ARBITRATION
AND
MEDIATION CENTER
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG and Genentech, Inc. v. Privacy Hero Inc /
“F. Hoffmann-La Roche AG”
Case No. D2015-1497
1. The Parties
The Complainants are F. Hoffmann-La Roche AG of Basel, Switzerland and Genentech, Inc. of South
San Francisco, California, United States of America (“United States”), internally represented.
The Respondent is Privacy Hero Inc of St. Peter, Barbados / “F. Hoffmann-La Roche AG” of Basel,
Switzerland.
2. The Domain Names and Registrar
The Disputed Domain Names <buybonviva.com> and <buypulmozyme.com> are registered with Rebel.com
Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2015.
On August 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Names. On August 27, 2015, August 31, 2015 and
September 8, 2015, the Registrar transmitted by email to the Center its verification response disclosing
registrant and contact information for the Disputed Domain Names, which reflected the contact details of the
Complainant. The Center sent an email communication to the Complainant on September 9, 2015 providing
the registrant and contact information disclosed by the Registrar. The Complainant, refusing to amend the
named registrant in accordance with the provided information, filed an amendment to the Complaint on
September 11, 2015.
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 the Respondent of the
Complaint, and the proceedings commenced on September 16, 2015. In accordance with the Rules,
paragraph 5, the due date for Response was October 6, 2015. On request of the Complainant, the
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proceeding was suspended on September 16, 2015. The proceeding was reinstituted on
September 24, 2015.
After reinstitution, the due date for Response was extended through October 14, 2015. The Respondent did
not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2015.
The Center appointed Anders Janson as the sole panelist in this matter on October 27, 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. Factual Background
F. Hoffmann-La Roche AG, the first Complainant, is a worldwide leader in research, pharmaceutical and
diagnostic products and has global operations in more than 100 countries. The Complainant has several
trademark registrations for BONVIVA, inter alia International Trademark Registration No. 594 093 (word
mark) for which the priority date is October 28, 1992, and Barbados Trademark Registration No. 81/25160
(word mark). The BONVIVA trademark designates a drug for the prevention or treatment of
osteoporosis/bone diseases. The trademark BONVIVA is registered in an alternative form as BONIVA in the
United States Patent and Trademark Office by F. Hoffman-La Roche AG’s United States branch Roche
Therapeutics Inc.
Genetech Inc., the second Complainant, holds protection for the trademark PULMOZYME according to
International Trademark Registration No. 859 614, for which the priority date is May 3, 1991, and Canadian
Trademark Registration No. TMA431,019. PULMOZYME designates a drug that is used to improve
pulmonary function in people with cystic fibrosis and to reduce the risk of respiratory tract infections.
The first and second Complainants are part of the same umbrella corporate entity, the Roche Group.
The Disputed Domain Names, <buybonviva.com> and <buypulmozyme>, were registered with the Registrar
on December 29 and December 30, 2010, respectively. Both Disputed Domain Names resolve to the online
pharmacy “www.canadianpharmacymeds.com”.
5. Parties’ Contentions
A. Complainant
The Disputed Domain Names are confusingly similar to trademarks or service marks in which the
Complainants have rights.
The Disputed Domain Names incorporate the Complainants’ marks BONVIVA and PULMOZYME in their
entirety. The addition in each domain name of the descriptive word “buy” does not sufficiently distinguish the
Disputed Domain Names from the Complainants’ registered trademarks BONVIVA and PULMOZYME.
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The
Complainants have exclusive and prior rights in the trademarks BONVIVA and PULMOZYME, which precede
the Respondent’s registration of the Disputed Domain Names.
The Respondent has no connection or affiliation with the Complainants and has not received any license or
consent, expressed or implied, to use the Complainants’ marks BONVIVA and PULMOZYME and neither to
use the BONIVA mark of F. Hoffman-La Roche AG’s US branch Roche Therapeutics Inc.
