Complainant is F. Hoffmann-La Roche AG, Switzerland, internally represented.
Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / James Onuoha Doe, Gambia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2021. On March 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 12, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 15, 2021 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on March 18, 2021. 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 Respondent of the Complaint, and the proceedings commenced on March 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 14, 2021. The Center appointed Clive L. Elliott Q.C., as the sole panelist in this matter on April 21, 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 Complainant, together with its affiliated companies, is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics. It is based in Switzerland and operates globally in more than 100 countries. The trademark ROCHE serves as a house-mark of Complainant and is protected as a registered trademark in a multitude of countries worldwide (“Complainant’s Mark”), including International Registration No. 340843 registered on November 14, 1967. Complainant owns and uses the domain name According to the publicly available WhoIs, the Domain Name was registered on October 12, 2020. On March 1, 2021 Complainant sent a cease and desist letter to Respondent, through the Registrar, to which Respondent did not reply. 5. Parties’ Contentions A. Complainant Complainant states that the Domain Name is confusingly similar to Complainant’s Mark as it incorporates Complainant’s Mark in its entirety. Complainant asserts that the addition of a hyphen, and the term “pharmaceutical” does not sufficiently distinguish the Domain Name from Complainant, but rather emphasizes the likelihood of confusion in so far as it reflects Complainant’s core business. Complainant considers that as a result it is possible for customers to believe that the Domain Name is related to Complainant, who is also commonly known as “Roche”. Complainant asserts that whilst it is also active in the field of diagnostics, the larger and more famous division is the pharmaceutical one. Complainant claims that it is amongst the major pharmaceutical and diagnostic enterprises in the world with Complainant’s Mark being very well-known and as a result its notoriety increases the likelihood of confusion. Complainant states that it has exclusive and prior rights in the trademark ROCHE, which rights precede Respondent’s registration of the Domain Name in October 2020. And further, that Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use Complainant’s Mark. Complainant maintains that Respondent is using Complainant’s Mark to route unsuspecting Internet users, who are seeking Complainant or its products, to a website containing a series of links, for referral fees, which activity does not represent a legitimate noncommercial or fair use. Complainant contends that Respondent has registered and is using the Domain Name in bad faith with the purpose of capitalizing on the reputation of Complainant’s Mark and creating the impression of an association with Complainant’s Mark. Finally, Complainant asserts that Respondent did not reply to Complainant’s cease and desist letter and hence has not availed itself of the opportunity to present any case of legitimate interests it might have. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Complainant, either itself or through its affiliated companies, is a world-leading healthcare and pharmaceutical company. While based in Switzerland, Complainant operates its business globally in at least 100 countries. The trademark ROCHE, referred to above as Complainant’s Mark, is both used and registered extensively. Accordingly, Complainant has established its rights in Complainant’s Mark. The Domain Name wholly incorporates Complainant’s Mark and includes the dictionary word “pharmaceutical”, along with a hyphen joining the two parts together. Complainant’s Mark is clearly recognizable in the Domain Name. The addition of a dictionary word, particularly one perfectly apt for use in relation to healthcare and pharmaceutical products and services, does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The Domain Name is confusingly similar to Complainant’s Mark. Accordingly, the first ground under the Policy is made out. B. Rights or Legitimate Interests Complainant asserts that the Domain Name currently redirects to a website containing a series of links and is designed to attract referral fees. Complainant asserts that by such means Respondent is using Complainant’s Mark to route unsuspecting Internet users, who are seeking Complainant or its products and that this is not legitimate or fair use. Given Complainant’s long-standing rights in Complainant’s Mark and the manner in which Respondent appears to be using the Domain Name, suggests that Respondent is benefiting, either directly or indirectly, from click through monetization/sponsored links. Complainant has put forward a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. In the absence of any attempt to challenge or refute these allegations, the Panel concludes that the Domain Name was not registered and has not been used for any legitimate or fair purpose. Accordingly, the second ground under the Policy is made out. C. Registered and Used in Bad Faith Complainant contends that Respondent has registered the Domain Name in bad faith. Given Complainant’s significant worldwide reputation and the fact that Respondent has combined the word “pharmaceutical” with the trademark ROCHE permits the inference to be drawn that Respondent either knew or must have known of Complainant’s standing and reputation. Accordingly, the Panel finds that the Domain Name was registered for the purpose of taking advantage of Complainant’s reputation and Complainant’s Mark, by attracting Internet users to a website to obtain profits via sponsored links or similar. Complainant has therefore clearly established the third ground under 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 Domain Name Clive L. Elliott Q.C.
The Domain Name currently directs to a webpage displaying sponsored links resolving to other websites.
Sole Panelist
Date: May 4, 2021
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