WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Samir Kumar

Case No. D2008-0808

1. The Parties

Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, internally represented.

Respondent is Samir Kumar, Karnataka, India.

2. The Domain Name and Registrar

The disputed domain name <xenial.org> is registered with Gal Communications (CommuniGal) Ltd. d/b/a Galcomm.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2008. On May 23, 2008, the Center transmitted by email to Gal Communications (CommuniGal) Ltd. d/b/a Galcomm a request for registrar verification in connection with the domain name at issue. On May 25, 2008, Gal Communications (CommuniGal) Ltd. d/b/a Galcomm transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 May 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 20, 2008.

The Center appointed Roberto Bianchi as the sole panelist in this matter on July 8, 2008. 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 following facts and circumstances are undisputed

- Having operations in over 100 countries, Complainant and its affiliated companies make one of the world’s leading groups in the pharmaceutical and diagnostics industries,

- Complainant owns registrations for the XENICAL mark in more than 100 countries. Among those registrations are International Registrations No. 612908, registered on December 14, 1993 (original Swiss registration No. 407537, dated August 5, 1993), and No. 699154 (original Swiss registration No. 453451, dated April 21, 1998), both covering pharmaceutical products, etc. of class 5.

- The mark XENICAL designates a weight loss medication.

- The disputed domain name was registered on April 23, 2008.

- The website at the domain name at issue consists of a single page titled “Xenial.org”, and showing a legend stating “Find It Here”, together with a search-field as provided by search-engines.

5. Parties’ Contentions

A. Complainant

In its Complaint, Complainant contends the following:

- The disputed domain name is confusingly similar to Complainant’s XENICAL mark. The only difference between the domain name and this mark is the purposeful misspelling of XENICAL.

- Complainant has exclusive rights for XENICAL, and no license or permission or authorization or consent was ever granted to use XENICAL in the domain name. The domain name in question clearly alludes to Complainant. Since Respondent’s website is a search engine composed of sponsored links, the sole direction of Internet traffic to other, unrelated websites, is not a use in connection with a bona fide offering of products and services.

- At the time of registration, Respondent had knowledge of Complainant’s medication for weight loss and XENICAL mark. Thus, the domain name was registered in bad faith. The domain name is also being used in bad faith, since Respondent is attempting for commercial purpose to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s site, or of the products or services posted on or linked to Respondent’s site. Respondent may generate unjustified revenues for each click-through by online consumers, thus illegitimately capitalizing on the XENICAL trademark fame.

B. Respondent

Respondent did not reply to Complainant’s contentions, and is in default.

6. Discussion and Findings

For the Complainant to succeed it must prove, in accordance with paragraph 4(a) of the Policy, that:

(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.

A. Identical or Confusingly Similar

By submitting copies of two International Registration certificates, Complainant has shown that it has rights in the XENICAL mark. See section 4 above. The domain name in dispute differs from this mark in that the domain name lacks the letter “C”. This is too minor a difference to distinguish the domain name from the mark. See Allianz AG v. Michele Dinoia, WIPO Case No. D2005-0277 (domain name found to be confusingly similar to the mark because the lack of one letter does not change the overall impression of the designation); see also Deutsche Telekom AG v. Domibot (Deutschtelekom-com-dom), WIPO Case No. D2006-0154 (finding that the domain name <deutschtelekom.com> is identical to the DEUTSCHE TELEKOM mark, apart from one missing letter “e”).

Accordingly, the Panel finds that the domain name in dispute is confusingly similar to Complainant’s mark.

B. Rights or Legitimate Interests

Complainant contends that it has exclusive rights for XENICAL, and that Respondent never had any license, permission, authorization or consent from Complainant to use XENICAL in the domain name. Complainant further contends that because Respondent’s website is a search engine composed of sponsored links, the sole direction of Internet traffic to other, unrelated websites, is not a use in connection with a bona fide offering of products and services.

In absence of any evidence in favor of Respondent, the Panel believes that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in respect of the domain name at issue. Once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. Otherwise, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” at “https://www.wipo.int/amc/en/domains/search/overview/index.html”.

The only evidenced use of the domain name by Respondent consists of a single web page titled “Xenial.org”, showing a legend that states “Find It Here”. Under this legend there is a box or search field as typically provided by search engines, into which users type their queries. On July 14, 2008, the Panel visited this web page and found that words typed into the search box resulted into a list of links to commercial sites. Thus, it appears that Internet users looking for Complainant’s widely known product and mark XENICAL will inadvertently be connected to Respondent’s website, where a search service totally unrelated to Complainant produces links to sources for products and services offered by businesses other than Complainant. This is neither a bona fide use, nor a noncommercial or fair use of the domain name.

In addition, Respondent is not commonly known by the domain name.

The Panel notes that “xenial” means “ hospitable, especially to visiting strangers or foreigners”¹. There is, however, no suggestion on the record that at the time of registration Respondent had this uncommon word in mind, instead of a misspelling of the XENICAL mark aimed at causing confusion. Respondent’s lack of any response or explanation leads the Panel to accept Complainant’s allegation that its mark was intentionally misspelled by Respondent, and therefore to conclude that the domain name in all likelihood was registered with the main purpose of extracting an unjustified profit from Complainant’s mark , which cannot bestow on him any rights or legitimate interests in the domain name.

In absence of any element if favor of Respondent, the Panel finds that the second element of the Policy is met.

C. Registered and Used in Bad Faith

Complainant contends that Respondent “had, no doubt, knowledge of the Complainant’s product/mark XENICAL” at the time of registering the domain name. There is no conclusive evidence of such allegation, but given that XENICAL is a widely known mark, and that the domain name at issue is an example of typo-squatting, and failing any submission by Respondent, the Panel is inclined to agree with Complainant that Respondent, on balance of probabilities, most likely knew or must have known the mark; in other words, that he registered the domain name at issue in bad faith. See SurePayroll, Inc. v. Web Advertising, Corp. , WIPO Case No. D2007-0470 (“It is generally held that typo-squatting per se is sufficient to establish registration and use in bad faith under paragraph 4(a)(iii) of the Policy […]”).

Internet users mistyping Complainant’s XENICAL mark into their browsers are being offered a search engine whose results link to commercial websites unrelated to Complainant. Further connections with any such links presumably will result in click-through or pay-per-click payments, big or small, to Respondent, allowing him to extract a profit from the fame of Complainant’s mark and product. WIPO panels routinely consider this behavior to be a circumstance of bad faith registration and use according to Policy paragraph 4(b)(iv) (“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”).

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

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 <xenial.org> be transferred to Complainant.

Roberto Bianchi
Sole Panelist

Dated: July 21, 2008

¹ See http://en.wiktionary.org/wiki/xenial.