The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally-represented.
The Respondent is Rashmi Tyagi, Roche Pathology of Delhi, India. 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 4, 2016. On August 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 4, 2016, 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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2016.
The Center appointed Leticia Caminero as the sole panelist in this matter on September 13, 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 the Rules, paragraph 7.
The language of the Registration Agreements in respect of the disputed domain name is English and the Complaint was filed in English. 4. Factual Background
The Complainant is along with its affiliated companies, one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, having 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 and jurisdictions worldwide. Some of the trademark Registrations include: International registration No. 340483 (word mark), registered on November 14, 1967; International Registration No. 346223 (word mark), registered on June 19, 1968; International Registration No. 832631 (hexagon logo mark) registered on April 8, 2004; European Union trademark Registration No. 000223107 (blue hexagon logo mark) registered on October 1, 1999; Indian Trademark Registration No. 253212 registered on December 4, 1968; and Indian Trademark Registration No. 1265818 registered on September 2, 2004.
The Complainant holds and uses the domain name .
The Respondent registered the disputed domain name on January 20, 2016, which resolves to a website named as “Roche Diagnostics” offering health care related services. 5. Parties’ Contentions A. Complainant
As a first argument, the Complainant declares that the disputed domain name is confusingly similar to the Complainant’s trademark ROCHE. Since the disputed domain name reproduces the trademark in its entirety, with the addition of a hyphen and the geographical indication “India”, which is not sufficient to distinguish the disputed domain name from the trademark. The Complainant based this argument quoting earlier cases, such as Hoffmann-Law Roche, Inc., Roche Products Limited v. Vladimir Ulyanov,WIPO Case No. D2011-1474.
Secondly, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since it has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the trademark ROCHE. Given that the Complainant has exclusive and prior rights in the trademark ROCHE, which precede the Respondent’s registration of the disputed domain name . Moreover, the Respondent is using the disputed domain name taking advantage of the reputation of the Complainant’s trademark and is creating a website with the same appearance and identical colors blue and white. Likewise, the cease-and-desist letter sent to the Respondent was ignored and therefore has not availed itself of the opportunity to present any case of legitimate interests over the disputed domain name.
As a third argument, the Complainant states that the disputed domain name was registered and is being used in bad faith. Provided that the Respondent could not ignore the Complainant’s trademark ROCHE because the registration of the disputed domain name was on January 20, 2016, which is well after the Complainant’s trademark registration. Furthermore, ROCHE trademark has acquired worldwide reputation, identifying the products and services marketed by the Complainant. (See F. Hoffmann- La Roche AG v. Clear Foto,WIPO Case No. D2009-0501).
Additionally, the Complainant claims that the disputed domain name is being used in bad faith. The Respondent’s choice is not a coincidence, since the disputed domain name contains the word “roche” and resolves to a website which is about to offer diagnostic products and services which compete with the ones of the Complainant. The Respondent clearly knew of the Complainant’s well-established reputation in the trademark ROCHE and has intentionally sought to confuse Internet users even if the website is not completely functional. This constitutes opportunistic bad faith. 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:
(i) the disputed domain name is identical or confusingly similar to a 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant bears the burden of proof on each of these elements. Since the Respondent did not present a response to the Complaint, the Panel may draw appropriate inferences from such a default. However, the Complainant must still support its allegations with actual evidence to succeed in a UDRP proceeding. A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the trademark ROCHE. The disputed domain name consists of the Complainant’s trademark ROCHE in its entirety, followed by the geographical term “India” and the generic Top-Level Domain (“gTLD”) “.com”. The geographical word is not enough to differentiate and the Complainant’s trademark ROCHE. The latter is clearly the first and main part of the disputed domain name. The Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been met by the Complainant. B. Rights or Legitimate Interests
The Panel finds that there is no evidence that the Respondent before any notice of the present dispute, 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. Likewise, there is no evidence that the Respondent has been commonly known by the disputed domain name.
On the contrary, the Panel asserts that there is clear evidence of the Respondent’s commercial use of the disputed domain name, which resolves to a semi-functional website offering similar health care services, already offered worldwide for many decades by the Complainant under the trademark ROCHE. Moreover, the trademark ROCHE can be found throughout the website. Consequently, the intention of the Respondent on said actual or potential use could be inferred for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark, which cannot be considered bona fide.
The Panel concludes that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not filed any Response to rebut the Complainant’s prima facie case.
The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been met by the Complainant. C. Registered and Used in Bad Faith
For decades, the Complainant has made use of its widely-known trademark ROCHE around the world, including in India. It could be concluded that the Respondent had previous knowledge of the reputation of the trademark ROCHE before registering the disputed domain name, selected without authorization the disputed domain name with the purpose of intentionally attempting to attract, for commercial gain, Internet users to the disputed domain name’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by the Complainant. 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.
Leticia Caminero
Sole Panelist
Date: September 14, 2016
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