The Complainants are Roche Therapeutics, Inc. and Hoffman-La Roche, Inc. of Nutley, New Jersey, United States of America (“United States”); Genentech, Inc. of South San Francisco, California, United States; and F. Hoffman-La Roche AG of Bâle, Switzerland, represented by Sheppard, Mullin, Richter & Hampton, United States.
The Respondent is Privacy Hero Inc. of St. Peter, Barbados / IT Company / Kyle Rocheleau, IT Company of Delta, Canada.
The disputed domain names <bonivainjections.com>, <buy-boniva.com>, <buyboniva.com>, <buy‑boniva.info>, <buybonivainjections.com>, <buy-cellcept.info>, <buycellcept.info>, <buy-cellcept.net>, <buycellcept.net>, <buy-herceptin.com>, <buyherceptin.com>, <buyherceptin.info>, <buy-lucentis.com>, <buy-lucentis.info>, <buy-mabthera.com>, <buymabthera.com>, <cellceptonline.com>, <orderherceptin.com> (the “Domain Names”) are registered with Rebel.com Corp. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2016. On May 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 19, 2016, the Registrar transmitted by email to the Center its verification response providing the Respondent’s 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 the Respondent of the Complaint, and the proceedings commenced on May 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2016.
The Center appointed Gregor Vos as the sole panelist in this matter on June 30, 2016. 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.
The Complainants requested the Panel for a consolidation of their complaints against the Respondent pursuant to paragraph 10(e) of the Rules. The Complainants argued that i) the Respondent acted in the same common conduct that affected the Complainants; ii) the Complainants are part of the same corporate entity and therefore have a common legal interest; and iii) it would be equitable and procedurally efficient to permit consolidation.
Indeed, the Panel sees reason to consolidate the complaints against the Respondent. The above arguments of the Complainants meet the requirements for such a consolidation. See paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)..
The Complainant Roche Therapeutics, Inc. (“Roche Therapeutics”) owns the trademark registration for BONIVA, registered on March 8, 2005 at the USPTO under Registration No. 2931724.
The Complainant Hoffman-La Roche, Inc. (“Hoffman-La Roche”), through its predecessors-in-interest, is the assignee of the trademark registration for CELLCEPT, registered on April 11, 1995 at the USPTO under Registration No. 1889130.
The Complainant Genentech, Inc. (“Genentech”) owns the trademark registration for HERCEPTIN, registered on May 12, 1998 at the USPTO under Registration No. 2157198, and the trademark registration for LUCENTIS, registered on November 7, 2006 at the USPTO under Registration No. 3169327.
The Complainant F. Hoffman-La Roche AG (“F. Hoffman-La Roche AG”) owns the trademark registration for MABTHERA, registered on June 24, 1997 with WIPO under Registration No. 675893.
The Respondent registered the following Domain Names:
- <bonivainjections.com>, registered on December 29, 2010. Last updated on May 19,, 2016. Expires on December 29, 2016, at the time of the Decision redirecting to a Canadian online pharmacy at “www.canadianpharmacymeds.com”;
- <buy-boniva.com>, registered on December 29, 2010. Last updated on May 19, 2016. Expires on December 29, 2016, at the time of the Decision redirecting to a Canadian online pharmacy at “www.canadianpharmacymeds.com”;
- <buyboniva.com>, registered on December 29, 2010. Last updated on May 19, 2016. Expires on December 29, 2016, at the time of the Decision redirecting to “ww4.buyboniva.info”, a parked page with pay‑per‑click links;
- <buy-boniva.info>, registered on December 29, 2010. Last updated on May 19, 2016. Expires on December 29, 2016, at the time of the Decision redirecting to “ww1.buy-boniva.info”, a parked page with pay-per-click links;
- <buybonivainjections.com>, registered on December 29, 2010. Last updated on May 19, 2016. Expires on December 29, 2016, at the time of the Decision redirecting to “ww4.buybonivainjections.com”, a parked page with pay-per-click links;
- <buy-cellcept.info>, registered on December 29, 2010. Last updated on May 19, 2016. Expires on December 29, 2016, not active at the time of the Decision;
- <buycellcept.info> registered on December 29, 2010. Last updated on May 19, 2016. Expires on December 29, 2016, not active at the time of the Decision;
- <buy-cellcept.net>, registered on December 29, 2010. Last updated on May 19, 2016. Expires on December 29, 2016, at the time of the Decision redirecting to a Canadian online pharmacy at “www.canadianpharmacymeds.com”;
