WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Onotole Vasermane
Case No. D2010-2074
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented by F. Hoffmann-La Roche AG, Switzerland.
The Respondent is Onotole Vasermane of Geroy, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <buy--xenical.com> is registered with Center of Ukrainian Internet Names (UKRNAMES).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2010. On December 2, 2010, the Center transmitted by email to Center of Ukrainian Internet Names (UKRNAMES) a request for registrar verification in connection with the disputed domain name. On December 3, 2010, Center of Ukrainian Internet Names (UKRNAMES) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Complaint was filed in the English language to which the Respondent did not object. The Center transmitted all communications to the parties in both Russian and English regarding the language of the proceeding. The Center appointed the Panel proficient in both English and Russian languages.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2011.
The Center appointed Olga Zalomiy as the sole panelist in this matter on January 19, 2011. 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
By and large, the facts relating to some basic technical issues of relevance can be considered undisputed and are summarized as follows:
The Complainant is a pharmaceutical company domiciled in Switzerland.
The Respondent is the registrant of the disputed domain name <buy--xenical.com>, registered on October 10, 2010. The Registrar is Center of Ukrainian Internet Names (UKRNAMES) that maintains its website in the Russian language. The language of the registration agreement that is used by the Registrar for the disputed domain name includes Russian.
The postal address of the Respondent, as contained in the Registrar’s registry, is a fabricated address in a non-existent town of Geroy, Russian Federation. The Center made substantial efforts to mail the Respondent the case documents using the postal address in the Registrar’s registry. After these attempts, it became evident that the postal address of record for the Registrant is false.
The disputed domain name <buy--xenical.com> directed users to an online pharmacy that sells XENICAL and other drugs. The content of the website was entirely in English and contained a USA-based customer support phone number. On December 20, 2010, the Respondent “parked” the website and ceased to use the disputed domain name to direct users to the online pharmacy.
5. Parties’ Contentions
A. Complainant
1. The Complainant contends that the disputed domain name is confusingly similar to its trademark. In support of its claim, the Complainant submits that it is one of the world’s leading research focused health care companies and has operations in more than 100 countries. The Complainant states that its mark XENICAL is protected in many countries, and cites to the International registrations Nos. 612908 and 699154, with a priority date of August 5, 1993. The Complainant maintains that the mark XENICAL designates an oral prescription weight loss medication. The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s mark, because it incorporates the mark it its entirety, and that the addition of the generic term “buy” and two hyphens does not sufficiently distinguish the disputed domain name from the Complainant’s mark. Finally, the Complainant states that its use and registration of the mark XENICAL predates the date of the disputed domain name registration.
2. The Complainant submits that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant argues that it has exclusive rights in the XENICAL mark, and that there has never been any relationship between the Complainant and the Respondent that would give rise to a license, permission or consent to the Respondent’s use of XENICAL in the disputed domain name. The Complainant further contends that the Respondent uses the disputed domain name for commercial gain, and for the purpose of capitalizing on the fame of the Complainant’s mark. The Complainant maintains that the disputed domain name alludes to the Complainant. Finally, the Complainant states that the disputed domain name directs users to an online pharmacy.
3. The Complainant argues that the disputed domain name was registered and is being used in bad faith. The Complainant argues that the disputed domain name was registered in bad faith because, on the date of the Registration, the Respondent had knowledge of the Complainant’s well-known product /mark XENICAL. The Complainant submits that the disputed domain name is being used in bad faith because, by viewing the website, one realizes that the Respondent has intentionally attempted to attract views to the Respondent’s website by creating likelihood of confusion with the Complainant’s mark. The Complainant contends there is likelihood of confusion that the Complainant endorses the Respondent’s website, products or services. The Complainant submits that the bad faith is established because the Respondent is using the disputed domain name as a forwarding address to a for-profit online pharmacy. In the Complainant’s view, the Respondent may generate unjustified revenues, and is illegitimately capitalizing on the XENICAL trademark fame.
The Complainant requests the disputed domain name to be transferred to the Complainant.
