Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
Respondent is H J Shin of Daegu, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with Cydentity, Inc. dba C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2010. On September 13, 2010, the Center transmitted by email to Cydentity, Inc. dba C a request for registrar verification in connection with the Disputed Domain Name. On September 14, 2010, Cydentity, Inc. dba C transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details.
On September 17, 2010, the Center issued a Language of Proceeding notification, inviting comment from the parties. On the same day, Complainant confirmed by email its request that English be the language of the proceeding as indicated in the Complaint. Respondent did not respond to the Center’s Language of Proceeding notification. On September 23, 2010, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that the Panel has the authority to determine the language of the proceeding.
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 September 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 14, 2010.
The Center appointed Andrew J. Park as the sole panelist in this matter on November 2, 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, together with its affiliated companies, is one of the worlds leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, and having global operations in more than 100 countries. Complainant’s ROCHE mark is protected as a trademark throughout the world. Its trademark registrations include International Registration Nos. R1346223 and 832631, as well as Community Trademark Registration No. 000223107. Further, Complainant’s affiliated company, Roche Diagnostics GmbH, is the recorded trademark registrant of the VENTANA trademark under Community Registration No. 000783381. 5. Parties’ Contentions A. Complainant
Complainant argues that: (i) the Disputed Domain Name is confusingly similar to a mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name was registered and is being used in bad faith. Regarding the first element, Complainant contends that the Disputed Domain Name incorporates Complainant’s ROCHE trademark in its entirety, together with the VENTANA trademark owned by its affiliated company. Thus, Complainant contends that the Disputed Domain Name is confusingly similar to its trademarks.
Complainant also contends that since its ROCHE mark is well-known, the notoriety of the mark will increase the likelihood of confusion. Finally, Complainant contends that its use and registration of the mark s ROCHE and VENTANA predate Respondent’s registration of the Disputed Domain Name.
Regarding the second element, Complainant contends that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Specifically, Complainant contends that it has exclusive rights for the ROCHE and VENTANA marks and that it did not grant any license nor authorization to use the said marks in a domain name. Complainant also contends that Respondent is using the Disputed Domain Name for commercial gain and for the purpose of capitalizing on the fame of Complainant’s marks.
Regarding the third element, Complainant argues that Respondent registered the Disputed Domain Name in bad faith because it had knowledge of Complainant’s well-known ROCHE and VENTANA marks at the time it registered the Disputed Domain Name. Also, Complainant argues that Respondent is using the Disputed Domain Name in bad faith because he is using it to attract, for commercial gain, Internet users to the website to which this domain name resolves, and ultimately to use Complainant’s trademarks to mislead Internet users, all of which tarnishes the ROCHE and VENTANA trademarks. Further, Complainant argues that Respondent offered to sell the Disputed Domain Name to it for USD 15,000. Complainant thus claims that the Disputed Domain Name was registered by Respondent for the purpose of transferring the domain name registration to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the Disputed Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The registration agreement for the Disputed Domain Name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, i.e., Korean. However, Complainant submitted a request for this dispute to proceed in English. The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.
In adopting a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs. Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432. Based on the pre-Complaint cease and desist letter Complainant sent to Respondent in English, and Respondent’s reply in English, it does not appear as though Respondent has any difficulty comprehending and communicating in English. It is also noted that Respondent’s Disputed Domain Name displays content that is entirely in English. Further, Respondent chose not to participate or submit any reply to this proceeding in English or Korean. In light of these circumstances, the Panel concludes that it will 1) proceed in line with the Center’s preliminary decision to accept the Complaint as filed in English; and 2) issue a decision in English.
