The Complainant is F. Hoffmann-La Roche AG, of Basel, Switzerland, represented by Jérôme Rhein, Switzerland.
The Respondent is Private Whois xenical-shop.net, Private Whois xenical-shop.net, Private Whois valiumbuyrx.net, Private Whois valiumbuyrx.net, of Nassau, Bahamas.
The Disputed Domain Names <valiumbuyrx.net> and <xenical-shop.net> are registered with Internet.bs Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2011. On September 30, 2011, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the Disputed Domain Names. On September 30, 2011, Internet.bs Corp. transmitted by email to the Center its verification response confirming that the 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” 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 October 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2011.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on November 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.
The Complainant is a Swiss healthcare company in the fields of pharmaceuticals and diagnostics. The Complainant holds registrations for VALIUM and XENICAL marks in over one hundred countries worldwide, inter alia, International Registration No. 250784 in connection with VALIUM and International Registration No. 612908 and No. 699154 in connection with XENICAL.
The mark VALIUM designates a sedative and anxiolytic drug in psychotropic medications, while the mark XENICAL designates an oral prescription weight loss medication to treat obesity.
The Respondent registered the Disputed Domain Names <valiumbuyrx.net> and <xenical-shop.net> on September 19, 2011.
The Complainant contends that the Disputed Domain Names registered by the Respondent are confusingly similar to its VALIUM and XENICAL trademarks in that the Disputed Domain Names respectively incorporate “valium” and “xenical” in their entirety. The priority date for the mark VALIUM is October 20, 1961 and August 5, 1993 is the priority date for the mark XENICAL, both of which predate the registration of the Disputed Domain Names. The addition of the terms “buy”, “rx”, a hyphen or “shop” does not sufficiently distinguish the Disputed Domain Names from the Complainant’s VALIUM and XENICAL trademarks.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant possesses exclusive trademark rights in the words VALIUM and XENICAL and no license, permission or authorization has been granted to use VALIUM or XENICAL in connection with the Disputed Domain Names. The only conceivable reason for the Respondent to register and use the Disputed Domain Names is to capitalize on the fame of the Complainant’s marks VALIUM and XENICAL for commercial gain and profit.
The Complainant further contends that the Respondent registered the Disputed Domain Names and is using them in bad faith. The Complainant states that the Respondent had knowledge of the Complainant’s products and marks VALIUM and XENICAL at the time of registering the Disputed Domain Names. By using the Disputed Domain Names, the Respondent is intentionally attempting to attract Internet users, for commercial purposes, to its websites by creating a likelihood of confusion with the Complainant’s famous trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of the products or services posted on or linked to the Respondent’s websites.
The Respondent did not reply to the Complainant’s contentions.
To succeed in a complaint, the Complainant must, in accordance with paragraph 4(a) of the Policy, satisfy the Panel of the following three elements:
(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.
The Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
The Complainant holds numerous registrations for the marks VALIUM and XENICAL, inter alia, International Registration No. 250784 in connection with VALIUM and International Registration No. 612908 and No. 699154 in connection with XENICAL, with priority dates of October 20, 1961 and August 5, 1993 respectively. The Panel finds the Complainant has trademark rights in VALIUM and XENICAL.
The Disputed Domain Names incorporate the Complainant’s trademarks VALIUM and XENICAL respectively in their entirety, which in itself is sufficient to support the claim that the Disputed Domain Names are confusingly similar to the Complainant’s marks. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (“When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar”), and also Oakley, Inc. v. Zhang Bao, WIPO Case No. D2010-2289. The addition of generic or descriptive words, including “buy” and “rx”, a hyphen or “shop”, is not sufficient to dispel the confusing similarity arising from the incorporation of the Complainant’s VALIUM and XENICAL marks. See PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027.
The Panel holds that the Disputed Domain Names are confusingly similar to the Complainant’s trademarks.
The Complainant has exclusive trademark rights in the words VALIUM and XENICAL, and has not licensed, permitted or authorized the Respondent to use VALIUM or XENICAL in connection with the Disputed Domain Names.
The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names under paragraph 4(c) of the Policy. According to a consistent series of WIPO UDRP decisions, in such a case the burden of production shifts to the Respondent to rebut the evidence. See among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
The Panel notes that the Respondent has failed to file a response to prove its rights or legitimate interests in the Disputed Domain Names under paragraph 4(c) of the Policy. For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
The Complainant is one of the leading research-focused healthcare companies in the fields of pharmaceuticals and diagnostics and has global operations in more than 100 countries. The Complainant’s product and trademark VALIUM is known worldwide as psychotropic medication, while XENICAL is used as medication to treat obesity.
As evidenced by the documents submitted by the Complainant, Internet users typing in the Disputed Domain Name <xenical-shop.net> will access a website showing “BUY XENICAL ONLINE”. By clicking “Click Here to Buy Xenical”, Internet users are directed to an online pharmacy “www.liveuspharmacy.com”, which sells, inter alia, Xenical branded medication. A similar situation occurs with the Disputed Domain Name <valiumbuyrx.net>. The above indicates that the Respondent “knew or should have known” of the Complainant’s products/trademarks VALIUM and XENICAL when registering the Disputed Domain Names, which constitutes bad faith. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004.
The Panel finds that bad faith is established by the Respondent’s use of the Disputed Domain Names to divert Internet users to a for-profit on-line pharmacy, which sells VALIUM and XENICAL branded products as well as the products of others. The Panel views the acts of the Respondent as amounting to “opportunistic exploitation of inevitable Internet user confusion for the Respondent’s own benefit” which indicates bad faith. See Sound Unseen, Ltd.; Apple Bottoms, LLC; and Cornell Haynes p/k/a “Nelly” v. Patrick Vanderhorst, WIPO Case No. D2005-0636. The Respondent is intentionally creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s affiliated online pharmacy website.
Failure of the Respondent to respond to the Complaint may be further indicative of bad faith. See Kids LLC and/or Awesome Kids L.L.C. v. Selavy Comm, WIPO Case No. D2001-0210.
In light of the above facts and reasons, the Panel therefore finds that the Disputed Domain Names were registered and are being used in bad faith pursuant to 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 Names, <valiumbuyrx.net> and <xenical-shop.net>, be transferred to the Complainant.
Jacob (Changjie) Chen
Sole Panelist
Dated: November 23, 2011