The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Name Redacted of Florence, South Carolina, United States / Name Redacted of Florence, South Carolina, United States, see Annex 1. 2. The Domain Names and Registrar
The Disputed Domain Names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2015. On September 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 11, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names, which differed from the named Respondent, and contact information in the Complaint. The Center sent an email communication to the Complainant on September 22, 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 September 25, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 29, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2015.
The Center appointed Anders Janson as the sole panelist in this matter on October 27, 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.
As will be seen below, the Panel is satisfied that the beneficial owner of the Disputed Domain Names, who used a privacy service regarding the Disputed Domain Name and false contact details for both Disputed Domain Names to conceal his identity, intentionally registered the Disputed Domain Names in the name of employees of the Complainant in an attempt to defraud these individuals. Neither the privacy service nor the individuals in question had any part to play in the registration of the Disputed Domain Names or its subsequent use. The Panel proposes to treat as the sole Respondent in this case the beneficial owner of the Disputed Domain Names, the underlying registrant, whose name and address (albeit a false name and address) have been disclosed by the Registrar as being the name and address appearing on the Registrar’s WhoIs database. As is customary where the name of an innocent individual has been adopted for the purpose of impersonating that individual (see for example, Boehringer Ingelheim Pharma GmbH & Co. KG v. Name Redacted,WIPO Case No. D2012-0890), the Complainant has requested that these individuals’ names be redacted from the record of this proceeding. The Panel requests the Registrar to execute the transfer of the Disputed Domain Names in accordance with the direction in section 7 below and accepting that “Name Redacted” in this decision refers to the names of the individuals with an address in Florence, South Carolina specified as the registrants in the Registrar’s response to the Center’s verification request and referred to hereinafter as the “Respondent”. Attached as Annex 1 to this Decision is an instruction to the Registrar regarding transfer of the Disputed Domain Names that includes the names of the referenced individuals, and the Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel directs the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788. 4. Factual Background
The Complainant is together with its affiliated companies one of the world’s leading research-focused healthcare groups in the field of pharmaceuticals and diagnostics and has global operations in more than 100 countries. The trademark ROCHE serves as house-mark of the Complainant and is protected as a registered trademark in a multitude of countries worldwide. For example, International Registration No. R346223 (word mark) first registered on June 19, 1968, International Registration No. 832631 (hexagon logo mark), registered on April 8, 2004, Community Trademark Registration No. 000223107 (blue hexagon logo mark), registered on October 1, 1999, Registration No. 2348446 (hexagon logo mark) in the United States Patent and Trademark Office, registered May 9, 2000 with a first use in commerce in 1999. This trademark is registered by the Complainant’s US Branch Hoffman-La Roche Inc.
Moreover, Roche owns and uses the domain name since 2001.
The Disputed Domain Names were registered on May 19, 2015 () and on July 31, 2015 (). The Disputed Domain Names were registered in the names of employees of the Complainant, was concealed by a Privacy Shield subsequently lifted by the Registrar. For the reasons set out in section 3 above their names have been redacted from the record of this proceeding. The individual appearing as the Registrant of has further reported the matter to the United States Federal Trade Commission. The Panel has been informed and accepts that it will not be helpful to relate the details of the attempted fraud in this decision. 5. Parties’ Contentions A. Complainant
The Disputed Domain Names are confusingly similar to a trademark or service mark in which the Complainant has rights according to the Policy, paragraph 4(a)(i), and the Rules, paragraphs 3(b)(viii), (b)(ix)(1). The Disputed Domain Names are confusingly similar to the Complainant’s mark seeing that they incorporate the Complainant’s mark ROCHE in their entirety. The addition in each domain name of the geographical term “Carolina” and of a hyphen in one of them does not sufficiently distinguish these domain names from ROCHE.
According to C. & A. Veltins GmbH & Co. KG v. Heller Highwater Inc.WIPO Case No. D2004-0466 “The panel finds that the addition of the geographical suffix “usa”, does not sufficiently alter the underlying mark to which it is added. A user of the Internet is, in the Panel’s opinion, likely to assume that Complainant is the sponsor of, or is associated with, the web site identified by the disputed domain name. The addition of a hyphen between “veltins” and the country name is dictated by technical factors and customary practice among domain name registrants, and is without legal significance from the standpoint of comparing Complainant’s trademark and the contested domain name.”
Furthermore, whilst neither nor the registrant email available on the WhoIs record of “[…]@” are domain names / email addresses belonging to the Complainant, the Respondent clearly use confusingly similar domain names to reinforce the Internet users’ impression that the Disputed Domain Names belong to the Complainant.
