The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland.
The Respondent is Maniamin James of New York, New York, United States of America.
The disputed domain name <xenicalbuy.net> is registered with Cloud Group Limited (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2012. On November 23, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 23, 2012, the Registrar 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 November 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2012.
The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on January 3, 2013. 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 and its affiliated companies constitute a leading research-focused healthcare group engaged in research and development of pharmaceutical and diagnostic products. The Complainant is an internationally recognized pharmaceutical company and is a member of the Roche Group operating in more than 100 countries.
The Complainant has obtained the ownership for XENICAL which is protected as a trademark in numerous countries around the world. The Complainant submitted evidence that it holds both the International word trademark with registration No. 612908 and the International design trademark with registration No. 699154 for XENICAL. Priority for the word mark XENICAL is August 5, 1993.
Hoffmann-La Roche Inc., also F. Hoffmann-La Roche AG, of Basel, Switzerland, is owned and controlled by Roche Holding AG, a company organized and doing business under the laws of Switzerland.
The mark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off.
The Respondent has registered the disputed domain name <xenicalbuy.net> on November 6, 2012. After several attempts, the Panel has not been able to enter into the website at the disputed domain name. The Panel will therefore refer to the use of the website at the time the Complaint was filed and the evidence submitted by the Complainant.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is and has been for many years the rights holder of the mark XENICAL in numerous countries worldwide. The mark is used in the pharmaceutical sector to designate an oral prescription weight loss medication used to help obese people lose weight and keep this weight off. The Complainant’s use and registration of the mark XENICAL predates the Respondent’s registration of the disputed domain name.
The Complainant contends that the disputed domain name <xenicalbuy.net> is confusingly similar to the Complainant’s XENICAL mark as it incorporates the mark in its entirety.
Numerous UDRP cases have established that the addition of a generic element, such as the word “buy” is not capable to sufficiently distinguish the disputed domain name from the trademark.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant has trademark rights for XENICAL, and no license, permission, authorization or consent was granted to the Respondent to use the XENICAL trademark in the disputed domain name.
The Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the reputation of the Complainant’s trademark XENICAL.
Based on the evidence submitted to the Panel, the Complainant establishes that the website associated with the disputed domain name redirects consumers to an online pharmacy which purports to offer for sale generic XENICAL and other drugs, including weight loss drugs in direct competition with XENICAL, and without prescription.
In light of several UDRP cases, the use by the Respondent of the disputed domain name to redirect Internet users to an online pharmacy demonstrates the lack of a legitimate interest in the disputed domain name.
(c) The disputed domain name was registered and is being used in bad faith.
The Complainant submits that the disputed domain name was registered and is being used in bad faith by the Respondent. On the one side, because the registration took place on November 6, 2012, which evidences that the Respondent was well aware of the prior legitimate rights of the Complainant; and, on the other side, because the Respondent attempts to attract Internet users to its website, by creating a likelihood of confusion with the Complainant’s well-known marks as to the source, affiliation and endorsement of the Respondent’s website, which has provided the Respondent with unjustified revenues.
The Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them by making them believe that the website is associated or recommended by the Complainant.
Finally, based on previously rendered UDRP cases, the Complainant concludes that this third condition is met as bad faith is established by the mere fact of using the disputed domain name as a forwarding address to an online pharmacy, which in the present case promotes and offers for sale the Complainant's drugs, including generic XENICAL drugs, as well as various other drugs which directly compete with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Notwithstanding a respondent’s default, the complainant must nevertheless still establish each of the three elements required by paragraph 4(a) of the Policy (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”), paragraph 2.1 and paragraph 4.6, and the relevant decisions cited therein). Nonetheless, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and, in the absence of exceptional circumstances, draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
This Panel has found no such exceptional circumstances that would justify the Respondent’s failure to submit a Response. The Panel therefore infers that by not replying to the Complainant’s contentions, the Respondent does not deny the facts asserted and contentions made by the Complainant (e.g. Roche Products Limited v. Private Whois Service, WIPO Case No. D2010-1983; Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994).
