WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Roche Diagnostics GmbH v. Terra Serve Case No. D2010-0640 1. The Parties
Complainant is Roche Diagnostics GmbH of Mannheim, Germany, represented by F. Hoffmann-La Roche AG, Switzerland.
Respondent is Terra Serve, Domain Administrator of Grand Cayman, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with R Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2010. On April 22, 2010, the Center transmitted by email to the Registrar a request for verification in connection with the Disputed Domain Name. On April 22, 2010, the Registrar 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 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2010. Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on May 21, 2010.
The Center appointed Mark Ming-Jen Yang as the sole panelist in this matter on June 7, 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
Complainant is the owner of trademark registrations worldwide for the mark DISETRONIC including (Madrid) International Registration No. 522636 in (International (Nice) Classification of Goods and Services) International Class 10 (collectively, the “DISETRONIC Trademark”). The registration issued on March 14, 1998, with priority based on a Swiss reference dated November 16, 1987; and the registration was last renewed on March 14, 2008 with expiry on March 14, 2018.
The Disputed Domain Name was registered on November 6, 1998. 5. Parties' Contentions A. Complainant
Complainant contends (in accordance with paragraph 4(a) of the Policy) that the Disputed Domain Name is confusingly similar with the DISETRONIC Trademark in which it has rights; that Respondent has no rights or legitimate interests in the Disputed Domain Name; and that Respondent registered and uses the Disputed Domain Name in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions and is in default. 6. Discussion and Findings
One fundamental requirement of due process is that a respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules, and Supplemental Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings commenced against it and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings and that the failure of Respondent to furnish a Response to the Complaint is not due to any omission by the Center. There is sufficient evidence in the case file for the Panel to conclude that the Center discharged its obligations under Rules, paragraph 2(a) (see Section 3, Procedural History, supra).
In case of default, under paragraph 14(a) of the Rules, “the Panel shall proceed to a decision on the complaint”, and under paragraph 14(b) of the Rules, “the Panel shall draw such inferences [from the default] as it considers appropriate.” Furthermore, paragraph 15(a) of the Rules provides that “a Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Since Respondent has not submitted any evidence, the Panel will render its decision on the basis of the uncontroverted evidence supplied by Complainant. A. Identical or Confusingly Similar
Complainant contends that it has rights in the DISETRONIC Trademark and that the Disputed Domain Name is confusingly similar thereto.
In particular, Complainant contends that, “The Complainant, Roche Diagnostics GmbH is along with Roche Pharmaceuticals, an important part of the foundation that modern healthcare builds upon. Its broad range of innovative diagnostic tests and systems play an important role in the groundbreaking area of integrated healthcare solutions and cover the early detection, targeted screening, evaluation and monitoring of disease. Roche Diagnostics is active in all market segments, from scientific research and clinical laboratory systems to patient self-monitoring and having global operations in more than 100 countries. The Complainant's mark DISETRONIC is protected as trademark in a multitude of countries worldwide. As an example reference is made to the International Registration No. 522636…. Priority date for the mark DISETRONIC is November 26, 1987.”
The Panel accepts the preceding contentions as uncontroverted, convincing and supported by the evidence, and the Panel concludes that Complainant has rights in the DISETRONIC Trademark.
Complainant contends that the only difference between the Disputed Domain Name and its DISETRONIC Trademark, is the additional letter “s” at the end of the latter and that such addition is insufficient to avoid confusing similarity therewith.
The Panel accepts the preceding contentions on confusing similarity as uncontroverted, convincing and supported by the evidence, and finds that the Disputed Domain Name is confusingly similar to Complainant's DISETRONIC Trademark.
The Panel concludes that Complainant has met the first requirement of the Policy. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name.
In particular, Complainant contends (and the Panel accepts as uncontroverted, convincing and supported by the evidence) that Complainant has not granted any licence, permission, authorization or consent to Respondent to use its DISETRONIC Trademark in a domain name.
In particular, Complainant contends (and the Panel accepts as uncontroverted, convincing and supported by the evidence) that Respondent's website using the Disputed Domain Name, is a search engine composed of sponsored links including links offering products like MEDTRONIC pumps, that are competitive with Complainant; and that the jurisprudence supports a finding that using a domain name to mislead users by diverting them to a search engine, is not use in connection with a bona fide offering of goods or services and is therefore not legitimate.
Respondent has provided no arguments or evidence of rights or legitimate interests to counter Complainant's preceding contentions. By virtue of the aforedescribed legal rights of Complainant in the DISETRONIC Trademark, Complainant convincingly argues that Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel, especially in the absence of any Response from Respondent, considers that the circumstances described in paragraph 4(c) of the Policy, regarding the circumstances in which Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name, likely do not exist.
The Panel concludes that Complainant has met the second requirement of the Policy. C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith.
In particular, Complainant contends (and the Panel accepts as uncontroverted, convincing and supported by the evidence) that Respondent registered the Disputed Domain Name in bad faith by doing so with knowledge of Complainant's DISETRONIC Trademark.
In particular, Complainant contends (and the Panel accepts as uncontroverted, convincing and supported by the evidence) that Respondent is using the Disputed Domain Name in bad faith; and in particular, that Respondent is, “… intentionally attempting (for commercial purpose) to attract Internet users to its website, by creating a likelihood of confusion with the Complainant's well-known mark as to the source, affiliation and endorsement of Respondent's website or of the products or services posted on or linked to Respondent's website[….]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 for each click-through by on-line consumers of the sponsored links. Respondent is therefore illegitimately capitalizing on the DISETRONIC trademark fame.”
The Panel concludes that Complainant has met the third requirement 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 Complainant.
Mark Ming-Jen Yang
Sole Panelist
Dated: June 14, 2010
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