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By falsely implying that its pharmaceutical products are related or similar to those of the Complainants, the
Respondent is using the Disputed Domain Names with the purpose of trading on the Complainants’ goodwill
and on Roche Therapeutics Inc.’s goodwill.
The Respondent operates an online pharmacy at the Disputed Domain Names, which appears to sell only
Bonviva and not Pulmozyme. In any event, such activity does not represent a legitimate noncommercial or
fair use under the Policy, paragraph 4(c)(iii). According to Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case
No. D2004-0784 “several cases have found that a registrant has no legitimate interest in a domain name that
is similar to a pharmaceutical manufacturer’s mark and that is being used to direct consumers to an on-line
pharmacy.”
Furthermore, whilst the Respondent did react to the Complainants’ cease and desist letter by statitng
“[w]e do not agree with the assertions made in your e-mail regarding the domain name[s] buybonviva.com
[and buypulmozyme.com]. However, to avoid any possible misunderstandings, we are prepared, on a
without prejudice basis, and without any admission of liability to transfer the ownership of the domain
name[s] to your company”, the Respondent did not take the opportunity to present any case of rights or
legitimate interests that the Respondent might have in the Disputed Domain Names. Therefore there is no
reason why the Respondent should be found to have any rights or legitimate interests in the Disputed
Domain Names.
The Disputed Domain Names were registered and are being used in bad faith. The Disputed Domain
Names were registered in bad faith. There is no doubt that at the time of the registrations the Respondent
had knowledge of the Complainants’ marks BONVIVA and PULMOZYME and of the alternative mark
BONIVA.
The Disputed Domain Names contain the words “Bonviva” and “Pulmozyme”, respectively, and display the
same online pharmacy webpage in order to attract Internet users searching for the Complainants’ BONVIVA
and PULMOZYME marks via search engines, including users who expect to be led to the Complainants’
genuine websites or to sites endorsed by the Complainants. This shows that the Disputed Domain Names
are being used in bad faith.
According to the above mentioned case Pfizer Inc. v. j a/k/a Josh Green, supra, bad faith is established
when a “[r]espondent is using the domain names as a forwarding address to a for-profit on-line pharmacy.”
Therefore, the Respondent may generate unjustified revenues and is illegitimately capitalizing on the
Complainants’ marks BONVIVA and PULMOZYME.
Moreover, the Respondent is using the Disputed Domain Names to redirect to an online pharmacy, which
advertises and sells products of competitors of the Complainants. According to Hoffman-La Roche Inc. v.
Domain Admin / Michael Carrillo, WIPO Case No. D2015-0160, which refers to Hoffman-La Roche Inc. v.
Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240, “it is well-established that using a
domain name which incorporates a trademark to offer the products of competitors of the trademark owner is
likely to cause confusion among Internet users as to the source of products or to confusingly suggest
sponsorship by the trademark owner”.
The Complainants also point out that they intended to reach an amicable settlement with the Respondent
without success due to the Respondent’s conduct intentional attempt trying to stall for time when in fact it
was clearly not willing to transfer the Disputed Domain Names. The bad faith of the Respondent is also
evident from the fact that it has used a privacy service and has never revealed its genuine identity.
As a result, the Respondent is deliberately using the Disputed Domain Names in connection to the
Complainants’ BONVIVA and PULMOZYME marks in order to mislead the consumers and confuse them by
making them believe that the Complainants’ recommend the websites at the Disputed Domain Names.
In accordance with the reasons described above, the Complainants request that the Disputed Domain
Names be transferred to the Complainant F. Hoffmann-La Roche AG.
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B. Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Given the case file and the Respondent’s failure to file a response, the Panel accepts as true the reasonable
contentions of the Complainant. The Respondent’s default does not however automatically lead to a transfer
of the Disputed Domain Names. On the contrary, the Complainant still must establish that is it entitled to a
transfer of the Disputed Domain Names under the Policy.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainants must establish each of the
following elements:
(i)
The Disputed Domain Names are identical or confusingly similar to the trademark or service mark in
which the Complainants have rights; and
(ii)
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii)
The Disputed Domain Names have been registered and are being used in bad faith.
