WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Genentech Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Thai Bui, Thai An commercial and architecture JSC

Case No. D2020-1735

1. The Parties

The Complainant is Genentech Inc., United States of America (“United States”), represented by F. Hoffmann-La Roche AG, Switzerland.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Thai Bui, Thai An commercial and architecture JSC, Viet Nam.

2. The Domain Name and Registrar

The Disputed Domain Name <genentech.store> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2020. On July 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 2, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 6, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 6, 2020.

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 July 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2020.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on August 11, 2020. 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

The Complainant is engaged in research and development of pharmaceutical products. The Complainant is a biotechnology company dedicated to pursuing groundbreaking science to discover and develop medicines for people with serious and life-threatening diseases.

The Complainant’s GENENTECH trademark is protected as International Registration No. 1096965, registered on October 19, 2011, and in the United States as Registration No. 1278624, registered on May 22, 1984.

In addition, the Complainant owns and uses the domain names <genentech.com> and <gene.com>.

The Disputed Domain Name was registered on June 8, 2020. The Disputed Domain resolves to an online store webpage offering t-shirts for sale.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

Identical or confusingly similar

The Complainant states that the Disputed Domain Name is confusingly similar to the Complainant’s GENENTECH trademark. The generic Top-Level Domain (“gTLD”) “.store” does not sufficiently distinguish the Disputed Domain Name to the Complainant’s trademark.

Rights or legitimate interest

The Complainant states that the Respondent has no connection or affiliation with the Complainant. In addition, the Complainant has not authorized the Respondent to use the GENENTECH trademark.

The Complainant further states that the Respondent is using the Disputed Domain Name in order to confuse consumers by making them believe that the website is operated by the Complainant.

Finally, the Respondent did not reply to the cease and desist letter sent by the Complainant.

Registration and use in bad faith

The Complainant contends that the Disputed Domain Name was registered in bad faith. The Respondent could not ignore the Complainant’s GENENTECH trademark. In addition, the Disputed Domain Name consists of the reproduction of the Complainant’s trademark.

Therefore, the Disputed Domain Name was registered in bad faith with the intention to create an impression of association with the Complainant.

Finally, the Complainant alleges that the Respondent used a privacy shield to mask its real identity.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Disputed Domain Name is confusingly similar to the Complaint’s GENENTECH trademark. The Disputed Domain Name wholly incorporates the Complainant’s trademark.

Furthermore, the addition of the gTLD “.store” does not prevent the confusing similarity between the Disputed Domain Name and the Complainant trademark.

Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:

(i) Before any notice to you of the dispute, your use of, 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) You (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) You are 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 at issue.

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name. The Complainant has prior rights in the trademark, which precede the Respondent’s registration of the Disputed Domain Name.

The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name. Moreover, it had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contention.

As such, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The Disputed Domain Name was registered on June 8, 2020, while the Complainant’s GENENTECH United States Trademark Registration No, 1278624, was granted on May 22, 1984. Furthermore, the fact that the Respondent’s website resolves to a commercial website with the display of “Genentech” in similar coloring than that at the Complainant’s official website, suggests that the Respondent had knowledge of the legal rights in the GENENTECH at the time of the registration. Thus, the Panel concludes the Respondent registered the Disputed Domain Name in bad faith.

The Panel also finds that the Respondent uses the Disputed Domain Name in bad faith. The Respondent operates its website, without the authorization of the Complainant. Furthermore, the Respondent is using a logo which is similar to the Complainant’s logo, contributing to create a likelihood of confusion with the Complainant’s trademark. The addition of the gTLD “.store” strengthens the impression that the Disputed Domain Name is that of, or is related to, the Complainant. This conduct qualifies as bad faith under paragraph 4(b)(iv) of the Policy.

In addition, the Respondent has taken active steps to conceal its true identity through a privacy service. This particular conduct evidences the Respondent bad faith.

Due to this conduct, it is obvious that the Respondent intentionally created likelihood of confusion with the Complainant’s trademark in order to attract Internet users for its own commercial gain, as required by paragraph 4(b)(iv) of the Policy.

Therefore, taking all circumstances into account and for all the above reasons, the Panel concludes that there is bad faith in the registration and use of the Disputed Domain Name.

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 Name <genentech.store> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: August 25, 2020