The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is PrivacyProtect.org, Domain Admin of Nobby Beach, Australia and Denis A Denisov of Penzenskaya, Russian Federation.
The disputed domain name <buygenericxenicalonline.net> is registered with UK2 Group Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2012. On July 25, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 2012, the Registrar 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 31, 2012 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 31, 2012.
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 August 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2012.
The Center appointed Moonchul Chang as the sole panelist in this matter on August 31, 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 Complainant is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and has a global operation active in many countries. The Complainant owns trademark rights regarding the mark XENICAL in many countries including International Registration Nos. 612908 & 699154.
The disputed domain name was registered on July 18, 2012 according to the publicly available WhoIs information. The Respondent uses the disputed domain name to run a website which appears to offer or sell the Complainant’s products.
The Complainant contends that:
(1) The disputed domain name <buygenericxenicalonline.net> is confusingly similar to the Complainant’s mark. It incorporates the Complainant’s mark XENICAL in its entirety. The addition of the generic terms “buy”, “generic” and “online” does not sufficiently distinguish the disputed domain name from the trademark.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
Although the Complainant has never permitted or authorized the Respondent to use the mark XENICAL in the disputed domain name, the Respondent has used the disputed domain name to direct Internet users to sites which apparently are offering or selling the Complainant’s products.
(3) The disputed domain name has been registered and is being used by the Respondent in bad faith. Firstly, the disputed domain name was registered in bad faith because the Respondent had knowledge of the Complainant’s product/mark XENICAL. Secondly, the Respondent is using the disputed domain name in bad faith because it has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of the Respondent’s website or the products posted on the website. As a result the Respondent may generate unjustified revenues and is illegitimately capitalizing on the XENICAL trademark fame.
The Respondent did not reply to the Complainant’s contentions.
The disputed domain name <buygenericxenicalonline.net> entirely incorporates the Complainant’s trademark XENICAL and is likely to be associated with the Complainant which has no apparent connection with the Respondent. Numerous UDRP panels held that where a domain name substantially incorporates a complainant’s trademark, this is sufficient to make a finding that the domain name is “confusingly similar” within the meaning of the Policy (see Amazon.com, Inc. v. MCL International Limited, WIPO Case No. D2000-1678).
The Panel finds the addition of terms “buy”, “generic” and “online”, is not sufficient to avoid a finding of confusing similarity (see Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227). Further, the generic top-level domain (“gTLD”) suffix “.net” can be disregarded under the confusing similarity test (see DHL Operations B.V. v. zhangyl, WIPO Case No. D2007-1653).
Accordingly, the Panel finds the first element under paragraph 4(a) of the Policy has been met by the Complainant.
Under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on the Complainant. However, once the Complainant presents a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent (see Belupo d.d. v. WACHEM d.o.o. WIPO Case No. D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Firstly, the Panel considers that in the absence of any license or permission from the Complainant to use the Complainant’s trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed. Such is the case here, in as much as the Complainant is widely known in the pharmaceutical field and did not give any license or other permission to the Respondent to use the mark XENICAL.
Secondly, the Respondent failed to come forward with any appropriate allegations or evidence that might demonstrate its rights or legitimate interests in the disputed domain name to rebut the Complainant’s prima facie case.
Thirdly, there is no evidence presented to the Panel that the Respondent has ever used the disputed domain name in connection with a bona fide offering of goods or services pursuant to the Policy or UDRP jurisprudence. In addition there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name. The name “xenical” has no apparent association with the Respondent.
Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case.
Paragraph 4(a)(iii) of the Policy requires that the disputed domain name “has been registered and is being used in bad faith.” As this requirement is conjunctive, the Complainant must establish both bad faith registration and bad faith use. In addition, the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and other circumstances may likewise lead to a finding of bad faith registration and use.
Since the Complainant’s mark XENICAL is internationally well-known, the Respondent is likely to have registered the disputed domain name with notice of the Complainant’s trademark. The Panel considers that the Respondent in all likelihood registered the disputed domain name to take advantage of the similarity between the disputed domain name and the Complainant’s trademark. Several UDRP decisions stated that bad faith may be inferred from the registration of a well known trademark (see DHL Operations B.V. v. Ali Kazempour, WIPO Case No. D2004-1094).
In addition, the Panel considers that the Respondent uses the disputed domain name, which includes in its entirety the well-known trademark XENICAL, though it has no rights or legitimate interests in the disputed domain name. This is supported by the fact that the Respondent has operated a website located at “www.buygenericxenicalonline.net” which apparently either sells or directs Internet users to sites which are purportedly offering and selling the Complainant’s products. As a result, the Respondent, by using the disputed domain name, is intentionally confusing consumers so as to benefit from its confusing similarity with the trademark XENICAL. Such finding indicates the Respondent’s bad faith in the registration and use of the disputed domain name (see Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103).
Based on the foregoing, the Panel is satisfied that bad faith registration and use have been sufficiently established with respect to the disputed domain name <buygenericxenicalonline.net> in accordance with paragraphs 4(a)(iii) and 4(b) of the Policy.
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <buygenericxenicalonline.net> be transferred to the Complainant.
Moonchul Chang
Sole Panelist
Dated: September 10, 2012