A. Preliminary Procedural Matters
Multiple Complainants
The Panel finds the consolidation of multiple complainants appropriate in the circumstances of this case.
Paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition
(“WIPO Overview 2.0”) records the consensus view that consolidation of multiple Complainants in a single
proceeding is allowable when “(i) the complainants either have a specific common grievance against the
respondent, or the respondent has engaged in common conduct that has affected the complainants’
individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the
consolidation.” Here, given that the Complainants are both drug manufacturers in the same corporate family,
and the two Disputed Domain Names are used to resolve to the same unauthorized online pharmacy, the
respondent has clearly engaged in common conduct affecting the complainants’ rights in a similar fashion.
In these circumstances consolidation of multiple complainants into a single proceeding is also equitable.
Respondent Identity
The Respondent has been confirmed by the Registrar as “F. Hoffmann-La Roche AG”. However, as
maintained by the Complainants and uncontroverted by the Respondent, neither Complainant controls the
disputed domain names. In these circumstances, the Panel finds that the name provided by the Respondent
to the Registrar is false, and that the Respondent’s true identity remains unknown. The Panel has indicated
this by placing the Registrar-confirmed Respondent identity in quotation marks in the caption of this decision.
B. Identical or Confusingly Similar
The Panel finds that the Complainants have trademark rights in BONVIVA and PULMOZYME with reference
to the trademark registrations.
The Disputed Domain Names are <buybonviva.com> and <buypulmozyme> and therefore contain the entire
words “Bonviva” and “Pulmozyme”, which are the Complainants’ registered trademarks. The fact that the
Disputed Domain Names also contain the term “buy” does not diminish the risk of confusion. The Panel
therefore finds that the Disputed Domain Names are confusingly similar to the Complainants’ trademarks.
Accordingly, the Panel finds that the Complainants have satisfied the requirements under paragraph 4(a)(i)
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of the Policy.
C. Rights or Legitimate Interests
In this case, the Complainants have offered convincing explanations and enough evidence of their exclusive
rights in the BONVIVA and PULMOZYME trademarks. The Panel finds that the Complainants have made
out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain
Names.
Therefore, the burden of production shifts to the Respondent to bring forward appropriate allegations or
evidence of its rights or legitimate interests. The Respondent has not replied to the Complainants’
contentions. The failure to file a response leaves the Panel to decide the case on the basis of the available
record and the evidence provided by the Complainants. Upon consideration of the available record, the
Panel is satisfied that the Respondent has no rights or legitimate interests in the Disputed Domain Names.
Accordingly, the Panel finds that the Complainants have satisfied the requirement under paragraph 4(a)(ii) of
the Policy.
D. Registered and Used in Bad Faith
The Panel finds that the Complainants’ trademarks are well-known, and, further, that it is highly unlikely that
the Respondent was unaware of the Complainants’ trademarks as the Disputed Domain Names display an
online pharmacy webpage in order to attract Internet users searching for the Complainants’ Bonviva and
Pulmozyme products via search engines, including users who expect to be led to the Complainants’ genuine
website or to sites endorsed by the Complainants. Accordingly, the Panel finds that the Disputed Domain
Names were registered in bad faith.
With respect to use, the Respondent has used the Disputed Domain Names to divert visitors to its websites
for its own commercial benefit via confusion with the Complainants’ marks. The Respondent registered the
Disputed Domain Names in order to gain commercial benefit. This constitutes evidence of registration and
use of the Disputed Domain Names in bad faith in accordance with paragraph 4(b)(iv) of the Policy. There is
no material in the record which displaces this presumption.
The Panel finds that the Complainants have fulfilled the requirements 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 Names, <buybonviva.com> and <buypulmozyme.com>, be transferred to
the Complainant F. Hoffmann-La Roche AG.
Anders Janson
Sole Panelist
Date: November 10, 2015