Genentech, Inc. v Yue Jiang Xu

WIPO Case No. D2024-5100

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Genentech, Inc. v. Yue Jiang Xu

Case No. D2024-5100

1. The Parties

The Complainant is Genentech, Inc., United States of America, represented by F. Hoffmann-La Roche AG,

Switzerland.

The Respondent is Yue Jiang Xu, China.

2. The Domain Name and Registrar

The disputed domain name <genentech.pro> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2024. On December 11, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 2024, 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 (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 13, 2024, 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 December 17, 2024.

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 December 19, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2025.

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The Center appointed Adam Samuel as the sole panelist in this matter on January 17, 2025. 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 a biotechnology company in the Roche group. The Complainant owns a United States trademark GENENTECH, registration no. 1278624, registered on May 22, 1984. The Complainant promotes its services through a number of domain names including <genentech.com> which was registered on May 28, 1997.

The disputed domain name was registered on November 3, 2024. It does not currently resolve to a website. It previously resolved to a website containing on the top left-hand side of its first page “Genentech A Member of the Roche group” and references to various pharmaceutical products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the second-level domain of the disputed domain name is identical to consent to use the Complainant’s trademark.
the Complainant’s trademark and the top-level domain name consists of a new generic top-level domain
“.pro”. This does not sufficiently distinguish the disputed domain name from the Complainant’s trademark.

The disputed domain name used to resolve to a webpage offering fake crowdfunding or fundraising in connection with the Complainant’s pharmaceutical products. This is to confuse Internet users into believing that the Complainant recommends or operates the website and that funds are being raised for a good cause.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights;

(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.

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A. Identical or Confusingly Similar

The disputed domain name consists of the Complainant’s trademark and the generic top-level domain

(“gTLD”) “.pro”.

The gTLD is irrelevant here as it is a standard registration requirement. See section 1.11.1 of the WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

For all these reasons, the Panel concludes that the disputed domain name is identical to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent is not called “genentech” or anything similar and has never used the disputed domain name for any purpose other than to impersonate the Complainant. There is no evidence that the Complainant has ever authorised the Respondent to use its trademarks.

For these reasons, the Panel concludes that the Complainant has met this element. See section 2.1 of the

WIPO Overview 3.0.

C. Registered and Used in Bad Faith

The Complainant’s trademark GENENTECH is a made-up word with no independent meaning. The disputed domain name originally resolved to a website which seemed to be fund raising to pay for the purchase of the Complainant’s products. The Respondent knew of the Complainant’s name, trademark, membership of the

Roche group and pharmaceutical business when it registered the disputed domain name. This is apparent from the Respondent’s use of the name of both the Complainant, its trademark and its corporate group on the website to which the disputed domain name resolved initially.

Without a Response in this case, it is impossible to know why the Respondent registered the disputed domain name. However, it is reasonable to infer that the Respondent did this to raise funds from people thinking that the website to which the disputed domain name resolves was somehow associated with the Complainant when that is not the case.

For these reasons, the Panel finds that the Complainant has established the third element 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 name <genentech.pro> be transferred to the Complainant.

/Adam Samuel/
Adam Samuel
Sole Panelist
Date: January 27, 2025