The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland represented internally.
The Respondent is n/a Whois Privacy Protection Service of fujian, China.
The disputed domain name <xenical--online.com>1 is registered with Bizcn.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2013. On May 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 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 May 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2013.
The Center appointed Keita Sato as the sole panelist in this matter on June 10, 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 Panel determined that the language of the proceeding shall be English. The basic principle of Rule 11(a) indicates the language of the registration agreement, and the Registrar confirmed the language of the registration agreement as used by the registrant for disputed domain name is English. The Panel finds no special reasons to determine otherwise
The Complainant, F. Hoffman-La Roche AG, is a company located in Switzerland.
It has several internationally registered trademarks, including XENICAL (word only) as International Registration No. 612908 for class 05 (pharmaceutical, veterinary and hygienic products) registered on December 14, 1993, and XENICAL (word with design) as International Registration No. 699154 for class 05 (pharmaceutical, veterinary and sanitary preparations) registered on July 28, 1998.
The disputed domain name was registered on April 16, 2013 with the Registrar Bizcn.com, Inc., located in China.
The Complainant states that the three requirements which are set out under paragraph 4(a) of the Policy are met with respect to the disputed domain name.
Firstly, the Complainant contends that the disputed domain name is confusingly similar to the XENICAL trademark registered and protected in a multitude of countries by the Complainant. The disputed domain name <xenical—online.com> incorporates the Complainant’s trademark XENICAL in its entirety, together with addition of the generic term “online” and two hyphens, which does not sufficiently distinguish the disputed domain name from the trademark. Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The reasons which the Complainant pointed out are: the Complainant has exclusive rights in XENICAL and no license, permission, authorization and/or consent was granted to use XENICAL in the disputed domain name. In this sense, the disputed domain name clearly alludes to the Complainant. The Respondent is using the disputed domain name to direct Internet users to sites which are offering/selling the Complainant’s products. Thirdly, the Complainant contends that the disputed domain name was registered and is being used in bad faith for two reasons. According to the Complainant, the disputed domain name was registered in bad faith since at the time of the registration, the Respondent had knowledge of the Complainant’s well-known product and mark XENICAL. Further, the disputed domain name is also used in bad faith, since the Respondent’s website has intentionally attempted (for commercial gain) to attract Internet users to the Respondent’s 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 websites or of the products or services posted on or linked to the Respondent’s website.
For these reasons, the Complainant requests transfer of the disputed domain name as a remedy of this dispute.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
The Complainant has provided sufficient evidence showing that it is the owner of the XENICAL marks. The disputed domain name and the Complainant’s trademarks are not identical. However, the second-level portion of the disputed domain name and the mark XENICAL (or word part of the registered trademark with a word XENICAL and design) are confusingly similar. The reasons for this are:
The Complainant has proved that trademarks relating to XENICAL were registered as an International trademark with the International Bureau, as explained in section 4 above. Moreover, prior UDRP decisions have suggested that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant's registered mark. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758 (finding <attelephone.com> confusingly similar to ATT). This kind of finding could also be applied to “descriptive word as prefix + trademark entirety”. The panel in Wal-Mart Store, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033 stated, “It is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion. Indeed, there are numerous decisions holding a domain name to be confusingly similar to a registered trademark when it consists of the mark plus one or more generic terms”, (finding <wallmartpharmacy.com> confusingly similar to WAL-MART). In Prada S.A. v. Chen Zhan, WIPO Case No. D2011-1779, the panel stated that “Past UDRP panel decisions have developed the principle that generic suffixes or prefixes added to a domain name which incorporates a trademark in its entirety does not serve to distinguish the domain name from the trademark”, (finding <prada-online-outlet.com> confusingly similar to PRADA).
In the present case, the disputed domain name <xenical--online.com> consists of the trademark XENICAL, a descriptive word “online” as the suffix preceded by two suffixes and the second suffix “.com”. The Panel finds the trademark XENICAL is the dominant feature of the disputed domain name and that the suffix “online” with two hyphens and the gTLD suffic “.com” do not detract from the confusing similarity of the disputed domain name with the trademark. The Panel therefore finds the disputed domain name is confusingly similar to the Complainant's trademark.
The first element of the Policy is thus made out.
The Respondent linked the disputed domain name with a website that offers to sell Complainant’s products, or operates such a website that gives the impression that it is operated by the Complainant. However, the Complainant asserts that it has never granted a license, permission, authorization and/or consent to the Respondent to use XENICAL in the domain name.
In AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002-0290 , where the respondent registered another pharmaceutical manufacturer’s trademark as a domain name and redirected traffic to an on-line pharmacy, the panel stated, “While the selling of goods which originate from the Complainant might entitle the Respondent to use a mark associated with these goods in connection with their sale, this does not give it the right to register and use the mark as a Domain Name without the consent of the holders of the trademarks”.
Although the Complainant’s trademark rights for the XENICAL marks covers the local address of the Registrar, the Respondent might argue the Complainant’s trademark rights do not cover the Respondent’s location (see, Pfizer Inc. v. Ivan Glukhov (Glucotrol Administrator WWW Server), WIPO Case No. D2001-1465). However, the Respondent did not argue this point since the Respondent failed to submit a Response before the deadline. The Respondent has even hidden its existence through a WhoIs privacy service. Taking into consideration the Respondent's default and all of the surrounding circumstances, the Panel can infer that the Complainant’s allegations are true where appropriate to do so (see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Accordingly, the Panel holds that the second element of the Policy is made out.
Firstly, the Panel is of the view that the disputed domain name was registered in bad faith since the Respondent must have had knowledge of the Complainant’s trademark XENICAL at the time of registration of the disputed domain name. The website linked with the disputed domain name offers to sell the Complainant’s products bearing the XENICAL marks and other pharmaceutical products (see Annex 5 to the Complaint). The Respondent has no justification to register the disputed domain name without permission from the trademark registrant, unless it submits supporting evidence. The Respondent has failed to do this. The Panel concludes that the Respondent must have registered the disputed domain name in bad faith.
Secondly, the Panel is of the view that the disputed domain name is also being used in bad faith. By using the disputed domain name to link with a for-profit online pharmacy website, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. This is considered to be evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the third element of the Policy is also made out.
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 <xenical--online.com> be transferred to the Complainant.
Keita Sato
Sole Panelist
Date: June 24, 2013
1 The disputed domain name <xenical—online.com> has two hyphens without a space in the middle. The domain name <xenical-online.com> with one single hyphen in the middle is registered by an independent third party at the time of this proceeding commenced.