The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Univer sale/Universal of Islamabad, Pakistan. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2015. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2015, the Registrar 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 17, 2015. In accordance with paragraph 5 of the Rules, the due date for Response was January 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2016.
The Center appointed Brigitte Joppich as the sole panelist in this matter on January 18, 2016. 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant together with its affiliated companies is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and has global operations in more than a hundred countries.
One of the Complainant’s products is RIVOTRIL. The Complainant owns rights in the trademark RIVOTRIL inter alia through International Registration No. 205099 RIVOTRIL, registered on November 22, 1957 in connection with goods in international classes 1, 3, and 5 (hereinafter referred to as the “RIVOTRIL Mark”).
The disputed domain name was registered on November 13, 2015 and is being used in connection with a website which provides information on the RIVOTRIL drug and links to an online pharmacy.
The Complainant sent a cease and desist email to the Respondent on November 20, 2015, which remained unanswered. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
(1) The disputed domain name is confusingly similar to the RIVOTRIL Mark as it incorporates such mark in its entirety and as the addition of generic terms such as “2mg” does not eliminate the likelihood of confusion between the disputed domain name and RIVOTRIL Mark.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as it has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the RIVOTRIL Mark, as the Respondent falsely implies that its pharmaceutical products are related or similar to those of the Complainant, and as the Respondent is not using the disputed domain name for a bona fide offering of goods, or for a legitimate noncommercial or fair use. In addition, the Complainant states that the Respondent did not reply to the Complainant’s cease and desist letter and hence has not availed itself of the opportunity to present any case of legitimate interest that it might have.
(3) The disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant contends that the Respondent could not ignore the RIVOTRIL Mark because the Respondent’s registration of the disputed domain name on November 13, 2015 was well after the Complainant’s trademark registration. In addition, the Complainant argues that the disputed domain name only consists of the reproduction of the RIVOTRIL Mark with the addition of generic words that refer to the Complainant’s core business, namely the pharmaceutical industry. With regard to bad faith use, the Complainant contends that the disputed domain name contains the term “RIVOTRIL” and resolves to a website that shows a standard cross logo to designate a pharmacy and provides information on the RIVOTRIL drug and that these elements were clearly chosen to attract Internet users searching for the Complainant’s RIVOTRIL Mark via search engines, including users who expect to be led to the Complainant's genuine website or to sites endorsed by the Complainant. In addition, the Complainant argues that the Respondent is using the disputed domain name to capitalize on the Complainant’s goodwill in its trademark and to mislead the consumers and confuse them by making them believe that the websites behind those links are recommended by the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trade mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s RIVOTRIL Mark and is confusingly similar to such mark. It is well established that a domain name that wholly incorporates a trade mark may be confusingly similar to such trade mark for purposes of the Policy despite the addition of generic terms, such as “2mg”. In addition, the additional term in question in the present proceeding clearly refers to a dosage form of the Complainant’s RIVOTRIL products and therefore strengthens the reference to the Complainant’s RIVOTRIL Mark.
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or 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) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. In particular, the Respondent’s use is no bona fide use under the Policy. The Panel acknowledges that a reseller can make a bona fide offering of goods and services and thus have a legitimate interest in a domain name if the use fits certain requirements, including the actual offering of goods, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant's relationship with the trademark holder (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,WIPO Case No. D2000-1774; Experian Information Solutions, Inc. v. Credit Research, Inc.,WIPO Case No. D2002-0095). Given that the Respondent did not disclose its relationship to the Complainant at all, the Respondent’s use of the disputed domain name does not meet the criteria set out in Oki Data Americas, Inc. v. ASD, Inc., supra, even if it is assumed that the Respondent is offering genuine products.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out of pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the RIVOTRIL Mark as it offers the RIVOTRIL products for sale itself on the website available at the disputed domain name. Furthermore, the disputed domain name contains the additional element “2mg” which refers to a dosage form of the Complainant’s RIVOTRIL products and indicates that the Respondent was clearly referencing the Complainant’s product when registering the disputed domain name.
As to bad faith use, by fully incorporating the RIVOTRIL Mark into the disputed domain name and by using such domain name in connection with a website linking to an online pharmacy the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy. The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith.
Consequently, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith and that the Complainant satisfied the requirements of 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 name be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Date: February 1, 2016
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