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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hoffmann-La Roche Inc. v. Alternative Identity

Case No. D2007-0152

 

1. The Parties

The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented by Lathrop & Gage L.C., United States of America.

The Respondent is Alternative Identity of Metairie, Louisiana, United States of America.

2. The Domain Name and Registrar

The disputed domain name <klonopinz.com> (the “Domain Name”) is registered with Intercosmos Media Group, Inc. d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2007. On February 8, 2007, the Center transmitted by email to Intercosmos Media Group, Inc. d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On February 8, 2007, the registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 8, 2007.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on March 20, 2007. 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, along with its affiliated companies, is one of the leading manufacturers of pharmaceutical and diagnostic products in the world. Complainant owns U.S. Registration Nos. 1,415,564 and 2,186,702, issued by the U.S. Patent and Trademark Office (“PTO”) for the trademark KLONOPIN (“the Mark”), covering anticonvulsant and panic disorder preparations, respectively. Those registrations have become incontestable.

Complainant’s KLONOPIN mark has been in use since 1986. Since that date, sales in the United States of America of the pharmaceutical preparations sold under the Mark have far exceeded millions of dollars. Advertising and promotion in the United States of America for the KLONOPIN pharmaceutical preparations was extensive, and Complainant has acquired a considerable level of goodwill in the Mark.

Complainant’s parent company, F. Hoffmann-La Roche AG, owns and has registered the domain name <klonopin.com>, through which Complainant’s customers obtain information about the KLONOPIN product. Upon entering the web address “www.klonopin.com”, the user is redirected to a site located at “www.rocheusa.com” through which Complainant’s customers can obtain information about the KLONOPIN pharmaceutical preparations.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that the Domain Name is identical or confusingly similar to Complainant’s KLONOPIN Mark; that Respondent has no rights or legitimate interests in the Domain Name; and that the Domain Name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Where a party fails to present evidence in its control, the Panel may draw such inferences as it considers appropriate. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004 (February 16, 2000). Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondent. Nonetheless, paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does Complainant have rights in a relevant mark and, second, is the Domain Name identical or confusingly similar to that mark.

It is uncontroverted that Complainant has established rights in the KLONOPIN mark based on long-standing use as well as its U.S. trademark registrations for the Mark. Likewise, Complainant has established rights in the domain name incorporating the KLONOPIN mark, <klonopin.com>. Complainant’s United States federal trademark registrations are entitled to a presumption of validity, which Respondent has not rebutted. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004).

Regarding likelihood of confusion, it is well settled that the use of lower case letter format and the addition of the gTLD “.net” or “.org” are not significant in determining whether a domain name is identical or confusingly similar to a trademark. CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834 (September 4, 2000). Furthermore, numerous panel decisions have held that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. See General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087 (May 2, 2001).

In this case, the Domain Name incorporates the whole of Complainant’s mark and merely adds the letter “z” to the end of the domain name. The addition of the letter “z” in the Domain Name does nothing to detract from or disassociate the Domain Name and the Complainant. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004 (February 22, 2001).

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

It is uncontested that Complainant has not licensed or otherwise authorized Respondent to use its Mark or its domain name in connection with Respondent’s website. Insofar as Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004)), this shifts the burden to Respondent to show by concrete evidence that it has rights or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (June 6, 2000). Pursuant to paragraph 4(c) of the Policy, Respondent may satisfy its burden by demonstrating any of the following: (i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent has provided no evidence to carry its burden. A review of Respondent’s website reveals that it uses the Domain Name to promote the story of the suicide of a young man through simultaneous ingestion of many medications of different sources, including the drug KLONOPIN, and alcohol, until the young man lost consciousness and died. Based upon Respondent’s website, it is clear that Respondent has not been commonly known by “klonopinz.com”.

Furthermore, the evidence shows that Respondent’s infringing use of the Mark is not a bona fide use of it. Rather, by using the infringing Domain Name, Respondent is seeking to capitalize on the good will associated with Complainant’s Mark to direct customers seeking information about Complainant’s KLONOPIN product to a website containing the story of the suicide mentioned above as well as pornography and lewd commentary. Furthermore, Respondent’s use of the Domain Name for the site as described serves to tarnish Complainant’s Mark and reputation. The unrebutted record evidence shows that Respondent has not made any legitimate use of the Domain Name.

The Panel therefore holds that Complainant has established paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name by Respondent in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

Respondent’s bad faith in registering the Domain Name is shown by the following undisputed facts: (1) Complainant’s trademark KLONOPIN is a coined mark which was in use as a trademark and registered on the Principal Register of the U.S. Patent and Trademark Office for many years preceding Respondent’s registration of the Domain Name; (2) there is no relationship between Respondent and Complainant and Complainant has not given Respondent permission to use its KLONOPIN mark for any purpose, including in a domain name or for use on Respondent’s website; and (3) Respondent was aware of the KLONOPIN trademark, as described above, in relation to a young man’s suicide, and yet adopted the trademark in the Domain Name to divert Internet users to its website. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004 (February 22, 2001).

The undisputed facts are that Respondent is using a domain name that is confusingly similar to Complainant’s KLONOPIN mark and Respondent has no legitimate interest in the Domain Name other than using it to attract Internet users to its website, which contains pornographic and offensive content, at Complainant’s expense. See Give2Asia v. Dazzledesigns, WIPO Case No. D2005-0055 (March 21, 2005). As further evidence of bad faith, it appears that Respondent’s contact information is false. See Oxygen Media LLC v. Primary Source, WIPO Case No. 2000-0362 (June 19, 2000).

The Panel therefore holds that Complainant has established paragraph 4(a)(iii) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <klonopinz.com>, be transferred to the Complainant.

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Harrie R. Samaras
Sole Panelist

Dated: April 3, 2007