In support of its factual presentation, the Complainant submitted documentary evidence in the form of printouts from the WhoIs database from the website of the Registrar - Center of Ukrainian Internet Names (UKRNAMES), and the website: “www.buy--xenical.com”. In addition, the Complainant presented copies of the XENICAL trademark registration by the WIPO that appears to be in the French language, as well as copies of the WIPO UDRP decisions that it cited in support of its contentions.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the proceeding
Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. In adopting language other than that of the registration agreement, the Panel must exercise such discretion in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs. See paragraphs 10(a) and 10(b) of the Rules; Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004.1
In this case, the language of the registration agreement is Russian. There is no agreement between the parties as to the use of a different language in this proceeding. Therefore, the starting point is that the language of the proceeding would typically be Russian.
Nevertheless, paragraph 11 of the Rules gives the Panel the right to determine the language of the proceeding upon consideration of all relevant circumstances and in the spirit of fairness. In this case, the Complainant requested English to be the language of the proceeding. The Respondent (who was given fair opportunity to do so as discussed further below)did not object.
In support of its request, the Complainant argued that:
1) It was unable to determine the proper language of the Registration Agreement as the Registrar’s website exists entirely in Russian;
2) The Respondent’s website’s content exists entirely in English; and
3) both the Respondent and the Registrar are able to use the English language. In support of this proposition, the Complainant points out that the Registrar is an ICANN accredited company, and that in a previous WIPO case2 involving the same Registrar, the complaint was filed in English and was accepted by the Panel.
The Panel gave no weight to the Complainant’s argument about the Registrar’s ability to use the English language because, in light of the paragraph 11 of the Rules, the Panel finds it irrelevant. The Panel also points out that the Complainant did not show that it made any effort to identify the language of the Registration Agreement. Therefore, the Panel disregards this argument.
Nonetheless, having examined all of the circumstances of the case, the Panel finds English to be an appropriate language of the proceeding. First, the Center sent the notification of the Complaint documents as well as all case related communications to the Respondent in both languages, and appointed the Panel proficient in both Russian and English. Thus, the Respondent had a fair chance to learn about his right to object to the language of the proceeding. The Respondent failed to do so. Further, the Respondent’s website is (or at least was) in English. The website also provided a help line phone number with a United States area code. This constitutes a strong inference that the Respondent understands and is able to use English language. Finally, after the Complaint was communicated to the Respondent, the Respondent took down and “parked” his website. Therefore, it appears that the Respondent received the Complaint and was able to understand its content in English. It is well-established that in the circumstances similar to those in the present case, use of the language other than the language of the registration agreement does not unfairly prejudice the Respondent. See Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047; Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037.
The Panel, therefore, finds English to be an appropriate language for this administrative proceeding.
6.2. Analysis of the Complaint
Paragraph 15(a) of the Rules provides that the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the UDRP, the Rules, and any rules and principles of law that it deems applicable.
Pursuant to paragraph 4.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Overview of WIPO Panel Views”)3, while the UDRP does not operate on a strict doctrine of precedent, panels’ decisions’ consistency with prior panel decisions dealing with similar fact situations ensure effectiveness and predictability of the USRP system.4 Therefore, where applicable, this Panel will take the WIPO panel views into consideration.
Paragraph 4.6. of the WIPO Overview of WIPO Panel Views states that “the respondent’s default does not automatically result in a decision in favor of the complainant.” The complainant must establish “each of the three elements required by paragraph 4(a) of the UDRP” which require the complainant to support its assertions with actual evidence in order to succeed in a proceeding. 5
Therefore, to succeed in its claim, the Complainant must prove each of the following three elements:
1) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2) The Respondent has no "rights or legitimate interests in respect of the domain name"; and
3) The domain name "has been registered and is being used in bad faith."
The next step, therefore, is to determine whether the Complainant satisfied its burden of proof.
A. Identical or Confusingly Similar
Paragraph 1.1. of WIPO Overview of WIPO Panel Views provides that if the complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights irrespective of the location of the registered mark. In this case, in support of its claim of ownership in the mark XENICAL, the Complainant presented what appears to be a copy an international trademark registration in the mark XENICAL issued by the World Intellectual Property Organization (“WIPO”). The Panel notes that the language of the proceeding is English and the evidence appears to be in the French language, in which the Panel is not proficient. While the name of the owner of the mark XENICAL appears to match the name of the Complainant, the Panel cannot make a decision of the basis of the evidence submitted.