6.2 Analysis of the Complaint
Under the Policy, in order to prevail, Complainant must prove the following three elements of a claim for transfer or cancellation of Respondent’s Disputed Domain Name: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that Respondent’s Disputed Domain Name was registered and is being used in bad faith. See Policy, paragraph 4(a). Regarding paragraph 4(a)(ii), once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
As Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all reasonable factual allegations as true. The Panel may also draw appropriate inferences from Respondent’s default. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. A. Identical or Confusingly Similar
The case record contains ample evidence to demonstrate Complainant’s rights, both directly or through its affiliated company, in the registered ROCHE and VENTANA trademarks, respectively. The Panel also determines that the Disputed Domain Name is confusingly similar to Complainant’s ROCHE and VENTANA marks. The test for determining confusing similarity involves a direct comparison of a complainant’s trademark and the textual string which comprises the domain name. In this case, it is clear that the Disputed Domain Name is composed entirely of Complainant’s ROCHE and VENTANA marks. Additionally, the Panel notes that it is well-established that the top-level domain name suffix (e.g., “.com”) is not generally taken into consideration when assessing identical or confusing similarity. Accordingly, the Panel finds that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that Respondent may establish rights or legitimate interests in the Disputed Domain Name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to Respondent of the dispute, Respondent used, or made demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if Respondent has not acquired trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. If the circumstances are sufficient to constitute a prima facie showing by Complainant of an absence of rights or legitimate interests on the part of Respondent, the evidentiary burden shifts to Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest.
Complainant has not authorized Respondent to use its ROCHE and VENTANA trademarks in any respect. There is also no evidence that Respondent is commonly known by the Disputed Domain Name. Further, Respondent’s use of the Disputed Domain Name to sponsor links is not use of the Disputed Domain Name in connection with a bona fide offering of goods or services. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain,WIPO Case No. D2007-1380; Robert Bosch GmbH v. Asia Ventures, Inc.,WIPO Case No. D2005-0946; E, Inc. v. Ult. Search, Inc.,WIPO Case No. D2001-1319; Trade Me Limited v. Vertical Axis Inc,WIPO Case No. D2009-0093. Finally, there is no evidence that Respondent is making any legitimate noncommercial or fair use of the Disputed Domain Name. Based on the un-refuted evidence submitted by Complainant, the Panel finds that Respondent is not making fair use of Complainant’s trademark, but is using the mark to attract Internet users to Respondent’s website and then providing links to other sites, some of which have little or nothing to do with Complainant.
This combination of circumstances sufficiently establishes a prima facie case so that the evidentiary burden shifts to Respondent to prove that it has some rights or legitimate interests in respect of the Disputed Domain Name. Respondent has not filed a Response and has therefore failed to satisfy its burden. Having searched the present record, the Panel finds no circumstances that would indicate such rights or interests, as described in paragraph 4(c) of the Policy, or otherwise. Complainant has therefore prevailed on this part of its Complaint. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Complainant establish both bad faith registration and bad faith use of the Disputed Domain Name by Respondent. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman,WIPO Case No. D1999-0001. Paragraph 4(b) of the Policy provides the following four exemplary circumstances, each of which, if proven, shall be evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that a registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
Complainant has submitted evidence that Respondent registered the Disputed Domain Name to sell, rent or otherwise transfer it to Complainant. Respondent is also presumably deriving a financial benefit from web traffic diverted through the Disputed Domain Name to linked websites on the website to which the Disputed Domain Name resolves. The Panel therefore accepts that Respondent has intentionally attracted Internet users to its website for commercial gain through confusion as to the source, affiliation or endorsement of the website or location. This amounts to evidence of bad faith use under paragraph 4(b)(iv) of the Policy. See Compart AG v. C / Vertical Axis, Inc.,WIPO Case No. D2009-0462. Further, Respondent, by use of the Disputed Domain Name, is also drawing Internet users away from Complainant’s websites to its own website and thus damages Complainant’s business. Accordingly, the Panel finds that Respondent registered the Disputed Domain Name primarily for the purpose of attracting Internet users to another site by creating confusion and this is evidence of bad faith under paragraphs 4(b)(iii) and (iv) of the Policy. For the foregoing reasons, the Panel finds that Complainant has satisfied the third element 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.
Andrew J. Park
Sole Panelist
Dated: November 15, 2010
Full & Egal Universal Law Academy