WIPO Domain Name Decision: D2006-0751

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Bob

Case No. D2006-0751

1. The Parties

The Complainant is F. Hoffmann-La Roche AG, of Basel, Switzerland, represented by an internal representative.

The Respondent is, Bob, N/A of Riga, Latvia.

2. The Domain Name and Registrar

The disputed domain name <viagra-xenical-pharmacy.com> is registered with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2006. On June 16, 2006, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name at issue. On the same day, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, 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 the Respondent of the Complaint, and the proceedings commenced on June 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 10, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2006.

The Center appointed Knud Wallberg as the sole panelist in this matter on July 17, 2006. 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, together with its affiliated companies, is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries.

The Complainant is the owner of the trademark XENICAL in over a hundred countries worldwide, including the International Registrations No. 612908 with the priority date of August 5, 1993, and No. 699154 with the priority date of April 21, 1998. Both registrations have effect in the domicile country of the Respondent Latvia.

The trademark XENICAL, registered for “pharmaceutical, veterinary and hygienic products” under the International Registration No. 612908 and for “pharmaceutical, veterinary and sanitary preparations” under the International Registration No. 699154, designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off.

The Respondent registered the domain name on May 27, 2006.

No factual information has been provided about the Respondent.

5. Parties’ Contentions

A. Complainant

1. The domain name is confusingly similar to a trademark or service mark in which the Complainant has rights

The domain name of the Respondent contains the entire XENICAL trademark of the Complainant. The additions of “viagra” and “pharmacy” do not sufficiently distinguish the domain name from the Complainant’s trademark – the inclusion of a third party’s trademark in the domain name does not change the confusing similarity criterion and combining the Complainant’s trademark with the generic term “pharmacy” fails to distinguish the domain name from the trademark. The Complainant’s use and registration of the trademark XENICAL predates the registration of the domain name by the Respondent.

Therefore, the domain name is confusingly similar to the trademark of the Complainant.

2. The Respondent has no rights or legitimate interests in respect of the domain name

The Complainant has the exclusive rights to the trademark XENICAL, and that the Complainant has not granted to the Respondent any license, permission or authorization to use its trademark XENICAL in the domain name.

The Respondent does not offer goods or services through the domain name <viagra-xenical-pharmacy.com>, but is using it as a link address to redirect Internet users to another website of the Respondent “ www.ebestpharmacy.com”, which is a search engine composed of sponsored links. The Respondent’s only reason in registering and using the domain name is to benefit from the reputation of the trademark XENICAL and illegitimately trade on its fame for commercial gain and profit.

Therefore, the Respondent has no rights or legitimate interests in the domain name.

3. The domain name was registered and is being used in bad faith

The domain name was registered in bad faith since at the time of registration of the domain name, i.e., May 27, 2006, the Respondent undoubtedly had the knowledge of the Complainant’s product and the trademark XENICAL.

The domain name is being used in bad faith since viewing the Respondent’s website it is obvious that the Respondent intentionally attempts for the commercial purposes to attract the Internet users to his website by creating a likelihood of confusion with the Complainant’s mark, which has a good reputation. By using the domain name, the Respondent is intentionally misleading the consumers and confusing them so as to attract them to believe that the websites behind those links are associated or recommended by the Complainant.

Therefore, the Respondent is illegitimately capitalizing on the fame of the Complainant’s trademark XENICAL, and consequently 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

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the 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 domain name; and

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

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.

A. Identical or Confusingly Similar

The contested domain name contains the Complainant’s distinctive trademark XENICAL in its entirety but also incorporates the trademark VIAGRA, which the Panel understands belongs to a third party, namely Pfizer Inc., as well as the generic term “pharmacy”.

UDRP panels have consistently found that the Respondent’s inclusion of the third party’s trademark in its domain name does not eliminate the visual impression that the disputed domain name is associated with the Complainant’s trademark. See to this effect, inter alia, Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793 and Hofmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793.

Likewise, the addition of the descriptive word “pharmacy” as suffix, and the insertion of the hyphens between the words does not alter the fact that the domain name is confusingly similar to the Complainant’s trademark. Also, the inclusion of the gTLD denomination “.com” shall be disregarded for the purpose of these proceedings.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

B. Rights or Legitimate Interests

The Complainant has not licensed or otherwise permitted the Respondent to use its trademark to apply for the domain name incorporating the Complainant’s mark.

The Complainant alleges and has made a prima facie showing that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not rebutted this and, based on the record of this case, it is unlikely that any such rights or interests may exist.

In this context, the Panel notes that “Xenical,” is an invented word that has no specific meaning. The same may be concluded with respect to the third party’s trademark VIAGRA. It can therefore be ruled out that the Respondent could plausibly claim to use the disputed domain name for any legitimate purpose unrelated to the Complainant or its products.

Even if the Respondent was allowed to sell pharmaceutical products bearing the Complainant’s mark XENICAL, this would not necessarily give the Respondent the right to incorporate this trademark into its domain name. See, inter alia, Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenial & More Online Pharmacy, WIPO Case No. D2003-0793. This is particularly so when the contested domain name, as is the case here, is used to redirect Internet users to a website on which competing pharmaceutical products are offered for sale.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must prove the Respondent’s registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, a number of circumstances which may be taken as indicative of bad faith.

Given the notoriety of the Complainant’s trademark, the coined nature of the word “Xenical,” and also the priority date as of August 5, 1993, concerning the International Registration No. 612908 with effect in Latvia, it is inconceivable to the Panel that the Respondent registered the domain name without prior knowledge of the Complainant and the Complainant’s mark.

As described above, the disputed domain name is used to redirect Internet users to another Respondent’s website “www.ebestpharmacy.com,” not only to promote Complainant’s goods, but also to promote other competing products (pharmaceuticals). This is done through links to other websites. The Panel therefore finds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. See inter alia, Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 and L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623.

Therefore, the Panel finds that the domain name was registered and is being used in bad faith.

Considering all the facts and evidence, the Panel therefore finds that the requirements of the Policy, paragraph 4(a)(iii), are also fulfilled in this case.

The Panel notes that this results in the transfer to the Complainant of a domain name that includes the trademark VIAGRA, which the Panel understands is owned by Pfizer Inc. that is not a party to the current proceeding. In other cases under the UDRP procedure, the Complainants have presented evidence of the consent of other trademark owners with a potential interest in the transferred domain name. See inter alia, Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793 and Yahoo, Inc. v. M&A Enterprise, WIPO Case No. D2000-0748. However, while in good practice neither the Policy nor the Rules expressly require such consent. Accordingly, the Panel orders that the domain name be transferred to the Complainant without prejudice to any rights, which may be asserted by Pfizer Inc.

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 <viagra-xenical-pharmacy.com> be transferred to the Complainant.

Knud Wallberg
Sole Panelist

Dated: July 20, 2006