The Complainant also submitted a copy of F. Hoffmann-La Roche AG v. Pinetree Development, Ltd, WIPO Case No. D2006-0049, involving the same Complainant and the XENICAL mark. In that case, the panel found that the Complainant was the owner of the trademark XENICAL. Since this Panel is not aware what evidence was provided to the panel in the 2006 case, the Panel cannot rely solely on the finding of Complainant’s ownership in that case.
Nevertheless, pursuant to paragraph 4.5. of the WIPO Overview of WIPO Panel Views, ‘the panel may undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision.”6 The Panel believes that the circumstances of the case warrant a limited factual research of the public record. A search of the WIPO trademark database reveals that the Complainant has had rights in the mark XENICAL since December 14, 1993 (Registration Nos. 699154, and 612908 ).7 Based on the foregoing the Panel concludes that the Complainant has rights in the mark XENICAL.
The disputed domain name is not identical to the XENICAL mark, but it incorporates the XENICAL trademark adding the prefix “buy” and two hyphens. The practice of adding a prefix or suffix to a well-known trademark has been the subject of numerous UDRP decisions. Whether, in these circumstances, “the trademark and the disputed domain name are confusingly similar depends on many factors, including the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin.” Philip Morris USA Inc. v. n/a, WIPO Case No. D2004-0462; Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037.
In this case the disputed domain name <buy—xenical.com> is confusingly similar to the Complainant’s mark for the following reasons:
1) It incorporates, in its entirety, the Complainant’s XENICAL mark. Where a domain name incorporates Complainant’s mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the UDRP. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105;
2) The addition of the generic word “buy” and two hyphens does not alleviate the confusion. See Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, supra;
3) The prefix “buy” exploits the trademark signification of XENICAL as an indication of origin, because consumers will understand the disputed domain name to refer to the sale of the Complainant’s product;
4) It is well-established that the gTLD suffix “.com” or equivalent, being an inevitable part of the domain name, has no bearing on the question of confusing similarity. See Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-03748;
5) The Complainant’s 1993 registration date of the mark XENICAL predates the date of the 2010 disputed domain name registration.
The Panel, therefore, holds that the first element of paragraph 4(a) of the UDRP has been satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the UDRP, a complainant must prove that the Respondent has no rights or legitimate interest in the disputed domain name. Paragraph 14 (a) of the Rules provides that if a party fails to comply with any provision of the Rules, the Panel shall make a decision on the administrative proceedings on the basis of the complaint and, in accordance with Paragraph 14 (b) of the Rules, shall “draw such inferences therefrom as it considers appropriate.”
Based on paragraph 2.1. of the WIPO Overview of WIPO Panel Views 9, to satisfy the requirements of paragraph 4(a)(ii) of the UDRP, the complainant must make out a prima facie case that the respondent lacks rights or legitimate interest in the domain name. Pursuant to paragraph 2.2. of the WIPO Overview of WIPO Panel Views, if the prima facie case has been made and the Respondent “fails to show one of the circumstances under paragraph 4(c) of the UDRP, “then the Respondent may lack a legitimate interest in the domain name” and a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
It has been established that the Complainant has exclusive rights in the XENICAL mark. The Complainant never gave the Respondent a license, permission or consent to use XENICAL in his domain name. The printouts of the Respondent’s website submitted by the Complainant show that the website is used as an online pharmacy which sells XENICAL and other drugs. The printout from the Respondent’s website shows no disclaimers concerning the relationship between the parties. Therefore, the Panel finds that the Respondent uses the disputed domain name for commercial gain, and for the purpose of capitalizing on the fame of the Complainant’s mark.
Consequently, the Panel finds that the Complainant made a prima facie case that the Respondent lacks rights or legitimate interest in the disputed domain name. Since the Respondent failed to show the opposite, the second element of paragraph 4(a) has been satisfied.
C. Registered and Used in Bad Faith
The Panel now turns to the third element of the paragraph 4(a) of the UDRP. It is well-established that the Policy requires “a positive finding that both the registration and use were in bad faith.” Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.10
Paragraph 4(b)(iv) of the UDRP provides an open list of circumstances that, “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” Pursuant to paragraph 4(b)(iv) of the UDRP, registrant’s intentional attempts to attract, for commercial gain, Internet users to his website, by “creating likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or location or product or service.
