The Complainant is F. Hoffmann-La Roche AG, of Basel, Switzerland, represented internally.
The Respondent is PrivacyProtect.org, of Nobby Beach, Queensland, Australia; Sergey Mishin, of Moscow, Russian Federation.
The disputed domain name <buy-xenical-online.com> is registered with 0101 Internet, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2011. On June 29, 2011, the Center transmitted by email to 0101 Internet, Inc. a request for registrar verification in connection with the disputed domain name. On July 8, 2011, 0101 Internet, Inc. 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on July 8, 2011 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 July 8, 2011.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 1, 2011.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on August 10, 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.
Complainant is the owner of the International Registration No. 612908 for the trademark XENICAL in connection with an oral prescription weight loss medication, with a priority date of August 5, 1993. Complainant is also the owner of the International Registration No. 699154 for the XENICAL design mark, with a priority date of April 21, 1998. The disputed domain name was registered on June 09, 2011.
The Complainant alleges that the disputed domain name is confusingly similar with its registered trademarks XENICAL and XENICAL device, as it incorporates the Complainant’s trademarks in its entirety. The Complainant further states that the addition of the generic terms “buy” and “online” does not sufficiently distinguish the disputed domain name from the Complainant’s trademark, referring to the decision Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694, which states that “generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Respondent does not have registered rights for the Xenical term. Furthermore, the Respondent is not a licensee of the Complainant and does not have the Complainant’s permission or authorization to use the XENICAL trademark. Additionally, the Complainant states that the Respondent is using the disputed domain name to direct Internet users to websites which are offering /selling the Complainant’s products. The Complainant further states that the only reason of the Respondent in registering and using the disputed domain name is to benefit from the reputation of the trademark XENICAL and illegitimately trade on its fame for commercial gain and profit. The Complainant refers to the decision Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, which declares that “several cases have found that a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and that is being used to direct consumers to an on-line pharmacy”.
To prove that the Respondent acts in bad faith, the Complainant alleges that:
(1) The Respondent had knowledge of the XENICAL trademark at the time of the registration of the disputed domain name;
(2) The Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondents websites, by creating a likelihood of confusion with the Complainant’s well-known trademark as to the source, affiliation and endorsement of the Respondent’s website or of the products or services posted on or linked to the Respondent’s website and refers to the above mentioned decision which clearly accepted that the bad faith is established when “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy.”;
(3) The Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them so as to attract them to other websites making them believe that the websites behind those links are associated or recommended by the Complainant. It refers to the decision of F. Hoffmann-La Roche AG v. Pavlishin Mihail, WIPO Case No. D2010-0799, which provides “it is evidence of bad faith that Respondent’s website use the XENICAL mark to attract Internet users to sites where Complainant’s products are offered for sale, without Complainant’s consent”.
(4) The Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the XENICAL mark fame.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 15(a) of the Rules requires the Panel to decide the case on the basis of the statements and documents submitted with the Complaint, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used by the Respondent in bad faith.
Complainant has shown that it owns XENICAL trademark rights. The XENICAL trademark is a fanciful designation of source, rather than a word, and thus a strong trademark.
The Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a Complainant’s registered trademark, that may be sufficient to establish a confusing similarity for purposes of the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615. In this Panel’s view, the addition of the terms “buy” and “online” does not sufficiently distinguish the disputed domain name from the Complainant’s trademark.
Additionally the Respondent has brought no argument in support of his contention that the disputed domain name is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain name. It is clear that the Respondent has not demonstrated any bona fide offering of goods and services by using the disputed domain name. Nor has the Respondent shown that it has been commonly known by the disputed domain name. The Complainant showed, inter alia, that the Respondent has neither a license nor any other permission to use the disputed domain name. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks right or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. The Panel finds that given the use formerly made of the disputed domain name, when the Respondent registered the disputed domain name it knew that XENICAL was the trademark of the Complainant, and that it registered the disputed domain name because it would be recognized as such.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(b) of the Policy provides a list of indicative circumstances that suggest bad faith registration, however, such list is not exhaustive and a finding of bad faith depends on the circumstances of each case.
Complainant's use and registrations of the XENICAL trademark predate Respondent's registration of the disputed domain name. Given the fanciful nature of the XENICAL trademark, and the sequence of events, the Panel finds it likely that Respondent was aware of Complainant's trademark when the disputed domain name was registered, and that Respondent chose the disputed domain name intentionally for the purpose of trading on the value of Complainant's trademark.
Based on the circumstances, in the Panel’s view, it is reasonable to infer that when the Respondent registered the disputed domain name, it likely knew that the disputed domain name incorporated the trademark of the Complainant. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that this knowledge may be considered, in appropriate cases, also as an indication of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Thus it is clear to this Panel that by using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. In view of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.
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 <buy-xenical-online.com> be transferred to the Complainant
Dilek Ustun Ekdial
Sole Panelist
Dated: August 24, 2011