Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
Respondent is Morad Nimar of Stains, France. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 26, 2015. On August 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 2015, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 14, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 5, 2015.
The Center appointed David Perkins as the sole panelist in this matter on October 20, 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. 4.A Complainant.
4.A.1 Complainant, together with its affiliated companies, is one of the world's leading research focussed healthcare groups in the fields of pharmaceuticals and diagnostics. It operates in more than 100 countries worldwide.
4.A.2 Complainant's ROCHE trade marks
Complainant is the proprietor of the trade mark ROCHE. That mark is used as its house-mark and is registered worldwide. The following examples are exhibited to the Complaint.
Territory
Registration No.
Mark
Classes of goods/services
Dates of Application/ Registration
International Registration
IR340483
ROCHE
10
Filed August 15, 1967 Registered November 14, 1967
International Registration
IR346223
ROCHE
1-3, 5, 26, and 29-31.
Filed January 19, 1968 Registered June 19, 1968
International Registration
IR832631
ROCHE and Hexagon Logo
1, 3, 5, 9-10, 16, 35, 37-38, 41-42, and 44
Registered April 8, 2004
Community Trade Mark (CTM)
000223107
ROCHE and Hexagon Logo
1, 3, 5, 9-10, 16, 31, 38, and 42-42
Filed April 12, 1996 Registered October 1, 1999
International Registration
IR932630
ROCHE (Hexagon logo) We Innovate Healthcare
5, 16, and 41
Registered July 16, 2007
IR340483 is registered in some 25 countries, IR346223 is registered in some 50 countries, IR832631 is registered in some 75 countries and IR932630 is registered in some 35 countries
4.A.3 Complainant's ROCHE domain name
Complainant is the registrant of which resolves to its website. 4.B Respondent
4.B.1 In the absence of a Response, what is known of Respondent is derived from the Complaint and its Annexes.
4.B.2 The disputed domain name was registered on August 12, 2015.
4.B.3 That domain name resolves to a website which is a search engine with links to other websites, presumably generating pay-per-click revenue.
4.B.4 Although, as stated, Respondent has not filed a Response, exhibited to the Complaint is an email from Respondent dated August 22, 2015 in reply to Complainant's "Cease and Desist" email dated August 14, 2015. In that email, Respondent explained that his intention was:
"...to build a website about energise stones who can have some benefit energetically speaking. In fact, a rock means roche in French. Which is a word in the dictionary I need."
4.B.5 Respondent further explained that he is a "street market" trader in France. He says that he saw other companies using the name "Roche" but selling different merchandise to Complainant's products. He stated that it was not his intention to use the disputed domain name to affect Complainant's business:
"I really understand your concern but I'm not gonna make something link, similar, close to your brand or who can affect it. And we are not looking at all for the same customers."
4.B.6 In that email Respondent evidences some knowledge about the generic Top-Level Domain ("gTLD") process and indicates that Complainant had not availed itself of the opportunity to register under the ".healthcare" domain. Complainant replied that it had submitted its ROCHE house mark to the Trademark Clearing House and had sent its "Cease & Desist" email of August 14, 2015 within two days after Respondent's registration of the disputed domain name on August 13, 2015. 5. Parties' Contentions 5.A. Complainant Identical or Confusingly Similar
5.A.1 On the basis of the trade mark registrations summarised in paragraph 4.A.2 above, Complainant asserts rights in the ROCHE trade mark.
5.A.2 Complainant states that the disputed domain name is confusingly similar to its ROCHE mark since it incorporates that mark in its entirety. Addition of the new gTLD ".healthcare" does not, Complainant says, sufficiently distinguish the disputed domain name from the ROCHE trade mark. Indeed, Complainant asserts that it emphasises the likelihood of confusion as it reflects Complainant's healthcare business. In that respect, Complainant cites the Decision in Merck Sharp & Dohme Corp. v. Ignitee Digital Solutions Pvt. Ltd., Amit Debnath,WIPO Case No. D2011-2047, where the disputed domain name was held to be confusingly similar to the complainant's MERCK trade mark. Rights or Legitimate Interests
5.A.3 First, Complainant says that it has not licensed or otherwise authorised use by Respondent of the ROCHE mark.
5.A.4 Second, despite Respondent's explanation of his intention to use the disputed domain name for the purpose summarised in paragraphs 4.B.4 and 4.B.5 above, he has provided no evidence to demonstrate that, prior to being put on notice of this dispute, he had made demonstrable preparations to use the disputed domain name for that purpose.
5.A.5 Third, it is not, Complainant says, a legitimate noncommercial or fair use of the disputed domain name to use it to direct to a webpage which is a search engine with sponsored links resolving to third party websites. In sum, Complainant's case is that Respondent is using its ROCHE trade mark to route unsuspecting Internet users, who are seeking Complainant or its products, to a website containing a series of links, for referral fees. Such is not, Complainant says, a use falling within paragraph 4(c)(iii) of the Policy.
