The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented internally.
The Respondent is A Firman Zakki Rosyadi of Surabaya, Jawa Timur, Indonesia / Whois Privacy Shield Services of Irvine, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with T, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2015. On July 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 7, 2015 providing the 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 August 7, 2015.
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 August 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 8, 2015.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on September 22, 2015. 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 has submitted evidence that it is the owner of the following registered trademarks:
KLONOPIN, U.S. trademark with registration number 1,415,564 and registration date November 4, 1986.
KLONOPIN, U.S. trademark with registration number 2,186,702 and registration date September 1, 1998.
The disputed domain name was registered on June 21, 2014. 5. Parties’ Contentions A. Complainant
The Complainant is, together with its affiliated companies, engaged in research and development of pharmaceutical and diagnostic products. The Complainant is a member of the Roche Group, one of the world’s leading research-focused healthcare groups with global operations in more than 100 countries.
The Complainant’s trademark KLONOPIN is an alternative trademark (US version) for the trademark RIVOTRIL.
The Complainant is the holder of the domain name .
The disputed domain name incorporates the distinctive mark KLONOPIN in its entirety together with the descriptive element “works”. The mere addition of this element does not sufficiently distinguish the disputed domain name from the Complainant’s trademark. As a result, the disputed domain name is confusingly similar to the Complainant’s trademark.
The Complainant has exclusive and prior rights in the trademark KLONOPIN, which precede the Respondent’s registration of the disputed domain name. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademark KLONOPIN.
The Respondent’s use is falsely implying that its pharmaceutical products are related to or similar to those of the Complainant. The Respondent is using the disputed domain name to direct Internet users to an online pharmacy and to advertise the sale of the KLONOPIN drug on its website by using the following heading: “Order low cost Klonopin (Clonazepam) medication at one of reliable online pharmacies”.
The disputed domain name was registered in bad faith. The Respondent must have been aware of the Complainant’s distinctive trademark and product name, which is a coined term without ordinary meaning. The disputed domain name is used in bad faith. The Respondent is intentionally attempting, for commercial purpose, to attract Internet users to the Respondent’s website, by creating a likelihood of confusion 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.
Furthermore, by incorporating the KLONOPIN mark with a descriptive word into the disputed domain name, the Respondent intends to divert customers away from the Complainant’s own websites because they will falsely believe that the Respondent’s website is affiliated with the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
According to the submitted evidence, the Complainant is the owner of the registered trademark KLONOPIN. The disputed domain name incorporates the Complainant’s trademark in its entirety with the addition of the descriptive term “works”. The addition of the descriptive term “works” in the disputed domain name makes little, if any, difference in the confusing similarity and identity analysis.
Having the above in mind, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark KLONOPIN and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademark KLONOPIN in connection with the disputed domain name , which is confusingly similar to the Complainant’s trademark.
The evidence in the case indicates that the disputed domain name has been used by the Respondent to provide the same type of services and products as those offered by the Complainant. Furthermore, the Respondent’s website contains links to websites that compete with the Complainant’s business. There is no evidence indicating that the Respondent has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute.
Although given the opportunity, the Respondent has not rebutted the Complainant’s prima facie case. It has not submitted any evidence indicating that the Respondent is the owner of any trademark rights or that the Respondent is commonly known by the disputed domain name . In addition, there is no evidence indicating that the Respondent intends to make 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.
The Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:
(i) circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
The Complainant’s KLONOPIN trademark predates the registration of the disputed domain name . The content of the website to which the disputed domain name resolves clearly indicates that the Respondent has full knowledge of the Complainant’s product and trademark.
Thus, the submitted evidence in the case before the Panel indicates that the disputed domain name has intentionally been registered and used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.
There is no evidence in the case file that refutes the Complainant’s submissions.
The Panel therefore concludes that the Complainant has proved the requirements under paragraph 4(a)(iii) of the Policy and that the disputed domain name has been registered and used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Johan Sjöbeck
Sole Panelist
Date: October 1, 2015
Full & Egal Universal Law Academy