- <buycellcept.net>, registered on December 28, 2010. Last updated on May 19, 2016. Expires on December 29, 2016, at the time of the Decision redirecting to a Canadian online pharmacy at “www.canadianpharmacymeds.com”;
- <buy-herceptin.com>, registered on December 28, 2010. Last updated on May 19, 2016. Expires on December 28, 2016, not active at the time of the Decision;
- <buyherceptin.com>, registered on December 28, 2010. Last updated on May 19, 2016. Expires on December 28, 2016, not active at the time of the Decision;
- <buyherceptin.info>, registered on December 28, 2010. Last updated on May 19, 2016. Expires on December 28, 2016, not active at the time of the Decision;
- <buy-lucentis.com>, registered on December 29, 2010. Last updated on May 19, 2016. Expires on December 29, 2016, not active at the time of the Decision;
- <buy-lucentis.info>, registered on December 29, 2010. Last updated on May 19, 2016. Expires on December 29, 2016, not active at the time of the Decision;
- <buy-mabthera.com>, registered on December 28, 2010. Last updated on May 19, 2016. Expires on December 28, 2016, not active at the time of the Decision;
- <buymabthera.com>, registered on December 28, 2010. Last updated on May 19, 2016. Expires on December 28, 2016, not active at the time of the Decision;
- <cellceptonline.com>, registered on December 29, 2010. Last updated on May 19, 2016. Expires on December 29, 2016, at the time of the Decision redirecting to a Canadian online pharmacy at “www.canadianpharmacymeds.com”; and
- <orderherceptin.com>, registered on December 28, 2010. Last updated on May 19, 2016. Expires on December 28, 2016, not active at the time of the Decision.
As noted above, the Registrar of all the Domain Names is Rebel.com Corp. All of the Domain Names are registered under the same privacy shield, Privacy Hero, Inc., with the same designated email address.
The Complainants are all members of The Roche Group, a large global research-focused healthcare group. The Complainants work together and are engaged in the research and development and distribution of pharmaceutical and diagnostic products.
BONIVA
The Complainant Roche Therapeutics owns exclusive rights in the trademark BONIVA. BONIVA designates a pharmaceutical preparation indicated for the treatment of bone disease. Advertising and promotion of the prescription drug BONIVA is extensively used and widely circulated in the United States. As a result of such advertising, the BONIVA mark of Roche Therapeutics has become well-known in the United States, with sales reaching approximately USD 850 million.
The domain name <boniva.com> was registered by Roche Therapeutics on July 3, 2000. It is actively used to provide customers of Roche Therapeutics with information about the BONIVA prescription medication.
Roche Therapeutics’s use and registration of the mark BONIVA predate the registration of the Domain Names <buy‑bonvia.com>, <buyboniva.com>, <buy-boniva.info>, <bonivainjections.com>, and <buybonivainjections.com>.
CELLCEPT
The Complainant Hoffman-La Roche owns exclusive rights in the trademark CELLCEPT. CELLCEPT designates a pharmaceutical preparation, in particular an immunosuppressive agent that can prevent liver, kidney and heart rejection after a transplant. Advertising and promotion of the prescription drug CELLCEPT is extensively used and widely circulated in the United States. As a result of such advertising, the CELLCEPT mark of Hoffman-La Roche has become well-known in the United States, with sales exceeding millions of dollars in the United States.
The domain name <cellcept.com> was registered by F. Hoffman-La Roche AG on June 5, 1997. It is actively used to provide customers of Hoffman-La Roche with information about the CELLCEPT prescription medication.
Hoffman-La Roche’s use and registration of the mark CELLCEPT predate the registration of the Domain Names <buycellcept.net>, <cellceptonline.com>, <buy-cellcept.net>, <buycellcept.info>, and <buy-cellcept.info>.
HERCEPTIN
The Complainant Genentech owns exclusive rights in the trademark HERCEPTIN. HERCEPTIN designates a pharmaceutical preparation for the treatment of cancer. HERCEPTIN has long been the dominant breast cancer drug on the market and is on the World Health Organization’s List of Essential Medicines, the most important medications needed in a basic health system. The HERCEPTIN mark has become well-known, with global sales exceeding USD 5 billion.
The domain name <herceptin.com> was registered by Genentech on March 20, 1997. It is actively used to provide customers of Genentech with information about the HERCEPTIN prescription medication.
Genentech’s use and registration of the mark HERCEPTIN predate the registration of the Domain Names <buyherceptin.com>, <buy-herceptin.com>, <buyherceptin.info>, and <orderherceptin.com>.
