WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Roche Diagnostics GmbH v. Joseph Schulz Case No. D2010-0761 1. The Parties
The Complainant is Roche Diagnostics GmbH of Mannheim, Germany, represented by F. Hoffmann-La Roche AG, Switzerland.
The Respondent is Joseph Schulz of Jersey, New Jersey, 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 May 11, 2010. On May 12, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On May 13, 2010, GoD, 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 May 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 10, 2010.
The Center appointed Staniforth Ricketson as the sole panelist in this matter on June 24, 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, Roche Diagnostics GmbH, is, together with Roche Pharmaceuticals, a large enterprise in the healthcare sector. According to the Complaint, its broad range of diagnostic tests and systems “plays an important in the area of integrated healthcare solutions”, covering the early detection, targeted screening, evaluation and monitoring of disease. The Complainant is active in all market segments, from scientific research and clinical laboratory systems to patient self-monitoring, with operations in more then 100 countries. The name ROCHE DIAGNOISTICS is protected as a trade mark in “a multitude of countries worldwide”, including International Registration No. 733491 (Annex 3 of the Complaint).
The Respondent is the registered owner of the disputed domain name
which resolves to a website with sponsored links to various products and services in the healthcare area (Complaint, Annex 4), site visited by the Panel on July 8, 2010.
The disputed domain name was registered by the Respondent on April 26, 2010 and is set to expire April 26, 2011. 5. Parties' Contentions A. Complainant
In light of the above, the Complainant contends that each of the three requirements under paragraph 4(a) of the UDRP are satisfied, namely that the Respondent's domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the domain name (in particular, no consent or authorization to use the domain name was obtained from the Complainant); and that the Respondent's registration and subsequent use of the domain name can only have been in bad faith, in particular as it is used to attract Internet users to its website and sponsored links in the belief that this is some way associated with or recommended by the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 5(e) of the Rules provides that, where no response is submitted, in the absence of exceptional circumstances, the Panel is to decide the dispute based upon the complaint. Such default on the part of the Respondent does not relieve the Complainant from being required to establish that each of the requirements of the Policy, in particular those under paragraph 4(a), is established. At the same time, it should be noted that paragraph 14(b) of the Rules provides that:
“…if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
Accordingly, the Panel proceeds to deal with each of the matters required to be satisfied under paragraph 4(a) of the UDRP, noting that it is necessary for the Complainant to satisfy each one if it is to succeed in its complaint. A. Identical or Confusingly Similar
There can be no doubt that the Complainant has successfully shown that it has “rights” in a trade mark, namely International Registration No. 733491 (Annex 3 of the Complaint). This consists of the words “Roche Diagnostics” and was registered under the Madrid Union with WIPO on March 23, 2000, in class 35 for “organisational and professional business consultancy; data rental and maintenance”, with a priority date of January 14, 2000 in Germany and with Japan as a designation under the Protocol. While only this trade mark is exhibited and, indeed, appears to cover services that are not strictly in the healthcare sector, it is nonetheless a trade mark in which the Complainant has “rights” for the purposes of paragraph 4(a)(i).
As to whether the disputed domain is identical or confusingly similar, it will be clear that the only difference is with respect to the hyphen between the two words in the domain name. In this regard, the “.info” suffix at the end of the domain name is to be disregarded, as this is simply part of the Internet address and does not add “source-identifying significance”: see further Bang & Olufsen a/s v. Unasi Inc.,WIPO Case No. D2005-0728 (September 7, 2005) and Deutsche Welle v. DiamondWare Limited,WIPO Case No. D2000-1202 (January 2, 2001).
Accordingly, the Panel concludes that, if not completely identical to the Complainant's trade mark, it is certainly confusingly similar and that the requirements of paragraph 4(a)(i) are met. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant is also required to show that the Respondent has “no rights or legitimate interests in respect of the domain name”. Further assistance as to the meaning of this requirement is given in paragraph 4(c) which provides that:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [the Respondent's] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Essentially, these are matters for the Respondent to put forward for the Panel's consideration. In the present case, no response has been filed and all that the Complainant can do is to point to evidence that indicates that none of these circumstances exist.
Thus, the domain name resolves to a page of sponsored links to various services that are of a kind offered by the Complainant in the healthcare sector (Annex 4). It is difficult to conclude from this material that the Respondent is using the domain name in connection with a bona fide offering of goods or services, other than possibly acting as a conduit for other traders or suppliers. The remarks of the panel in J Choo Limited v. Sinclare Vabalon, BHG, WIPO Case No. D2008-1091 therefore appear apposite here, and the circumstance referred to in paragraph 4(c)(i) does not arise.
The Respondent has neither explained its conduct nor attempted to set out any rights or legitimate interests in the disputed domain name. No such rights or legitimate interests on the part of the Respondent are apparent to the Panel. The Panel considers that, in the absence of any alternative explanation, the Respondent in all likelihood selected the domain name because of its incorporation of the Complainant's trademark with a view to receiving revenue from web traffic which the Respondent directs to the various links on the associated website. This could not be described as a bona fide offering of goods or services, and it is clear to the Panel that the Respondent's use of the domain name in this manner does not confer any rights or legitimate interests upon it.
In the same way, there is no evidence of any facts that would support the circumstances referred to in paragraph 4(c)(ii) or (iii). In particular, it is clear that the activities of the Respondent have not been licensed or approved by the Complainant. The absence of any Response from the Respondent addressing the matters referred to in paragraph 4(c) entitles the Panel to infer that none of these circumstances exist in the present case. Accordingly, the Panel is satisfied that the requirement of no rights or legitimate interests under paragraph 4(a)(ii) has been made out. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii), the Complainant must show that the domain name has been registered and is being used in bad faith. Paragraph 4(b) then provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you [the Respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration of the domain name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be non-exclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of an administrative panel to the effect that registration in bad faith, followed by a passive holding of a domain name when there is no way in which it could be used legitimately, can amount to use in bad faith: Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In addition, it would be both mistaken and artificial to confine Paragraphs (i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several early Panel decisions: see, for example, Estée Lauder Inc. v. , and Jeff Hanna,WIPO Case No. D2000-0869 and E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.
In the present proceeding, the situation is complicated by the fact that the Respondent has not filed any Response or provided any evidence as to its intentions in registering and maintaining the disputed domain name. As noted above, under paragraph 14(b) of the Rules, where a party defaults in complying with any requirement of the Rules, the Panel is entitled to draw from such default such inferences, as it considers appropriate.
On the evidence before it, the Panel is not satisfied that the circumstances referred to in paragraph 4(b)(i) or (ii) arise. It is also impossible to ascertain whether the intention referred to in paragraph 4(b)(iii) exists. However, the circumstances outlined in paragraph 4(b)(iv) do appear to arise, in that the domain name is clearly confusingly similar to the Complainant's marks and there is an offering of various services similar to those of the Complainant on the website and/or links to other sites. Accordingly, it seems reasonable to infer that, in linking the domain name to these sponsored links in this way, the Respondent has attempted to attract, for commercial gain, Internet users to its website or other on-line location, through the creation of a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website and/or the services offered on the website.
Finally, the Panel is satisfied that the registration of the domain name can only have been made in bad faith, having regard to the general world-wide repute of the Complainant and its associated company Roche Pharmaceuticals. It is unlikely that the registration of a domain almost exactly the same as that of the Complainant's mark could have been made in good faith in ignorance of the Complainant's rights.
Accordingly, the Panel concludes that the requirements of paragraph 4(a)(iii) are made out. 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.
Staniforth Ricketson
Sole Panelist
Dated: July 9, 2010
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