i). Registration in bad faith
The Panel finds that the disputed domain name was registered in bad faith for the following reasons:
1) The disputed domain name was registered seventeen years after the Complainant registered its trademark XENICAL;
2) The Respondent’s choice of a domain name that incorporated the Complainant’s mark in its entirety, and the addition of the generic word “buy” are indicative of the Respondent’s knowledge of, and desire to, capitalize on the goodwill and reputation of the XENICAL drug.
ii). Use in Bad Faith
The Respondent’s use of the disputed domain name exemplifies circumstances of bad faith use set forth in paragraph 4(b) of the UDRP. As discussed earlier, the evidence in record shows that the Respondent used the disputed domain name for an online pharmacy, where he sold the drug XENICAL among other medications. By incorporating the mark XENICAL in the disputed domain name and by offering the drug for sale, the Respondent created likelihood of confusion with the Complainant’s mark as to “the source, sponsorship, affiliation of endorsement” of his website. Furthermore, in Hoffmann-La Roche AG v. Pinetree Development, Ltd, WIPO Case No. D2006-0049, a case nearly identical to this one, the panel found that use of a domain name to direct users to an online pharmacy, which offers XENICAL as well as other drugs, is indicative of an attempt to attract, for commercial gain, Internet users to his website. See also Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (“respondent’s use of the domain name at issue to redirect Internet users to an online pharmacy demonstrates the Respondent’s lack of a legitimate interest in the domain names.”);
iii). Continuous use in Bad Faith
Paragraph 4(a)(iii) of the UDRP requires that the domain name was “being used” in bad faith. This language indicates that the bad faith use of the domain name must be continuous. A printout from the case file of the Respondent’s website dated December 20, 2010, shows that the Respondent is no longer using the disputed domain name to attract users to the online pharmacy. The Respondent “parked” the domain name page. However, pursuant to paragraph 3.2. of the WIPO Overview of WIPO Panel Views, “the lack of active use of the domain name does not as such prevent a finding of bad faith.” In addition, current bad faith may be inferred from passive holding of a domain name in certain circumstances. Examples of such circumstances include “complainant having a well-known mark, no response to the complaint, concealment of identity and impossibility of conceiving good faith use of the domain name.” WIPO Overview of WIPO Panel Views, paragraph 3.2.
Notably, all of those circumstances are present in this case:
(i) The Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in many countries,
(ii) The Respondent failed to respond to the Complaint;
(iii) The case file submitted by the Center, in particular, the WhoIs information and the registration verification reply provided by the Registrar indicate that the postal address provided by the Respondent with the Registrar are false (in the sense that they apparently refer to non-existent locations). Therefore, it appears that the Respondent purposefully used false contact information to conceal his true identity;
(iv) The Respondent appears to have actively provided, and failed to correct, false contact details, in breach of his registration agreement, and
(v) Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be unlawful.
For all the foregoing reasons, the Panel concludes that the disputed domain name was registered and is being used in bad faith. Accordingly, the third element of paragraph 4(a) of the UDRP has been satisfied.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the UDRP and 15 of the Rules, the Panel orders that the domain name, <buy--xenical.com> be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Dated: January 30, 2011
1 See also Biotechnology and Biological Sciences Research Council v. Kim Jung Hak, WIPO Case No. D2009-1583.
2 Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Vyacheslav Malevich, WIPO Case No. D2010-1143.
3 https://www.wipo.int/amc/en/domains/search/overview/
4 See also Geobra Brandstätter GmbH & Co KG v. Only Kids Inc, WIPO Case No. D2001-0841; Fresh Intellectual Properties, Inc. v. 800Network.com, Inc., WIPO Case No. D2005-0061; PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D2004-0338.
5 See also The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465; Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383.
6 See also Société des Produits Nestlé SA v. Telmex Management Services, WIPO Case No. D2002-0070; Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038; Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014.
7 https://www.wipo.int/cgi-mad/guest/ilist5?ENG+MADRID-FULL.vdb+11-00+41302977-KEY+3+BASICHTML-ENG+1+256+SEP-0/HITNUM,PN,MAR,IMAGE,IMAGE+25+MAR%2fxenical+; https://www.wipo.int/cgi-mad/guest/ifetch5?ENG+MADRID-FULL.vdb+11-00+41302977-KEY+256+0+2052795+BASICHTML-ENG+1+3+1+25+SEP-0/HITNUM,PN,MAR,IMAGE,IMAGE+MAR%2fxenical+
8 See also RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.
9 See also Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
10 See also Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.