The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is N/A - Tomson Eneriho of Virginia Beach, United States of America.
The disputed domain name <buy-xenicalonlineq.com> is registered with DomainContext, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on April 15, 2013. On April 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2013, 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 April 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2013.
The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on May 15, 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 Complaint is a leading pharmaceutical company having global operations in more than 100 countries. One of its marks is XENICAL originally registered in Switzerland on August 5, 1993 and later subject of the international registrations No. 612908 of December 14, 1993 and No.699154 both to cover medicines (inter alia) (Annex 3 to the Complaint) as well in a multitude of countries worldwide.
For twenty years, the Complainant has used the XENICAL mark in connection with a weight-loss medication.
On April 2, 2013, twenty years after the first registration of the Complainant’s mark that is extensive used around the world, the Respondent registered the disputed domain name <buy-xenicalonlinq.com>.
This disputed domain name leads Internet users to a website showing in the second page the title “xenical (Generic Orlistat) and offering the weight-loss medication in the different doses, and also linking to other websites which offer a wide variety of drugs.
The Complainant argues, that together with its affiliated companies is one of the world’s leading research-focused healthcare groups in the fields of pharmaceutical and diagnostics and having global operations in more than 100 countries. The Complainant’s mark XENICAL is protected as trademark in a multitude of countries worldwide. As an example reference is made to the International Registration Nos. 612908 and 699154, certificates of which are submitted in the Annex 3 to the Complaint. Priority date for the mark XENICAL is August 5, 1993.
The mark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off. For the mark XENICAL the Complainant holds registrations in over hundred countries on a world-wide basis.
The Complainant argues that the disputed domain name <buy-xenicalonlineq.com> is confusingly similar to the Complainant’s mark XENICAL given that it incorporates this mark in its entirety.
Furthermore the Complainant argues, that the addition of the generic terms “buy”, “online” and the letter “q” as well as of hyphens does not sufficiently distinguish the disputed domain name from the trademark.
As showed in Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694,“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”. (Annex 4 to the Complaint).
The Respondent did not reply to the Complainant’s contentions.
In order to obtain the transfer of a disputed domain name, a complainant must prove three elements, regardless of whether the respondent files a response to the complaint. The first element is that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.” Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has “no rights or legitimate interests in respect of the domain name.” Policy, paragraph 4(a)(ii). The third element for a complainant to establish is that the “domain name has been registered and is being used in bad faith.” Policy, paragraph 4(a)(iii).
The disputed domain name <buy-xenicalonlineq.com> is confusingly similar to the Complainant’s well-known mark, XENICAL. As mentioned in the case Lilly ICOS LLC v. John Hopking / Neo net Ltd., supra, “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”, cited by the Complainant as well in the case LEGO Juris A/S v. PrivacyProtect.org / Kim Bum LLC, WIPO Case No. D2012-2462 (“the addition of descriptive terms to a trademark is generally not a distinguishing feature[..]”), the addition of generic terms such as “buy”, “online” and the letter “q” do not distinguish the disputed domain name from the mark.
Following Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666, [i]n order for a complainant to prove that a respondent has no rights or legitimate interests in the Disputed Domain Name, UDRP case law has consistently held that it is sufficient for a complainant to prove a prima facie case. (see amongst others, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown the burden of [production] then shifts to the Respondent who must demonstrate its rights or legitimate interests to the panel.”
In this case it is clear that the Complainant has no difficulty to prove a prima facie case, the Respondent is using the Complainant’s mark to lead Internet users to a website that sells products similar to or purported to be those of the Complainant. See Compagnie Générale des Etablissements Michelin v. PrivacyProtect.org and Kim Bum LLC, WIPO Case No. D2013-0181 (“[…] Neither of Respondents has a right or legitimate interest in luring consumers to a website under false pretenses and then profiting from their presence at the website.”).
The UDRP states that one way for a complainant to prove bad-faith registration and use is to show the respondent has “intentionally attempted to attract, for commercial gain, Internet users to [the] 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 [the] web site or location or of a product or service on [the] web site or location.” Policy, paragraph 4(b)(iv). The Complainant has made this showing.
Twenty years after the Complainant’s mark was registered around the world in connection with a prescription weight-loss medication, the Respondent created the disputed domain name <buy-xenicalonlineq.com>. The respondent took the well-known mark, bracketed it with generic words “buy”, “online” and the letter “q” the first and the second used in the commerce for the activity of buying through the Internet add a letter “q” with any meaning and then linked the newly registered disputed domain name to a website that clearly offers generic and/or similar medications by using and profiting from the good will of the Complainant’s brand name medication.
These facts, leads to the common sense conclusion that the Respondent intentionally registered and is using the disputed domain name in bad faith.
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-xenicalonlineq.com> be transferred to the Complainant.
Gonçalo M. C. Da Cunha Ferreira
Sole Panelist
Date: May 29, 2013