of rights or legitimate interests by the Respondent.
However, where a complainant has made the necessary allegations and has provided evidence sufficient to demonstrate a prima facie case that a respondent has no rights of legitimate interests, the burden then shifts to the Respondent to come forward with evidence of its rights or legitimate interests, if such evidence exists.
The Complainant asserts that it has not licensed or otherwise authorized the Respondent to use the Complainant's DISETRONIC trademark or to register it as a Domain Name.
The Complainant also argues that the Respondent uses the Domain Name for commercial gain and with the purpose of obtaining profits from the disputed Domain Name and the Complainant's trademark DISETRONIC, by publishing links that redirect consumers or Internet users to the products of the Complainant's competitors.
The Panel verified the website published at the disputed Domain Name and has confirmed that the links published on it redirect consumers or Internet users to the products of the Complainant's competitors and this cannot be considered a bona fide offer of goods and services (regarding also that the Respondent did not argue or explain anything in this case). This Panel agrees with Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085, “using the Domain Name to mislead users by diverting them to a search engine (..) does not appear to be use in connection with a bona fide offering of goods or services and therefore legitimate”.
Also, according to Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo,WIPO Case No. D2004-0990, “the sole diversion of Internet traffic by Respondent to other, unrelated websites, does not represent a use of the Domain Name in connection with a bona fide offering of goods and services. Rather, the conduct of Respondent serves the purpose of generating revenues, e.g. from advertised pay-per-click products”.
Under the circumstances, the Panel has found that the Respondent is not in any way engaged in, or preparing for, a bona fide offering of goods or services using the disputed Domain Name and that paragraphs 4(c)(ii) or (iii) of the Policy do not apply to the facts of this case, and therefore that the Respondent has no rights or legitimate interests in the Domain Name. C. The domain name was registered and is being used in bad faith
The Complainant argues that the Domain Name was registered by the Respondent when the Complainant failed to recently renew the Domain Name. At that time the Panel finds, the Respondent had, no doubt, knowledge of the Complainant's mark DISETRONIC and respectively of the corresponding company. These facts were not refuted by the Respondent.
The Complainant sustains that the Respondent is using the Domain Name in bad faith because the Respondent is intentionally attempting (for a commercial purpose) to attract Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's well-known mark as to the source, affiliation and endorsement of the Respondent's website or of the products or services posted on or linked to Respondent's website. The Panel confirms this fact and has verified that the disputed Domain Name includes sponsored links, several of which point directly to many competitive products and services. Consumers could therefore be confused in a similar manner to that discussed in Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085, “the Respondent's commercial use of the Domain Name to increase Internet traffic at a search engine […] is evidence of bad faith under Policy, para. 4(b)(iv) and the use of the Domain Name is likely to result in consumer confusion as to the Complainant's supposed affiliation with the search engine and its operators”.
A number of prior WIPO UDRP panel decisions support an indication of bad faith registration and use when the domain name incorporates a complete trademark that is well-known, in which the Respondent does not have rights or legitimate interests, such as L'Oreal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, In”,WIPO Case No. D2005-0623, “such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions”.
The Panel confirmed that the Respondent is using the disputed Domain Name in order to publish links that direct Internet users to sites displaying goods and services competitive to those sold under the Complainant's trademark, thereby intentionally misleading consumers and confusing them so as to attract them to other websites making them believe that the websites behind those links are associated with or recommended by the Complainant. As a result, the Respondent may generate unjustified revenues for each click-through by on-line consumers of the sponsored links.
According to all the foregoing reasons, this Panel finds the bad faith registration and use of the Domain Name by the Respondent, under the Policy paragraph 4(a)(iii) of the Policy. 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 the Complainant.
Ada L. Redondo Aguilera
Sole Panelist
Dated: March 24, 2010
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