Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
Respondent is Mujahid Mahmood, Maxim Web Designing of Punjab, Pakistan.
The disputed domain name <rochemed.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 20, 2015. On August 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2015, 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 27, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2015.
On September 3, 2015, Complainant forwarded an email thread to the Center between Complainant and "Shahzad" at an email address associated with the disputed domain name providing instructions to Maxim Web Designing to immediately disable the website and transfer all rights to the disputed domain name to Complainant. At the request of Complainant, the proceeding was suspended on September 3, 2015. Although Respondent Maxim Web Designing confirmed that it has disabled the website at the request of its client, it failed to return a signed settlement form as required under Rules, paragraph 17. Accordingly, the proceeding was reinstituted on September 28, 2015. The due date for Response was October 11, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 12, 2015.
The Center appointed David Perkins as the sole panelist in this matter on October 22, 2015. 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.A.1 Complainant, together with its affiliated companies, is one of the world's leading research focussed healthcare groups in the fields of pharmaceuticals and diagnostics. It operates in more than 100 countries worldwide.
4.A.2 Complainant's ROCHE trade mark.
Complainant is the proprietor of the trade mark ROCHE. That mark is used as its house-mark and is registered worldwide. The following examples of those registrations are exhibited to the Complaint.
|
Territory |
Registration No. |
Mark |
Classes of goods/services |
Dates of Application/ Registration |
|
International Registration |
R340483 |
ROCHE |
10 |
Filed August 15, 1967 Registered November 14, 1967 |
|
International Registration |
R346223 |
ROCHE |
1-3; 5; 16; and |
Filed January 19, 1968 Registered June 19, 1968 |
|
International Registration |
R832631 |
ROCHE and hexagon logo |
1; 3; 5; 9-10; 16; 35; 37-38; 41-42; and 44 |
Registered April 8, 2004 |
|
Community Trade Mark |
000223107 |
ROCHE and hexagon logo |
1-2; 3; 5; 9-10; 16; 31; 38; and 41-42 |
Filed April 12, 1996 Registered October 1, 1999 |
|
Pakistan |
191907 |
ROCHE and Hexagon logo |
10 |
Filed February 13, 2004 Registered June 2, 2007 |
IR 340483 is registered in some 25 countries, IR346233 is registered in more than 50 countries and IR832631 is registered in more than 75 countries.
4.A.3 Complainant's ROCHE domain names.
Complainant is the registrant of <roche.com> and its Pakistani subsidiary is the registrant of <roche.com.pk>. Examples of the websites to which those domain names resolve are exhibited to the Complaint.
4.B.1 In the absence of a response, what is known of Respondent is derived from the Complaint and its Annexes and subsequent party communication as provided by Complainant. The disputed domain name was registered on August 9, 2015 by Respondent, whose address is in Pakistan. It appears that Respondent is the web design provider for Rochemed Industries.
4.B.2 That disputed domain name resolves to a website of Rochemed Industries, which claims to be
"Pakistan's most reputed manufacturer and exporter of Surgical, Dental, Manicure, Veterinary and Ophthalmic Instruments."
The website, an example of which is exhibited to the Complaint, says that the business started as a small enterprise in 2001 and was incorporated in 2003. Its surgical, dental, beauty and ophthalmic instruments are listed for sale.
4.B.3 Respondent did not respond to Complainant's cease and desist email dated August 12, 2015. That email is exhibited to the Complaint.
5.A.1 Identical or Confusingly Similar
5.A.1.1 On the basis of its trade mark registration summarised in paragraph 4.A.2 above, Complainant asserts rights in the ROCHE trade mark.
5.A.1.2 Complainant asserts that the disputed domain name is confusingly similar to its ROCHE trade mark since it incorporates that mark in its entirety. Further, the generic suffix "med" is a well-recognised short form reference to "medical" or "medicine". Complainant says that not only does that suffix not avoid confusingly similarity, it emphasises the likelihood of confusion as it reflects Complainant's healthcare business.
5.A.2 Rights or Legitimate Interests
5.A.2.1 First, Complainant says that it has not licensed or otherwise authorised use by Respondent of the ROCHE trade mark.