LUCENTIS
The Complainant Genentech owns exclusive rights in the trademark LUCENTIS. LUCENTIS designates a pharmaceutical preparation for the treatment of angiogenesis diseases and disorders and ocular diseases and disorders. It specifically targets common forms of age-related vision loss. Advertising and promotion of the prescription drug LUCENTIS is extensively used and widely circulated in the United States. The LUCENTIS mark has become well-known, with global sales exceeding USD 4 billion per year in recent years.
The domain name <lucentis.com> was registered by Genentech on April 25, 2003. It is actively used to provide customers of Genentech with information about the LUCENTIS prescription medication.
Genentech’s use and registration of the mark LUCENTIS predate the registration of the Domain Names <buy-lucentis.info> and <buy-lucentis.com>.
MABTHERA
The Complainant F. Hoffman-La Roche owns exclusive rights in the trademark MABTHERA. MABTHERA designates a pharmaceutical preparation for the treatment of cancer. MABTHERA is on the World Health Organization’s List of Essential Medicines, the most important medications needed in a basic health system. Worldwide sales of MABTHERA have exceeded seven and a half billion dollars.
The domain name <mabthera.com> was registered by F. Hoffman-La Roche on July 7, 2000. It is actively used to provide customers of F. Hoffman-La Roche with information about the MABTHERA prescription medicine.
F. Hoffman-La Roche’s use and registration of the mark MABTHERA predate the registration of the Domain Names <buy-mabthera.com> and <buymabthera.com>.
The Complainants state that the Domain Names incorporate its trademarks in its entirety. The Complainants add that the addition of generic terms to a domain name has little effect on a determination of confusing similarity between the domain name and the mark. Here, the generic terms are “buy”, “online”, “order” and “injections”. The Complainants conclude that the Domain Names are confusingly similar to the trademarks of the Complainants.
The Complainants contend that the Respondent has not received a license to use the trademarks of the Complainants or in any other way has been permitted to register any domain names incorporating these trademarks. The Complainants state that the Respondent is not an authorized reseller, nor commonly known by the names or marks used in the Domain Names.
With regard to those of the Domain Names that redirect to “www.canadianpharmacymeds.com” (only Domain Names including BONIVA and CELLCEPT at the time of this Decision), the Complainants claim that the Respondent is making non-authorized commercial use of the BONIVA and CELLCEPT trademarks as the Domain Names redirect Internet users to an online pharmacy which alleges it sells the BONIVA and CELLCEPT prescription medication at low prices.
With regard to those of the Domain Names that redirect to a parked page with pay-per-click links (only Domain Names including BONIVA at the time of this Decision), the Complainants argue that this does not generate rights or legitimate interests.
With regard to those of the Domain Names that are not active (only Domain Names including CELLCEPT, HERCEPTIN, LUCENTIS and MABTHERA at the time of this Decision), the Complainants repeat that the Respondent does not have any legitimate interest in the Domain Names as the Respondent is not authorized to sell the Complainants’ products. The Complainants contend that these are only created to give the impression of an association with the Complainants’ products.
The Complainants conclude that the Respondent therefore has no rights or legitimate interests with respect to the Domain Names.
The Complainants contend that the Respondent registered and uses the Domain Names in bad faith. The Complainants contend that the Respondent had a duty to check on the availability of the Complainants’ trademarks and failure to do so is evidence of registration in bad faith. The Respondent must have had knowledge of the Complainants’ well-known products/trademarks and intended to trade off of them.
The Complainants find proof of use in bad faith in the Domain Names redirecting to an online pharmacy, therefore demonstrating awareness of the Complainants’ pharmaceutical products associated with the trademarks.
With regard to the Domain Names that redirect to a parked page with pay-per-click links, the Complainants also state this evidences use in bad faith as this demonstrates the Respondent’s hope that this will lead to an increased number of Internet users being drawn to the respective parking pages.
With regard to the Domain Names that are not currently active, the Complainants state that this passive holding by the Respondent is also evidence of use in bad faith because 1) the Respondent has already used similar domains incorporating the Complainants’ trademarks to direct to an online pharmacy in bad faith; 2) the Complainants’ trademarks have a strong reputation and are widely known; 3) the Respondent has taken active steps to hide its identity through a privacy shield; and 4) the Respondent has a pattern of conduct of squatting on domain names incorporating the Complainants’ trademarks. Given these circumstances, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Names by the Respondent that would not be illegitimate.
The Complainants conclude that the Domain Names were registered and are also being used in bad faith.
