The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Samantha Park of Bamenda, Cameroon. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2018. On November 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 November 2, 2018 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 November 5, 2018.
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 November 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2018.
The Center appointed Frank Schoneveld as the sole panelist in this matter on December 13, 2018. 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 BackgroundThe Complainant is the owner of the trademark KLONOPIN registered in Morocco on September 9, 1994 No. 54712 for “preparations et substances pharmaceutiques, veterinaires et hygieniques” (Panel’s rough translation of this French wording is “pharmaceutical, veterinary and hygienic preparations and substances”).
The KLONOPIN trademarks Nos. 1415564 and 2186702 were registered on November 4, 1986 and on September 1, 1998 with the United States Patent and Trademark Office, by Hoffmann-La Roche INC. of New Jersey in the United States of America (“USA”), a member of the Complainant’s group of companies. These USA registered trademarks cover “anticonvulsant preparation and pharmaceutical preparation for the treatment of panic disorder, respectively”.
The disputed domain name was registered on September 27, 2018 and resolves to an online pharmacy store. 5. Parties’ Contentions A. Complainant
The Complainant states that, together with its affiliated companies, it 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 100 countries. The Complainant informs that in the USA the product Klonopin is distributed by Genentech, a member of the Roche Group.
The Complainant argues that numerous UDRP panel decisions have confirmed that a complaint can be brought under the UDRP by a member of a group of companies based on a mark of the group, even if it is registered in the name of a different company in the group. The Complainant states that KLONOPIN is an alternative trademark (Morocco and USA version) for the trademark RIVOTRIL, and that this RIVOTRIL trademark is registered on a worldwide-basis by F. Hoffmann-La Roche AG of Basel, Switzerland. The Complainant submits that Hoffmann-La Roche Inc., USA is owned and controlled by Roche Holding AG, a company organized and doing business under the laws of Switzerland.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark given that it incorporates the Complainant’s mark in its entirety, and that the addition of a hyphen, with the terms “buy” and “online”, does not sufficiently distinguish the disputed domain name from the Complainant’s trademark. The Complainant also contends that according to Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240, “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark”. Further, the Complainant points out that use and registration of the trademark KLONOPIN predates the Respondent’s registration of the disputed domain name.
The Complainant contends that the Respondent has no right or legitimate interest in the disputed domain name, that the Complainant has exclusive rights in its trademark KLONOPIN, and no licence/permission/authorization or consent was granted to the Respondent to use KLONOPIN in the disputed domain name. The Complainant argues that several cases have found that a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and it is being used to direct consumers to an unrelated online pharmacy.
The Complainant submits 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, and the fact that the Respondent has chosen not to respond either to a notice delivered by a bailiff (or to the Complaint) strongly suggests that the Respondent has nothing to say which might help in rebutting the Complainant’s assertions. The Complainant adds that the disputed domain name clearly alludes to the Complainant and all these things indicate that there is no reason why the Respondent should have any right or legitimate interest in the disputed domain name.
The Complainant asserts it is obvious the Respondent uses the disputed domain name for commercial gain with the purpose of capitalizing on the fame of the Complainant’s mark KLONOPIN, by directing Internet users to a pharmacy online.
The Complainant alleges the disputed domain name was registered in bad faith since at the time of registration the Respondent, undoubtedly had knowledge of the Complainant’s product/mark KLONOPIN. The Complainant submits that the disputed domain name is being used in bad faith and this is obvious since, when viewing the Internet-website of the Respondent, one realizes that the Respondent has intentionally attempted (for commercial purpose) to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of the Respondent’s websites or of the products or services posted on or linked to the Respondent’s website. The Complainant argues that, according to Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784,bad faith is established when the “respondent is using the domain names as a forwarding address to a for-profit online pharmacy”.
The Complainant submits that the disputed domain name obviously offers for sale products of competitors of the Complainant and that, according to Hoffmann-La Roche Inc. v. Domain Admin / Michael Carrillo,WIPO Case No. D2015-0160, “it is well-established that using a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among Internet users as to the source of products or to confusingly suggest sponsorship by the trademark owner”. The Complainant concludes that the Respondent, by using the disputed domain name, is intentionally misleading consumers and confusing them by making them believe that the websites behind those links are associated or recommended by the Complainant, and as a result, the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the KLONOPIN trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to UDRP paragraph 4(a), in order to have a domain name transferred or cancelled the complainant must prove that each of the following three elements are present:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; 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.