The WhoIs record related to reveals that the Respondent has impersonated an individual employee of the Complainant’s subsidiary and used its identity to perpetrate a scam email scheme for commercial gain. The Respondent also reproduced the Complainant’s ROCHE trademark and the official postal address of the Complainant’s subsidiary Roche Carolina on a job appointment offer.
As a result, the Disputed Domain Names are confusingly similar to the Complainant’s ROCHE trademark, making it possible for users to believe that the Disputed Domain Names are related to the Complainant.
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names according to the Policy, paragraph 4(a)(ii) and the Rules, paragraph 3(b)(ix)(2). The Complainant has exclusive and prior rights in the trademark ROCHE, which precede the Respondent’s registrations of the Disputed Domain Names. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, expressed or implied, to use the Complainant’s mark ROCHE.
Furthermore, the fact that both Disputed Domain Names do not resolve to any website does not constitute a legitimate noncommercial or fair use under the Policy, Paragraph 4(c)(iii).
According to Forum (formerly known as National Arbitration Forum – NAF) Decision FA0701000893427 (American Broadcasting Companies Inc. v. Merrill Sech), “Respondent’s non-use of the disputed domain name provides evidence that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy 4(a)(ii)”. See also Melbourne IT Ltd. v. Stafford, WIPO Case No. D2000-1167 (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name of one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name).
Furthermore, the Respondent is using the Disputed Domain Names with the purpose of capitalizing on the reputation of the Complainant’s mark ROCHE.
The mere registration of does not establish rights or legitimate interests in that name; on the contrary, the Respondent registered it for the purpose of creating an impression of an association with the Complainant’s well-known trademark ROCHE. A previous panel came to the same conclusion in Polaroid Corporation v. Jay Strommen,WIPO Case No. D2005-1005 finding that “rather, it appears to this Panel that the disputed domain name [passively hold by the Respondent] was registered for the purpose of trading off Complainant’s well-known and famous mark.”
Furthermore, emails apparently sent by the Registrant of aim at obtaining from its prospective victim monies, by using the ROCHE trademark, the official address of the Complainant’s subsidiary Roche Carolina and one of its employee’s identities.
According to Smiths Group plc v. Lee Snooks NAF Claim No. FA1102001372112 “Complainant claims Respondent previously used the disputed domain name to impersonate an employee of Complainant in an attempt to obtain cell phones using Complainant’s corporate account. The Panel finds Respondent’s use of the disputed domain name for such a purpose is an attempt to pass itself off as Complainant and is certainly not a bona fide offering of goods or services pursuant to Policy 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii).
According to The Prudential Assurance Company Limited v. Prudential Securities Limited,WIPO Case No. D2009-1561 “the only proved use of the name “Prudential Securities Limited” by the Respondent, is the use of that name in the August 28 email and in other similar emails. For reasons set out in the next part of this decision, that use appears to have been fraudulent – the Respondent has effectively masqueraded as a subsidiary or operating division of the Complainant’s group. Such a use could never form a basis for a claim to a right or legitimate interest, and there is no other proved use of the name “Prudential Securities” by the Respondent which might have formed the basis for a “commonly known by” defense under paragraph 4(c)(ii) of the Policy”.
Therefore, it is inconceivable that the Respondent can have any rights or legitimate interests in respect of the Disputed Domain Names in so far as the WHOIS information lists the registrants of the Disputed Domain Names as either an employee of the Complainant’s subsidiary, victim of an identity theft, or a proxy service.
The Disputed Domain Names were registered and are being used in bad faith according to the Policy, paragraphs 4(a)(iii), 4(b) and the Rules, paragraph 3(b)(ix)(3). The Respondent could not ignore the Complainant’s activities and its ROCHE mark because the Respondent’s registrations of the Disputed Domain Names, on July 31, 2015, respectively May 17, 2015 are well after the Complainant’s ROCHE trademark registrations.
The Complainant is aware that one of the Disputed Domain Names, , was registered for the purpose of perpetrating a fraud. Not only do the emails use the Complainant’s subsidiary physical address, but they also reproduce the Complainant’s ROCHE mark and purport to have been authored by an employee of the Complainant’s subsidiary – used as the registrant contact of this domain name as well.
It was previously ruled out by the above-mentioned WIPO case The Prudential Assurance Company Limited v. Prudential Securities Limited,WIPO Case No. D2009-1561, that “It is clear from those facts that the Domain Names have both been used, by the same person or persons, to provide email addresses from which the Respondent has sent fictitious emails. The Panel cannot imagine any reason why the Respondent would have sent emails in which it effectively impersonated a member of the Complainant’s group, other than to perpetrate some fraudulent scheme or schemes. […] It goes without saying that a Domain Name which has been acquired and used for the purpose of perpetrating a fraud, has been acquired and used in bad faith.”
