The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, internally represented.
The Respondent is Private Whois buy-xenicalonline.com, c/o buy-xenicalonline.com, Nassau, Bahamas.
The disputed domain name <buy-xenicalonline.com> (the “Domain Name”) is registered with Internet.bs Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2012. On April 3, 2012, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On April 4, 2012, 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 April 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2012.
The Center appointed Nick J. Gardner as the sole panelist in this matter on May 9, 2012. 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 relevant facts are straightforward and can be summarized very briefly as follows:
The Complainant is one of the world’s largest pharmaceutical companies.
One of its products is an oral weight loss medication which it markets under the trade mark XENICAL.
The Complainant has registered the word “xenical” as a trademark in hundreds of countries. By way of example, reference is made by the Complainant to the International Registration No .612908 and No. 699154, with priority dates of August 5, 1993, and April 21, 1998 respectively.
The Panel has been provided with no detail as to the extent of the Complainant’s sales in respect of Xenical or as to how well known the Complainant’s product is. To the best of the Panel’s knowledge “xenical” is a made-up word with no other meaning, coined by the Complainant for its product.
The Respondent is using the Domain Name in connection with a web site “www.buy-xenicalonline.com” which provides a number of links to third party pharmaceutical suppliers which offer for sale what is described as “generic Xenical”.
The Complainant's contentions are straightforward and can be summarized as follows:
The Domain Name is confusingly similar to its trade mark XENICAL in which it clearly has rights. Addition of the generic terms “buy” and “online” does not distinguish the Domain Name.
The Respondent has no rights or legitimate interests in the term “xenical” or the Domain Name. There is no other meaning associated with the term “xenical” other than in relation to the Respondent’s product.
The Domain Name was registered and is being used in bad faith. In this respect the Complainant relies upon Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793 in relation to the sale of on line pharmaceutical products by reference to a registered trade mark relating to the products sold.
The Respondent did not reply to the Complainant’s contentions.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(1) The Domain Name is identical with or confusingly similar to a trade mark 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 Panel finds that the Complainant has rights in the trade mark XENICAL. Although no details have been provided as to turnover or sales figures of the drug under the name “Xenical” in the present Complaint, the Panel notes a wide range of registered trade mark rights in the word “Xenical” by the Complainant.
The Panel finds, the Domain Name is confusingly similar to the XENICAL trade mark. UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is established that, where a mark is the distinctive part of a domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a generic term (such as here the words “buy” and “online” has little, if any, effect on a determination identity or confusingly similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
Accordingly the Panel finds that the Domain Name is confusingly similar to the trade mark XENICAL. Accordingly the first condition of paragraph 4(a) of the Policy has been fulfilled.
XENICAL is as far as the Panel is aware a made-up word with no other meaning save in relation to the Complainant's product. The addition of the words “buy” and “online” do not provide any additional basis for the Respondent to claim rights in the composite word.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Domain Name or to use the XENICAL trade mark. The Complainant has prior rights in the XENICAL trade mark which precede the Respondent’s registration of the Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled
Under the Policy evidence of registration and use in bad faith is established by, amongst other factors, circumstances which indicate that “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” (Policy paragraph 4(b)(iv)). In the present case the Panel concludes that the deliberate use of the Complainant’s brand name as part of the Domain Name is intended to attract customers seeking the Complainant’s product, who are then offered for sale alternative competing products made by persons other than the Complainant. That falls squarely within the type of circumstances to which the Policy refers.
In the present case, the Panel concludes the Respondent was aware of the Complainant’s XENICAL trade mark when it registered the Domain Name. The Panel concludes that the Respondent deliberately selected the Domain Name because of its similarity with the Complainant’s XENICAL trademark. The addition of the words “buy” and “online” suggests to the Panel that the Respondent was deliberately choosing a name with a connection to the Complainant’s product in order to allow it to operate a web site offering links to vendors of products which compete with the Complainant’s product. Further the Panel notes the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of legitimate use that it might have. The Panel infers that none exists.
The Panel agrees with the Complainant that Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793 (a case also concerning XENICAL) is applicable and the Panel adopts the same reasoning as the panel in that case.
As a result, and applying the Policy as noted above and the principles set out in the above referenced case, the Panel finds that the Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <buy-xenicalonline.com> be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Dated: May 21, 2012