As a result, asserted facts that are not unreasonable will be taken as true by this Panel, including the fact that the Respondent is selling a generic product, not manufactured by the Complainant, and other weight loss medications on a Canadian online drug store through the linked site “www.bestcapills.com”.
Furthermore, in accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, this Panel will examine whether each of the following three elements are present:
(i) the disputed 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) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Consequently, this Panel shall further analyze the eventual concurrence of these three grounds in the present case.
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).
First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to XENICAL well before the disputed domain name was registered.
Secondly, it is noted that the disputed domain name is not ad pedem litterae identical to the trademark XENICAL owned by the Complainant as the disputed domain name incorporates the trademark XENICAL in its entirety and merely adds the descriptive terms “buy”. The issue herein is therefore whether there is confusing similarity between the trademark XENICAL and the disputed domain name.
This Panel relies on previous UDRP decisions which have held that when a domain name wholly incorporates a complainant’s registered trademark, as the dominant element, it is sufficient to establish confusing similarity for purposes of the Policy (e.g. Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S.r.l., WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282).
In the same vein, this Panel finds that as the word “Xenical” has no meaning in the English language and is therefore highly distinctive. Given such distinctiveness, the domain name incorporating the XENICAL trademark in its entirety is confusingly similar to such mark.
This Panel also believes that the use of the descriptive word “buy” in this case, does not affect confusing similarity and therefore that it does not sufficiently distinguish the disputed domain name from the Complainant’s mark.
Such conclusion relies particularly on previous UDRP decisions which concluded that the addition of merely generic or descriptive elements such as “buy” in the disputed domain name “is not sufficient to render the domain name dissimilar or to prevent consumer confusion” (F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049 involving <buy-xenical-cheap-online.com>; see also other UDRP decisions involving the XENICAL mark such as F. Hoffmann-La Roche AG v. Brave, WIPO Case No. D2006-1603 or F. Hoffmann-La Roche AG v. Direct Response Marketing Ltd., WIPO Case No. D2006-1370). Also, this Panel finds, similarly to other panels, that “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” (Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694).
This Panel further considers that the likelihood of confusion is further increased by the addition of the generic word “buy” to the registered trademark as any person would likely believe that he or she could order the Complainant’s XENICAL product through the website at the disputed domain name.
Consequently, this Panel finds that the mere addition of generic term “buy” to the highly distinctive trademark XENICAL does not eliminate the confusing similarity between the two, and that in this case this Panel believes that the choice of the word “buy” increases the likelihood of confusion.
Thus, according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name <xenicalbuy.net> is confusingly similar to the Complainant’s XENICAL trademark.
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
This Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademarks has been granted to the Respondent.
Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements, which are according to the leading Oki Data decision as follows (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903):
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
This Panel finds, similarly to other UDRP panels, that the Oki Data criteria are appropriate even when the respondent is not an authorised reseller, such as it is the case in this dispute (National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524).
Examination of the website operating under the disputed domain name, as it appeared before the Complainant initiated this dispute and as properly evidenced by the Complainant, shows that it does not fulfill the Oki Data criteria. Indeed, the Respondent does not actually offer the genuine XENICAL products on its website but indicates “Xenical For Sale” and redirects users to an online pharmacy upon clicking on “Visit Pharmacy” which in fact supplies a third party generic drug as well as other products of third party competitors of the Complainant. Furthermore, if a user would scroll all the way to the bottom of the website as it has been submitted to the Panel, he or she would find no indication that the page was not associated with the Complainant, the owner of the trademark XENICAL, and would not be able to determine who the Respondent was.
Finally, this Panel finds in light of several similar UDRP decisions that the Respondent’s use of the disputed domain name to redirect Internet users to an online pharmacy clearly demonstrates the Respondent’s lack of a legitimate interest in the disputed domain name (see in particular F. Hoffmann-La Roche AG v. Brave, WIPO Case No. D2006-1603 regarding <buyxenical.net>; see also for instance Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814; Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784; Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199).