5.A.6 In support of that contention, Complainant cites the Decision in Sigikid H. Schaffer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestingo,WIPO Case No. D2004-0990. In that case the complainant's trade mark was SIGIKID and the disputed domain name was . That disputed domain name resolved to a website which contained "...links and information to plush animals, toys and children's clothing, which are the goods for which Complainants 1 and 2 are famous for." The website also contained links to other kinds of goods and services as well as links to sites with pornographic content. The Panel held that this diversion of Internet traffic to unrelated websites did not constitute a use of the disputed domain name in connection with a bona fide offering of goods and services. Registered and Used in Bad Faith
5.A.7 As to registration in bad faith, from Respondent's email dated August 22, 2015 - referred to above - Complainant says it is clear that Respondent was well aware of Complainant's ROCHE trade mark when registering the disputed domain name. Further, and in any event, Complainant asserts that its ROCHE trade mark is a very well known mark. In that respect, Complainant cites the Decision in F. Hoffman-La Roche AG v. Clear Foto,WIPO Case No. D2009-0501, wherein the Panel held:
"In the Panel's view it is beyond dispute that Complainant has trademark rights in the ROCHE trademark, which is distinctive and internationally recognised in the field of pharmaceuticals, diagnostics and health care services."
and in relation to registration in bad faith:
"As mentioned above, Complainant's ROCHE trademark has acquired worldwide reputation, identifying the products and services marketed by Complainant. It is therefore highly unlikely that Respondent, whose consultancy business is involved in public health services, registered the domain name in March 2009 without knowledge of Complainant's ROCHE mark."
In that case, the disputed domain name was .
5.A.8 Complainant says that, in the circumstances, it is plain that the disputed domain name was registered in bad faith.
5.A.9 As to use in bad faith, Complainant's case is that the facts demonstrate bad faith under paragraph 4(b)(iv) of the Policy. In that respect, Complainant again cites the Decision in Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo, supra summarised in paragraph 5.A.6 above.
5.A.10 Complainant also cites the Decision in F. Hoffmann-La-Roche AG v Anna Valdieri,WIPO Case No. D2007-0956. That case involved Complainant's XENICAL trade mark for its weight loss medication and the disputed domain name , which domain name resolved to a website containing links to third party websites promoting and/or offering products in the pharmaceutical field. Citing earlier Decisions under the Policy, the Panel held that the respondent had registered and used the domain name with the intent to attract Internet users looking for the products of Complainant, thereby making commercial gain by sponsored links. Such constituted bad faith use under paragraph 4(b)(iv) of the Policy. 5.B Respondent
5.B.1 Respondent's case is set out in his email of August 22, 2015 summarised in paragraphs 4.B.4,4.B.5 and 4.B.6 above. 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate Respondent's rights or legitimate interests in the disputed domain name.
6.3 The Policy paragraph 4(b) sets out circumstances which, again 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.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 Clearly, Complainant has rights in the ROCHE trade mark, which is on any view a very well known mark.
6.6 The disputed domain name incorporates that mark in its entirety. Complainant cites Zions Bancorporation v. Mohammed Akik Miah,WIPO Case No. D2014-0269, which in turn quoted Canyon Bicycles GmbH v. Domains by Proxy, LLC/ Rob van Eck,WIPO Case No. D2014-0206 for the proposition that, in the context of new gTLDs, it may be appropriate to include consideration of the top-level suffix of a domain name in assessing identity or confusingly similarity. In that connection, the panel noted that there was nothing in the wording of the Policy that would preclude such an approach.
6.7 Like the Panel in Zions Bancorporation v. Mohammed Akik Miah, supra, the Panel in this case considers that it is not necessary to do so in this case. The Panel agrees with Complainant's submission that addition of the ".healthcare" gTLD to the ROCHE trade mark emphasises the likelihood of confusion since it reflects Complainant's core healthcare business.
6.8 Accordingly, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests.
6.9 The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") addresses in paragraph 2.6 whether pay-per-click links generate rights or legitimate interests in a disputed domain name. The consensus view is that such links do not of themselves confer rights or legitimate interests arising from a bona fide offering of goods or services or from legitimate noncommercial or fair use of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder.
6.10 However, in this case the links from the website to which the disputed domain name resolves do not appear to be to businesses competing with Complainant's health care business. Nevertheless, where the links are based on trade mark value, as the Panel considers they are in this case, the WIPO Overview 2.0 records that UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion. From Respondent's August 22, 2015 email, in which he referred to "the big Brand like yours", it is clear that he was well aware of the trade mark value of Complainant's ROCHE mark and also that he considered himself able to register the disputed domain name by reason of Complainant's failure itself to register under the ".healthcare" gTLD.
6.11 Accordingly, on the facts presented in this case, the Panel finds that Respondent could not establish rights or legitimate interests in the disputed domain name whether under paragraph 4(c) of the Policy, or otherwise. Consequently, the Complaint satisfies paragraph 4(a)(ii) of the Policy. Registered and Used in Bad Faith
6.12 The Panel finds that Complainant's case summarised in paragraphs 5.A.7 to 5.A.10 above is well made out. Additionally, as to the use to which the disputed domain name has been put, paragraph 3.8 of the WIPO Overview 2.0 records that, where, as likely here, commercial gain is made from the links, that is normally sufficient to establish bad faith use under paragraph 4(b)(iv) of the Policy.
6.13 Accordingly, the Complaint also satisfies 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 disputed domain name be transferred to Complainant.
David Perkins
Sole Panellist
Date: October 26, 2015
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