The Respondent did not reply to the Complainants’ contentions.
The Complainants must provide proof to meet the requirements under paragraph 4(a) of the Policy for each of the contested Domain Names. These requirements are:
(i) that the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights,
(ii) that the Respondent has no rights or legitimate interests with respect to the Domain Names, and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Domain Names are similar to one another as they are all composed of one of the Complainants’ trademarks and one or more generic terms. However, not all of the Domain Names are used in the same way. Therefore the requirements under paragraph 4(a)(i) and 4(a)(ii) of the UDRP for the Domain Names will be jointly discussed for all Domain Names, and the requirement under paragraph 4(a)(iii) of the UDRP will be discussed according to the use that is made of each of the respective Domain Names.
The Respondent has failed to come forward with allegations or evidence. As a result, the Panel is directed to decide this administrative proceeding on the basis of the basis of the Complaint, and certain factual conclusions may be drawn by the Panel on the basis of the Complainants’ undisputed representations.
The Complainants have exhibited that they are the owners of United States trademark registrations for BONIVA, CELLCEPT, HERCEPTIN and LUCENTIS and, inter alia, an international trademark registration for MABTHERA. The Complainants use those marks in commerce for pharmaceutical preparations. This is sufficient for the Panel to find that the Complainants indeed have trademark rights in BONIVA, CELLCEPT, HERCEPTIN, LUCENTIS and MABTHERA (F. Hoffmann-La Roche AG v. Relish Enterprises, WIPO Case No. D2007-1629).
The next step is to see whether the Domain Names and the trademarks are identical or confusingly similar. In the current proceedings, the Complainants’ trademarks are incorporated in their entirety in each of the Domain Names in combination with one or more of the following generic terms: “buy”, “online”, “order” and “injections”. It is the consensus panel view that a trademark would need to be recognizable within the domain name, with the addition of merely generic or descriptive wording to a trademark in a domain name being insufficient in itself to avoid a finding of confusing similarity. See paragraph 1.2 of the WIPO Overview 2.0.
All of the Domain Names include a recognizable trademark of the Complainants. This will create confusion as these trademarks are highly distinctive and have no common colloquial use. Thus any reference to the trademarks is likely to create confusion with the Complainants’ products (Lilly ICOS LLC v. Jay Kim, WIPO Case No. D2004-0891).
With regard to the terms “buy”, “online” and “order”, it has been generally established that such generic terms are insufficient to prevent a finding of confusing similarity (for recent examples, see KidKraft, L.P. v. Whoisguard Protected/Whoisguard Inc. / Hiram Wilson, WIPO Case No. D2015-1227; WildWorks, Inc. v. Ong Dai Vu Hao,WIPOCase No. D2016-0946; and F. Hoffmann-La Roche AG v. c/o WHOIStrustee.com Limited, Registrant of ordervalium.biz / Jatin Jani, Expired Domains LLC, WIPO Case No. D2015-1379). Moreover, the terms “buy” and “order” suggest that these Domain Names belong to the Complainants, or that the Respondent is acting on behalf or with the permission of the Complainants, while it has not been disputed that this is not the case (for a recent example, see Hitachi High Technologies America, Inc. v. Kevin Chen, WIPO Case No. D2016-1003).
With regard to the term “injections”, it has been found that a generic term that describes the Complainants’ products is considered sufficient to find the domain name confusingly similar to the Complainant’s trademark (Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001‑0110).
In conclusion, the Panel finds the Domain Names to be confusingly similar and holds the first requirement to be satisfied.
As it is generally recognized that it can be difficult for complainants to prove a negative, complainants are required to make out a prima facie case that the respondent lacks rights or legitimate interests. If such a prima facie case is made, the burden of proof shifts to the respondent. If the respondent fails to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name, the complainant will be deemed to have satisfied paragraph 4(a)(ii) of the UDRP (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Complainants have made a prima facie case showing that the Respondent does not have rights or legitimate interests in the Domain Names. This finding is based on the following, non-disputed circumstances brought forward by the Complainants:
- The Respondent has not received a license to use the Complainants’ trademarks, or to register any domain names incorporating them, nor is the Respondent an authorized reseller of the Complainants’ products;
- there is no indication in the file that Respondent is known under the Domain Names;
- the Respondent is making non-authorized commercial use of the trademarks as the Domain Names redirect Internet users to an online-pharmacy which alleges it is selling Complainants’ products (see Hoffman-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).