The Rules at paragraph 15(a) require that “a Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. In the absence of any response from the Respondent to the Complainant’s contentions, the Panel therefore proceeds on the basis of the Complaint and in accordance with the Policy, the Rules and any rules and principles of law that are applicable. A. Identical or Confusingly Similar
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland and it is clear that the Complainant, since at least 1994, has had rights in the Morocco registered trademark KLONOPIN. However, the holder of the USA trademark KLONOPIN is Hoffmann-La Roche INC. of New Jersey in the USA which the Complainant says is a member of the Roche group of companies. However, nowhere is it stated or clearly implied that F. Hoffmann-La Roche AG of Basel, Switzerland has any license, agency, authority or other power (implied or specific) to make the Complaint on behalf of this USA company. In any event, the Complainant clearly has rights in the trademark KLONOPIN registered in Morocco.
The disputed domain name is made up of the words “buy”, “klonopin” (which is exactly the same spelling as the Complainant’s trademark), and “online”. There is a hyphen between “buy” and the Complainant’s trademark KLONOPIN. It is only “klonopin” that is not a dictionary word, and “klonopin” is distinctive and clearly recognizable within the disputed domain name. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”). The use of the Complainant’s clearly recognizable trademark could confuse Internet users. In the absence of any submission from the Respondent, the Panel therefore decides that the disputed domain name is confusingly similar to the Complainant’s trademark KLONOPIN. B. Rights or Legitimate Interests
The evidence provided indicates that the trademark KLONOPIN is associated with the Complainant’s pharmaceutical product marketed under that name, while there is no evidence of any right or legitimate interest of the Respondent in the disputed domain name which contains the name “Klonopin”, clearly recognizable within the disputed domain name.
The evidence provided by the Complainant indicates that:
(i) the Respondent is not affiliated with the Complainant in any way whatsoever and no license, permission, authorization or consent has ever been granted to the Respondent to use or incorporate the Complainant’s KLONOPIN trademark into the disputed domain name; and
(ii) the Respondent’s name bears no resemblance to the word “klonopin” and there is no evidence, including in the WhoIs record for the disputed domain name, that suggests the Respondent is known by the disputed domain name.
Further, the disputed domain name resolves to a website that directs Internet users to an online pharmacy selling the pharmaceutical product marketed by the Complainant under the name “klonopin”. This suggests that the disputed domain name has some sort of association, sponsorship or endorsement by the Complainant, or that the Respondent has a right to use the KLONOPIN trademark in the disputed domain name. However, the Complainant makes it clear that it has given no license or authorization to the Respondent to use the KLONOPIN trademark, and that its use without the Complainant’s authorization would violate the Complainant’s rights in its KLONOPIN trademark.
At the same time there is no evidence that the Respondent has any right or legitimate interest in the disputed domain name.
In view of the above, and given that the Respondent has not made any submission or otherwise contested the Complainant’s contentions, the Panel finds that the Respondent has no rights or legitimate interest in the disputed domain name. C. Registered and Used in Bad Faith
By directing Internet users to an online pharmacy that is selling Klonopin, the Respondent appears to be using the disputed domain name for commercial gain with the purpose of capitalizing on the marketing and other investment of the Complainant in its trademark KLONOPIN. By using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to an online pharmacy selling Klonopin, by creating a likelihood of confusion with the Complainant’s trademark KLONOPIN, as to the source, sponsorship, affiliation, or endorsement by the Complainant of sales of Klonopin at the online pharmacy to which the disputed domain name resolves. However, the Complainant has never authorized or endorsed any such sales of Klonopin. It also appears that the Respondent has done so for commercial gain since there is no other reasonable explanation for referring Internet users to such an online pharmacy if there was no commercial gain obtained from doing so. In any event, the Respondent has not responded to the Complainant’s assertion that there was commercial gain and the Panel concludes that there was most likely some sort of commercial gain involved. Furthermore, the Respondent also appears to offer for sale products of competitors of the Complainant.
The above described circumstance is evidence of registration and use of the disputed domain name in bad faith in accordance with UDRP paragraph 4(b)(iv). In the absence of any rebuttal of such evidence, the Panel finds that the Respondent has registered and used the disputed domain name 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.
Frank Schoneveld
Sole Panelist
Date: December 28, 2018
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