For all the foregoing reasons, this Panel finds the Respondent’s use of the disputed domain name cannot be considered to be in accordance with a bona fide offering of goods or services or for any other purpose described in paragraph 4(c) of the Policy. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name <xenicalbuy.net>.
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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”.
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.
When assessing the bad faith, the following two elements should be considered: (1) whether the Respondent knew of the Complainant and its trademark when it registered the domain name, and (2) whether the Respondent targeted the Complainant to benefit from confusion generated by the similarity between the disputed domain name and the trademark (Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630; Avon Products, Inc. v. Mary Ultes, WIPO Case No. D2009-0471).
This Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the disputed domain name. In this respect, this Panel believes, after reviewing the website and its link as evidenced by the Complainant, that the Respondent must have known and be aware of the prior rights on the trademark XENICAL and the associated products at the time of the registration on November 6, 2012.
Also, this Panel finds that given the fact that the trademark XENICAL is not descriptive and devoid of meaning other than in relation to the products of the Complainant (supported by F. Hoffmann-La Roche AG v. Brave, WIPO Case No. D2006-1603 involving <buyxenical.net>), the “Respondent must have suspected that the Complainant would have registered trademark rights in the name” (F. Hoffmann-La Roche AG v. NHP Trust, WIPO Case No. D2006-0076 involving <xenical-buy.com>) and thus “it is very unlikely that the Respondent would have registered a domain name incorporating the Mark without knowledge of the Mark” (Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240). This Panel also believes that “[i]t defies common sense to believe that Respondent coincidentally selected [this] precise domain name[…] without any knowledge of Complainant and its […] Trademark[…]” (Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415).
Furthermore, this Panel believes that the Respondent’s actual use of the disputed domain name appears to mislead consumers and confuse them by making them believe that the website is associated, fostered or recommended by the Complainant. In fact the Complainant’s evidence shows that the disputed domain name resolves in misdirecting consumers looking for the Complainant’s website in order to divert traffic to an online pharmacy supplying a generic weight loss drug, without prescription, as well as other products of competitors of the Complainant. As a result, this Panel infers from such behaviour that the Respondent’s purpose in registering the disputed domain name appears to have been to capitalize on the reputation of the Complainant’s trademarks, and thus generate unjustified revenues.
In light of the foregoing, and as it has been deemed by numerous UDRP decisions, it is clear that the Respondent intentionally registered and used the disputed domain name for commercial gain in order to misleadingly divert customers and create confusion as to the Complainant’s trademarks as to the source, affiliation, or endorsement of the Respondent’s website as addressed within the meaning of paragraph 4(b)(iv) of the Policy (F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049; Roche Products Limited v. Sergey Unikovskiy, WIPO Case No. D2011-1597; Sanofi-Aventis, Aventis Pharma S.A., Merrell Pharmaceuticals Inc. v. George Breboeuf, WIPO Case No. D2005-1345).
This Panel finds that the disputed domain name was registered and used in bad faith. Such conclusion is further supported by the decision to which the Complainant refers, which states that bad faith is established when the “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy” (Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784). Furthermore, the website resolving to the domain name at issue has been used to provide an online pharmacy which offers XENICAL as well as various other drugs which directly compete with the Complainant. The use of the disputed domain name thus appears to be an attempt to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark. This is evidence of bad faith registration and use pursuant to the Policy, paragraph 4(b) (also supported by F. Hoffmann-La Roche AG v. Brave, WIPO Case No. D2006-1603, citing Pfizer Inc v. Juan Gonzales, WIPO Case No. D2004-0589).
According to paragraphs 4(a)(iii) and (b) of the Policy, this Panel finds that the disputed domain name <xenicalbuy.net> was registered and used by the Respondent in bad faith under the Policy.
For all 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 <xenicalbuy.net> be transferred to the Complainant.
Benoit Van Asbroeck
Sole Panelist
Date: January 17, 2013