Recent Case Notes & Commentary

How Panellists make their Decisions

F. Hoffmann-La Roche AG v. Mohammadali Mokhtari WIPO Case No. DIR2019-0007 September 23, 2019


While many UDRP disputes concern clear instances of cybersquatting and result in relatively straightforward decisions, occasions arise whereby panels have to consider a range of different issues and make a judgement over the whole of the evidence. The following case deals with the issues of trademarks and generic terms, passive-holding and the importance of a trademark’s reputation. Without the evidence exerting a strong pull in either direction, this case gives insights as to how a Panel may make a conclusive judgement on the evidence at hand.

Insights into panels' decision making processes can be vital aids for successful UDRP cases

The Case:

The case in question centres around the disputed domain name <roche.ir>. The complainant, a healthcare research group which has an affiliate in Iran named Roche Pars Ltd, holds several trademark registrations for ROCHE, the earliest of which date back to the 1960s. The respondent, an Iranian resident registered the disputed domain name in 2010, and there was no evidence to suggest the domain resolved to an active website in the period following.


To understand how the panel made its decision in light of the parties arguments and evidence, it is first important give an overview of their contentions.


Complainant’s Contention:

In making their case, the Complainant asserted that the Respondent clearly knew of the Complainant’s trademark rights, and registered the domain name to take advantage of such rights. It argued that the Respondent’s passive-holding of the domain name indicated it had no clear right or legitimate interest in the domain name, using the fact the Respondent had lost several other domain name disputes to indicate a pattern of bad faith behaviour.


Respondent’s Contention:

Conversely, the respondent argued that the word “roche” is a generic term in Persian which refers to a type of grape, while also meaning “day” in southern Iran. “Roche” also features as the name of a newspaper as well as being incorporated in the names of many Iranian cities, suburbs and regions. The Respondent had provided evidence of preparations for a website concerning the distribution, trading and other related news concerning the Roche grape. Having argued the main connotation of “roche” was for a grape variety in Persian speaking countries, rather than the business of the Complainant, the Respondent claimed that he held a right and legitimate interest in the domain, nor could he have possibly registered or used the domain name in bad faith.


A Roche Grape: The type the Respondent was referring to in his contention

In making its decision, the Panel was faced with two alternative readings of the evidence on hand; one in which the Respondent registered the domain name for its value as a generic term - a type of grape common in the location of the Respondent; and one in which the Respondent registered the domain name to directly attack the Complainant’s trademark rights. The Panel ultimately found in favour of the Complainant and the domain was transferred, but through an analysis of how it came to such a decision, we are afforded insights into how a panel makes its decision. Ultimately, we will be able to consider whether in this instance the Panel made the correct decision in light of the evidence at hand.


The decision:

With the multitude of trademark registrations held by the Complainant, it was clear that the first element was always going to be found in its favour.


Moving on to the second element, it was clear the Complainant made out a prima facie case for the Respondent’s lack of rights and legitimate interest in the domain name. While the Respondent argued his rights in the domain name arose from its value as a generic term, the Panel found that the evidence submitted regarding the Respondent’s website preparations was insufficient to demonstrate any right or legitimate interest in the domain name before the proceeding commenced. Ultimately the Panel found that the evidence was prepared for a pretext for claiming rights rather than a genuine intended use during the ten years of passive-holding, and thus found the element in favour of the complainant.


With regards to the third element, it is first important to note that the being a <.ir> domain, the dispute was conducted under the rules of the irDRP rather than the UDRP. The irDRP requires only a finding of bad faith use or registration for the Complaint to be successful, not both. In making its decision, the Panel primarily considered the past behaviour of the Respondent, whereby previous irDRP cases had found him to have registered at least 5 other domains involving others trademarks in bad faith. It is from this, and largely this alone that the panel inferred the Respondent knew about the Complainant’s ROCHE trademark at the time of registration and thus registered it in bad faith.


While such a pattern of behaviour by no means helps the Respondent’s cause, the Pane’ls consideration of it raises some important questions. Notably, is such a pattern of behaviour sufficient to find, on balance, the Respondent knew about the Complainant’s marks? This is especially important when the mark in question correlates also holds several generic meanings. The disputed domain was registered two years before the Complainant began any business operations in the Respondent’s jurisdiction. This alone suggests that a more detailed discussion of the fame and reputation of the Complainant’s trademarks would be required.

While the Respondent produced questionable evidence in the form of Google image searches suggesting Roche refers to a grape rather than the Complainant’s business in Iran, which the Panel dismissed, it remains that the burden of proof ultimately remains with the Complainant. With no further evidence forthcoming from the Complainant indicating the Respondent was likely to have known about its business, the Panel may not be entirely in so emphatically finding that the domain was registered in bad faith. It may have very well been the fact that the Respondent did know about the Complainant’s marks at the time of registering the domain ten years ago, but without a detailed consideration this matter that goes beyond the Respondent’s prior behaviour, the Panel’s decision on this matter remains open to criticism.


Regardless, this case demonstrates that if anything, domain name disputes can be nuanced and complex, and panels ultimately have to come down with a judgement on one side or the other. Therefore, if one is to best ensure the possibility of succeeding, it remains vital to present strong arguments that are always clearly substantiated by evidence.