- the Complainants’ trademarks incorporated in the Domain Names do not consist of dictionary or common words or phrases, and the Domain Names unfairly capitalize upon or otherwise take advantage of the Complainants’ marks by redirecting Internet users to a parked page with pay-per-click links. This does not generate rights or legitimate interests (Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364).
Given these circumstances, the Panel finds that the Complainants have made its prima facie case. The burden of proof therefore shifts to the Respondent. As the Respondent failed to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Domain Names, the Panel finds the Complainants to have satisfied paragraph 4(a)(ii) of the UDRP.
The requirement under paragraph 4(a)(iii) of the UDRP shall be discussed according to the use that is made of each of the respective Domain Names. As follows from the above, the Domain Names can be placed in three groups.
The first group concerns the Domain Names that, at the time of the Decision, redirect to a Canadian online pharmacy at “www.canadianpharmacymeds.com”. This group contains the Domain Names <bonivainjections.com>, <buy-boniva.com>, <buy-cellcept.net>, <buycellcept.net>, and <cellceptonline.com>.
Regarding this portion of the Domain Names, the Panel holds that the Respondent must have been aware of the Complainant’s trademark rights at the time of registration of the Domain Names. Directing this portion of the Domain Names to an online pharmacy implies an awareness of the Complainants’ pharmaceutical products associated with the trademarks. In addition, the Complainants’ trademarks are well-known, predate this portion of the Domain Names, and have been used prior to Respondent’s registration of the Domain Names (including in domain names that resolve to the Complainant’s websites: <boniva.com> and <cellcept.com>). Regarding this portion of the Domain Names, the Panel finds that these are registered in bad faith. The Panel furthermore finds that this portion of the Domain Names is used in bad faith as well. This is exhibited by the Respondent intentionally attempting to attract Internet users to an online pharmacy website for commercial purposes, by creating a likelihood of confusion with the Complainants’ trademarks.
The second group concerns the Domain Names that, at the time of the Decision, redirect to a parked page with pay-per-click links. This group contains the Domain Names <buyboniva.com>, <buy-boniva.info> and <buybonivainjections.com>.
With regard to this portion of the Domain Names, the Panel again finds registration in bad faith as the Complainants’ trademarks are well-known and predate this portion of the Domain Names. Also, the Complainants’ trademarks have been used prior to the Respondent’s registration of the Domain Names (including in a domain name that resolves to the Complainant’s website: <boniva.com>). The Panel also finds use in bad faith by the Respondent, as the Respondent is using the Complainant’s trademark in this portion of the Domain Names to confuse Internet users and draw them to a parking page. In doing so, the Respondent unfairly capitalizes upon or otherwise takes advantage of the Complainants’ marks in the hope that this will lead to an increased number of Internet users being drawn to the parking pages to which the Domain Names resolve.
The third and final group concerns the Domain Names that, at the time of the Decision, are inactive. This group contains the Domain Names <buy-cellcept.info>, <buycellcept.info>, <buy-herceptin.com>, <buyherceptin.com>, <buyherceptin.info>, <buy-lucentis.com>, <buy-lucentis.info>, <buy-mabthera.com>, <buymabthera.com>, and <orderherceptin.com>.
With regard to this portion of the Domain Names, the Panel finds that an apparent lack of active use does not prevent a finding of bad faith. The undisputed circumstances outlined by the Complainants have provided support for finding registration and use in bad faith, and it is not possible to conceive of any plausible actual or contemplated active use of the Domain Names by the Respondent that would not be illegitimate (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
For these reasons, the Panel holds that the Domain Names have been registered and used in bad faith. The Complainants have therefore met the requirement of paragraph 4(a)(iii) of the UDRP.
For the reasons mentioned above, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names are transferred to each of the respective Complainants, according the rights they respectively hold, as follows:
- the Domain Names, <bonivainjections.com>, <buy-boniva.com>, <buyboniva.com>, <buy-boniva.info> and <buybonivainjections.com>, be transferred to Complainant Roche Therapeutics;
- the Domain Names <buy-cellcept.info>, <buycellcept.info>, <buy-cellcept.net> and <buycellcept.net>, be transferred to Complainant Hoffman-La Roche;
- the Domain Names, <buy-herceptin.com>, <buyherceptin.com>, <buyherceptin.info>, <buy-lucentis.com> and <buy-lucentis.info>, be transferred to Complainant Genentech; and
- the Domain Names, <buy-mabthera.com>, <buymabthera.com>, <cellceptonline.com>, and <orderherceptin.com>, be transferred to Complainant F. Hoffman-La Roche.
Gregor Vos
Sole Panelist
Date: July 27, 2016