5.A.2.2 Second, Respondent cannot – Complainant says – demonstrate use of the disputed domain name in connection with a bona fide offering or goods or services: paragraph 4(c)(i) of the Policy. This is because the disputed domain name is confusingly similar to Complainant's ROCHE trade mark and is being used to direct Internet users to the commercial Rochemed Industries' website which offers healthcare products related to or similar to those of Complainant. Complainant cites in support the decision in F. Hoffmann-LaRoche AG v Clear Foto, WIPO Case No. D2009-0501.
5.A.2.3 Third, for the same reasons Respondent cannot demonstrate rights to or legitimate interests in the disputed domain name under paragraph 4(c)(iii) of the Policy.
5.A.2.4 Finally, by its failure to reply to Complainant's cease and desist letter, Respondent has not taken the opportunity to seek to establish such rights or legitimate interests.
5.A.3 Registered and Used in Bad Faith
5.A.3.1 Complainant's case is that the circumstances of the use to which the disputed domain name is being put – which are summarised in paragraph 4.B.2 above – demonstrate bad faith under paragraph 4(b)(iv) of the Policy.
5.A.3.2 As to registration, Respondent could not have been unaware of Complainant's very well known ROCHE trade mark. In that respect, Complainant again cites the decision in F. Hoffmann-La Roche AG v. Clear Foto, supra where the panelist held that the ROCHE trade mark has acquired worldwide reputation, identifying Complainant's products and services.
5.A.3.3 As to bad faith use, Complainant relies on use of the disputed domain name to host the Rochemed Industries' website which offers complementary products to those which Complainant offers. That, Complainant says, is equivalent to offering competing goods, citing the decision in Bartercard Ltd. & Bartercard International Pty Ltd v Ashton-Hall Computer Services, WIPO Case No. D2000-0177. Complainant points out that a simple Internet search would have revealed the wide-ranging presence of its ROCHE trade mark and domain names. In sum, Complainant's case is that Respondent clearly knew of Complainant's well established reputation in its ROCHE trade mark and has used the disputed domain name intentionally to trade off that reputation and confuse Internet users.
5.A.3.4 As additional evidence of Respondent's bad faith use of the disputed domain name, Complainant points to the fact that the Rochemed Industries' website is targeted at the same distribution channels as used by Complainant, namely hospitals and doctors' offices.
As indicated under the Procedural History, it appears that Respondent's client using the disputed domain name consented to transfer the disputed domain name to Complainant and has instructed Respondent to disable the website immediately and transfer the disputed domain name. The Panel notes that the website at the disputed domain name has been disabled. For the sake of completeness, the Panel reaches the findings below.
6.1 The Policy paragraph 4(a) provides that Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
6.2 The Policy, paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate Respondent's rights or legitimate interests in the disputed domain name in issue.
6.3 The Policy, paragraph 4(b) sets out circumstances which, again 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.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
6.5 Complainant has amply demonstrated rights in the ROCHE trade mark. Examples of those rights are set out in paragraph 4.A.2 above. It is a very well-known mark in the healthcare industry.
6.6 The disputed domain name incorporates Complainant's ROCHE trade mark in its entirety. Complainant's case that the suffix "med" does not avoid a finding of confusing similarity with that mark is well made out.
6.7 Accordingly, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy.
6.8 There is nothing in the evidence before the Panel to indicate that Respondent could bring himself within any of the circumstances set out in paragraph 4(c) of the Policy as establishing rights to or legitimate interests in the disputed domain name. Complainant's case summarised in paragraph 5.A.2 above is well made out. Not only is the disputed domain name confusingly similar to Complainant's ROCHE trade mark, manifestly the use to which that domain name is being put is neither a bona fide nor fair use.
6.9 Accordingly, the Complaint also satisfies paragraph 4(a)(ii) of the Policy.
6.10 Complainant's case summarised in paragraph 5.A.3 above is also well made out and demonstrates bad faith registration and use under paragraph 4(b)(iv) of the Policy.
6.11 Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(iii) of the Policy.
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 <rochemed.com> be transferred to the Complainant.
David Perkins
Sole Panelist
Date: November 5, 2015