Complainant is F. Hoffmann-La Roche AG, Switzerland, internally represented.
Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2019. On August 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2019, 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 August 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 10, 2019.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on September 24, 2019. 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
Complainant F. Hoffmann-La Roche AG is a research-focused healthcare group in the fields of pharmaceuticals and diagnostics, with global operations in more than 100 countries. It owns the WAYAKTA trademark, used in connection with a pharmaceutical oncology preparation that has yet to be released to the public. In particular, Complainant owns Swiss registration number 731265 (registered on May 17, 2019) and International Registration number 1477297 (registered on May 17, 2019) for the WAYAKTA mark. Complainant also has a pending application in Canada for the WAYAKTA mark, filed on May 15, 2019.
The disputed domain name was registered on May 15, 2019. The disputed domain name previously directed to a webpage offering the disputed domain name for sale at a listed price of USD 990, and later to a webpage simply offering the disputed domain name for sale with no specified price. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established exclusive and prior rights to the WAYAKTA mark and that no license, permission, authorization or consent, express or implied, was given to Respondent to use the mark. It points out that the disputed domain name is identical to the WAYAKTA mark and that it was registered in bad faith since at the time of the disputed domain name’s registration, Respondent seems to have had knowledge of Complainant’s mark, which was registered earlier that day. According to Complainant, Respondent’s business model consists of registering domain names of registered trademarks in order to offer them for sale at an exceedingly high price. There is no reason to believe, according to the Complaint, that Respondent had no knowledge of Complainant’s mark or that Respondent had any right or interest in the disputed domain name apart from selling it for a substantial profit. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Furthermore, Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, even though Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar to a Trademark or Service Mark in Which Complainant has Rights
Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Here, Complainant has provided evidence that it has rights in the WAYAKTA mark, through its Swiss registration and International Registration.
With Complainant’s rights in the WAYAKTA mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) “.com”) is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7.
Here, the disputed domain name is identical to Complainant’s WAYAKTA mark, disregarding the gTLD “.com”. B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, supra. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the WAYAKTA mark and in showing that the disputed domain name is identical or confusingly similar to this trademark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use 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 it has acquired no trade mark 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 consumers or to tarnish the trade mark or service mark at issue.
Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has presented evidence showing that the disputed domain name has no other function or purpose apart from Respondent’s attempt to resell the disputed domain name for a profit. Respondent is not using the disputed domain name in connection with a bone fide offering of goods or services, nor any legitimate noncommercial or fair use. Complainant has asserted that Respondent has no authorization to use the WAYAKTA mark, and Respondent is not commonly known by this name. Respondent has failed to rebut Complainant’s allegations and evidence, and therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
Generally speaking, panels have found that the mere practice of registering a domain name for subsequent sale (even for profit) would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to a trademark owner. The complainant should point to additional circumstances that demonstrate the existence of bad faith in the registration of the domain name. WIPO Overview 3.0, section 3.1.1. Among the circumstances that can indicate bad faith are whether the trademark is wholly incorporated in the domain name, the distinctiveness of the mark, a respondent’s failure to present a credible evidence-backed rationale for registering the domain name, among others. Id.
Here, Complainant’s trademark is wholly contained in the disputed domain name and there is no evidence of any rationale behind the registration of the disputed domain name apart from Respondent’s learning of Complainant’s newly-registered trademark and its intent to capitalize on same by acquiring the disputed domain name before Complainant and then to resell the disputed domain name back to Complainant or a third party for a profit. See, e.g., Royal Bank of Canada v. N,WIPO Case No. D2004-0642. While Complainant did not offer any direct evidence that Respondent has repeatedly engaged in this type of conduct or had actual knowledge of Complainant’s rights, the circumstantial evidence clearly points to Respondent’s opportunistic bad faith in light of Complainant’s recently trademark registrations and application for the WAYAKTA mark.
Accordingly, the Panel finds that Complainant succeeds under this element 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 Complainant.
Brian J. Winterfeldt
Sole Panelist
Date: October 8, 2019
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