WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. Alejandro Gonzalez, Offshore Racks Case No. D2021-0297 1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Switzerland, represented internally.
The Respondent is Alejandro Gonzalez, Offshore Racks, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2021. On February 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 2, 2021, 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. On February 12, 2021, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. On February 12, 2021, 2021, the Complainant reconfirmed its request that English be the language of the proceedings referring to provided respective arguments in support of its request. The Respondent did not provide any comments regarding the language of the Proceedings. 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 February 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2021. The Center appointed Taras Kyslyy as the sole panelist in this matter on March 17, 2021. 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 The Complainant is one of the leading pharmaceutical companies having global operations in more than 100 countries. The Complainant owns numerous ROCHE trademark registrations throughout the world, including, for instance International Registration No. 340483, registered on November 14, 1967. The Complainant owns and uses The disputed domain name was registered on September 10, 2020 and resolves to an online pharmacy website in English. The Complainant addressed the Respondent with a cease and desist letter without further reaction by the Respondent. 5. Parties’ Contentions A. Complainant The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety. The addition of the generic term “pharma” does not sufficiently distinguish the disputed domain name from the Complainant’s trademark. The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has rights in its trademark preceding registration of the disputed domain name. The Respondent has no connection or affiliation with the Complainant. The Complainant never licensed or authorized use of its trademark by the Respondent. The disputed domain name is being used to direct consumers to an on-line pharmacy. The Respondent ignored cease and desist letter of the Complainant. The Respondent is using the disputed domain name to capitalize on the reputation of the Complainant’s trademark. The disputed domain name was registered and is being used in bad faith. The Respondent was aware of the Complainant’s trademark while registering the disputed domain name and intentionally sought to confuse the Internet users. The disputed domain name was registered to create an impression of an association with the Complainant’s trademark. The Respondent has intentionally attempted (for commercial purpose) to attract Internet users to its website, by creating a likelihood of confusion with the Complainant’s well-known trademark as to the source, affiliation and endorsement of the Respondent’s website or of the pharmaceutical products or services posted on or linked to the Respondent’s website. The Respondent is using the disputed domain name as a forwarding address to a for-profit on-line pharmacy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of Proceedings The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated. However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334). In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties. According to section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) previous panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement. The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Respondent must be familiar with the English language since (i) the Registration Agreement is also available in English, (ii) the Respondent never commented on the cease and desist letter sent by the Complainant in English, (iii) the disputed domain name resolves to a website with entire content in English, (iv) English language is commonly known as a connecting language also used in Russian Federation. The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference, but did not do so. The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian. Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English. B. Identical or Confusingly Similar According to section 1.11.1 of the “WIPO Overview 3.0 the applicable generic Top-Level-Domain (“gTLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards gTLD “.com” for the purposes of the confusing similarity test. According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that in the present case the disputed domain name incorporates the entirety of the Complainant’s trademark. According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel finds that in the present case addition of the dictionary word “pharma” does not prevent confusing similarity. Considering the above the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests The Panel finds that the Complainant has rights in its registered trademark. The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name. The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642). The Complainant did not license or otherwise agree for use of its prior registered trademark by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875). The Respondent’s use of the confusingly similar disputed domain name on a website offering for sale overlapping products and services is neither a bona fide offering of goods or services, nor a legitimate non-commercial or fair use pursuant to Policy (see, e.g., Option One Mortgage Corporation v. Option One Lending,WIPO Case No. D2004-1052). Noting the high risk of implied affiliation between the disputed domain name and the confusingly similar well-known trademark of the Complainant, the Panel finds that there is no plausible fair use to which the disputed domain name could be put that would not have the effect of being somehow connected to the Complainant (see, e.g., Instagram, LLC v. Super Privacy Service LTD c/o Dynadot / Zayed,WIPO Case No. D2019-2897). Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith At the time of the registration of the disputed domain name the Respondent knew, or at least should have known about the existence of the Complainant’s registered and known trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113). According to section 3.1.4 of the WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in Switzerland and internationally. Thus, the Panel finds that the disputed domain name confusingly similar to the Complainant’s trademark was registered in bad faith. According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location. The Panel finds this applies in the present case confirming the disputed domain name is being used in bad faith. Moreover, the Respondent failed to respond to the Complainant’s cease and desist letter, and did not provide any good reason to justify this, which confirms the bad faith (see, e.g., COMPAGNIE GENERALE DES ETABLISSEMENTS MICHELIN v. Vaclav Novotny,WIPO Case No. D2009-102). Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case 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 name Taras Kyslyy
Sole Panelist
Date: March 18, 2021
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