Complainant is F. Hoffmann-La Roche AG, Switzerland, internally represented.
Respondent is Registration Private, Domains By Proxy, LLC, United States of America / 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 18, 2021. On March 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 19, 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 22, 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 25, 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 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 26, 2021. The Center appointed Clive L. Elliott Q.C., as the sole panelist in this matter on May 5, 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 Registrations No. 340483 and 346223, registered on November 14, 1967 and June 19,, 1968 respectively, and International Registration No. 832631 (Hexagon Logo mark) including designation of the European Union, registered on April 8, 2004. Complainant owns and uses the domain name According to the publicly available WhoIs, the Domain Name was registered on November 27, 2020. The Domain Name currently directs to a webpage displaying sponsored links resolving to other websites. 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 hyphens and of the generic terms “pharmaceutical” and “company” do 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 November 2020. Further, Complainant contends 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 opportunistic 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. Accordingly, it submits that Respondent seeks to attract Internet users to its website for commercial gain. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Complainant has established that it is a world-leading healthcare and pharmaceutical company. It operates its business globally in at least 100 countries and has done so for many years. Complainant’s Mark is used and registered extensively. Given this, Complainant has established its rights in Complainant’s Mark. The Domain Name wholly incorporates Complainant’s Mark and includes the common dictionary words “pharmaceutical” and “company”, along with hyphens joining them together. Complainant’s Mark is clearly recognizable in the Domain Name. The addition of the dictionary words, particularly words 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 Panel finds that 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 doing so Respondent is using Complainant’s Mark to route unsuspecting Internet users, who are seeking Complainant or its products. Further, Complainant asserts that such conduct does not represent 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, the Panel infers 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. Given Respondent has not challenged or disputed Complainant’s allegations, the Panel is satisfied 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 words “pharmaceutical” and “company” with the trademark ROCHE permits the inference to be drawn that Respondent either knew or must have known of Complainant’s standing and reputation. Under these circumstances, the Panel finds that the Domain Name was registered and is being used 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.
Sole Panelist
Date: May 19, 2021
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