Furthermore, in light of the reputation of the Complainant and its trademark ROCHE, it is clear that the Respondent of both Disputed Domain Names is well aware of the Complainant’s group and of its ROCHE mark. The choice of the Respondent is not a coincidence, he clearly knew of the Complainant’s reputation in the trademark ROCHE and has intentionally sought to mislead Internet users even if the Disputed Domain Names do not currently resolve to any website.
In the present case, the Respondent has either used a stolen identity (for ) or a Proxy service (for ) to conceal his genuine identity. Such a pattern of behavior constitutes bad faith use of the Disputed Domain Names.
The Disputed Domain Name is being used as an email address to perpetrate a scam email scheme for commercial gain, based on confusion with the Complainant. The author of the emails sent fake job offer letters by using the identity of an employee of the Complainant’s subsidiary, by mentioning the official address of the Complainant’s subsidiary Roche Carolina and by reproducing the Complainant’s trademark ROCHE.
The Respondent most likely attempted to deceive Internet users, by inducing them to believe that they were connected with a legitimate job appointment, which would have led them to disclosing sensitive financial information. Such pattern of behavior constitutes bad-faith use and is consistent with phishing and identity theft purposes.
Given all the cumulative circumstances, the passive holdings of both Disputed Domain Names constitute evidence of bad faith use and it is obvious that the Respondent is illegitimately capitalizing on the Complainant’s reputation and goodwill in its ROCHE trademark.
For the reasons described above, the Complainant requests that the Disputed Domain Names be transferred to the Complainant.
In an amendment to the Complaint, the Complainant further requests that the individual disclosed by the Registrar as the underlying registrant of the Disputed Domain Name , who is also an employee of the Complainant, be referred to as “Name Redacted” as said employee’s identity details were stolen as well. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Given the Complaint and evidence submitted by the Complainant and the Respondent’s failure to file a Response, the Panel accepts as true reasonable contentions of the Complainant. The Respondent’s default does not however automatically lead to a transfer of the Disputed Domain Names. On the contrary, the Complainant still must establish that is it entitled to a transfer of the Disputed Domain Names under the Policy.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The Disputed Domain Names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) The Disputed Domain Names are been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant does have trademark rights to ROCHE by way of the trademark registrations.
The Disputed Domain Names are and and therefore contain the entire words “ROCHE”, which is the Complainant’s registered trademark. The fact that the Disputed Domain Names also contain the term “carolina” and a hyphen does not diminish the risk of confusion. The Panel therefore finds that the Disputed Domain Names are confusingly similar to the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
In this case, the Complainant has submitted convincing argumentation and evidence of its exclusive right concerning the ROCHE trademark and that the Respondent is fraudulent by using the Disputed Domain Names to take advantage of the Complainant’s trademark. The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names.
Therefore, the burden of production shifts to the Respondent to bring forward appropriate allegations or evidence of its rights or legitimate interests. The Respondent has not replied to the Complainant’s contentions. The failure to file a Response leaves the Panel to decide the case on the basis of the available record and the evidence provided by the Complainant. Upon consideration of the available record, the Panel is satisfied that the Respondent has no rights or legitimate interests in the Disputed Domain Names.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Complainant’s trademark is widely known, and, further, that it is highly unlikely that the Respondent was unaware of the Complainant’s trademark as the Disputed Domain Names display webpages in order to attract Internet users searching for the Complainant’s ROCHE mark via search engines, including users who expect to be led to the Complainant’s genuine website or to sites endorsed by the Complainant.
The Panel finds that the Disputed Domain Names were registered and used in bad faith. It is clear that the Respondent of both Disputed Domain Names was well aware of the Complainant’s group and of its ROCHE mark. The Disputed Domain Name is being used as an email address to perpetrate a scam email scheme for commercial gain, based on confusion with the Complainant. The author of the emails sent fake job offer letters by using the identity of an employee of the Complainant’s subsidiary, by mentioning the official address of the Complainant’s subsidiary Roche Carolina and by reproducing the Complainant’s trademark ROCHE. The Panel further notes that the WhoIs for the Disputed Domain Name indicates a contact email address for its registrant as follows: “[…]@”, thus indicating that the beneficial holder of the Disputed Domain Names is indeed a single entity, using both Disputed Domain Names in bad faith. This constitutes evidence of registration and use of the Disputed Domain Names in bad faith in accordance with paragraph 4(b)(iv) of the Policy. There is no material in the record, which displaces this presumption.
The Panel therefore finds that the Complainant has fulfilled the requirements under paragraph 4(a)(iii) of the Policy. 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 Names, and be transferred to the Complainant.
Anders Janson
Sole Panelist
Date: November 9, 2015
Full & Egal Universal Law Academy