WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. UrProxy Domains
Case No. D2007-0456
1. The Parties
Complainant is Hoffmann-La Roche Inc., Nutley, New Jersey, United States of America, represented by Lathrop & Gage L.C., United States of America.
Respondent is UrProxy Domains, Vista, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <cheapest-xenical.org>, <lowest-cost-xenical.net>, <lowest-cost-xenical.org>, <xenical-diet-pill.net>, <xenical-online.info>, <xenical-prescription.net> and <xenical-prescription.org> (collectively, the “Disputed Domain Names”) are registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2007. On March 28, 2007, the Center transmitted by e-mail to eNom, Inc., a request for registrar verification in connection with the domain names at issue. On March 28, 2007, eNom, Inc. transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for Respondent. 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 April 5, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 25, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 26, 2007.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on May 15, 2007. 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
Complainant, states that it, “together with its affiliated companies… is one of the leading manufacturers of pharmaceutical and diagnostic products in the world.” Complainant further states that it is the owner of trademark registrations “in a multitude of countries worldwide” for the mark XENICAL, including United States Reg. No. 1,906,281 (registered July 18, 1995), for which Complainant provided a copy of the certificate of registration (the “Xenical Trademark”). Complainant further states that: “The mark XENICAL designates a pharmaceutical preparation, namely, a pharmaceutical product indicated for weight reduction and long-term management of weight. For many years Complainant’s mark XENICAL had been extensively promoted, and Complainant has sold its pharmaceutical preparation bearing the XENICAL mark since March, 1994 in the United States. Such sales of the Xenical pharmaceutical preparation have far exceeded millions of dollars in the United States since 1994.” F. Hoffmann-La Roche AG, which Complainant states is “the Swiss parent of Complainant” is the registrant of the domain name <xenical.com>, which was registered April 17, 1997, and is used in connection with information about the Xenical pharmaceutical preparation.
Each of the Disputed Domain Names was registered on December 19, 2003.
5. Parties’ Contentions
A. Complainant
Complainant contends, in relevant part, as follows:
- Each of the Disputed Domain Names is identical or confusingly similar to a trademark or service mark in which Complainant has rights, based on the trademark registrations cited by Complainant (above) and the fact that the additional words in the Disputed Domain Names do “nothing to detract from” the confusingly similarity.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, among other things, “Complainant has not authorized the Respondent to use its trademark XENICAL or to incorporate the trademark into any domain name”; “[b]ased upon Respondent’s web sites, it is clear that neither Respondent not its web sites have been commonly known by the Disputed Domain Names”; Respondent is not using the Disputed Domain Names in connection with a bona fide offering or goods or services because it seeks “to divert Internet users” looking for Complainant’s website; and Respondent’s use of the Disputed Domain Names is neither fair nor noncommercial because Respondent is “trading on Complainant’s goodwill and is using the Disputed Domain Names to offer for sale Complainant’s prescription drug Xenical to the public, whether or not the prospective purchaser qualifies for the use of the Xenical drug.”
- Each of the Disputed Domain Names has been registered and is being used in bad faith because “Respondent’s true purpose in registering the Disputed Domain Names which incorporate Complainant’s XENICAL [trademark] in its entirety is to capitalize on the reputation of Complainant’s XENICAL mark by diverting Internet users seeking Complainant’s web site to Respondent’s own web sites, from which customers may purchase the Xenical drug.”
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief they have requested: (i) the Disputed Domain Names are 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 Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a).
A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is clear that Complainant has rights in the XENICAL Trademark.
As to whether the Disputed Domain Names are identical or confusingly similar to the XENICAL Trademark, the relevant comparison to be made is with the second-level portion of each of the Domain Names only (i.e., “cheapest-xenical”, “lowest-cost-xenical”, “lowest-cost-xenical”, “xenical-diet-pill”, “xenical-online.info”, “xenical-prescription” and “xenical-prescription”), as it is well-established that the top-level domain names (i.e., “.org”, “.net” and “.info”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”); see also United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.’) nor the TLD have any source-indicating significance”).
None of the Disputed Domain Names is identical to a trademark in which Complainant has rights, as the second-level portion of each of the Domain Names includes one or more words in addition to the XENICAL Trademarks. However, Complainant need prove only that the Domain Names are “confusingly similar” to a mark in which Complainant has rights. The Panel agrees with Complainant that the additions of the words “diet”, “pill”, “online”, “prescription”, “lowest”, “cost” and “cheapest” do “nothing to detract from, and… [are] likely to reinforce the strong association between the word XENICAL and the Complainant.” See, e.g., Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561 (“when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”) (quoting Yellow Corporation v. MIC, WIPO Case No. D2003-0748).
Accordingly, each of the Disputed Domain Names is confusingly similar to the Xenical Trademarks, and the Panel is convinced that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Names because, among other things, “Complainant has not authorized the Respondent to use its trademark XENICAL or to incorporate the trademark into any domain name”; “[b]ased upon Respondent’s web sites, it is clear that neither Respondent not its web sites have been commonly known by the Disputed Domain Names”; Respondent is not using the Disputed Domain Names in connection with a bona fide offering or goods or services because it seeks “to divert Internet users” looking for Complainant’s website; and Respondent’s use of the Disputed Domain Names is neither fair nor noncommercial because Respondent is “trading on Complainant’s goodwill and is using the Disputed Domain Names to offer for sale Complainant’s prescription drug Xenical to the public, whether or not the prospective purchaser qualifies for the use of the Xenical drug.”
Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1, <http://arbiter.wipo.int/domains/search/overview/index.html>.
Accordingly, as a result of Complainant’s allegations and without any evidence of Respondent’s rights or legitimate interests in the Disputed Domain Names, the Panel is satisfied that Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, Complainant alleges that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy. The Panel agrees with the decision under the Policy cited by Complainant, State Fair of Texas v. Granbury.com, NAF Claim Number: FA0007000095288, which found bad faith because “[t]he only apparent reason to use [the complainant’s trademark] as part of a domain name is to benefit from the goodwill associated with the mark.” Numerous other decisions under the Policy have reached similar conclusions.
Further, in light of the strength of the XENICAL Trademarks – based upon their arbitrariness, their long-term and widespread usage –the Panel also agrees with the decision under the Policy cited by Complainant that Respondent’s registration and use of the Disputed Domain Names represents “opportunistic bad faith” under the Policy. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
Therefore, the Panel is convinced that Complainant has proven the third element of the Policy.
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 names <cheapest-xenical.org>, <lowest-cost-xenical.net>, <lowest-cost-xenical.org>, <xenical-diet-pill.net>, <xenical-online.info>, <xenical-prescription.net> and <xenical-prescription.org> be transferred to the Complainant.
Douglas M. Isenberg
Sole Panelist
Date: May 29, 2007