The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Ivan Varypaev of Moscow Russian Federation.
The disputed domain name <xenicalbuyonline.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2014. On January 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 24, 2014, 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 January 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2014.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on February 26, 2014. 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 F. Hoffmann-La Roche AG, together with its affiliated companies, is a leading healthcare supplier in the field of pharmaceuticals and diagnostic products operating in more than 100 countries.
The Complainant is the owner of the trademark XENICAL since 1993, and it has been used without interruption.
The Domain Name was registered on December 26, 2013. The website at the Domain Name appears to be offering product branded Xenical and/or “Xenical (generic Orlistat)” products and redirects Internet users to a pharmacy on-line.
The Complainant contends the following:
(a) the Domain Name is confusingly similar to the trademark of the Complainant because:
- it incorporates the Complainant’s trademarks in its entirety;
- the addition of the words “buy” and “online” in the Domain Name does not detract from associating it to the trademark of the Complainant and does not sufficiently distinguish the Domain Name from the trademark.
(b) The Respondent has no rights or legitimate interests in respect to the Domain Name because:
- the Complainant has never given to the Respondent any license or authorization to use the Complainant’s trademark;
- the Respondent does not have any rights or legitimate interests in Domain Name.
(c) The Domain Name was registered and is being used in bad faith because:
- the Respondent is using the Domain Name to redirect Internet users to a pharmacy on-line;
- the Respondent attempts 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 website;
- the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the XENICAL trademark fame.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has several trademark registrations for XENICAL. Therefore it has been proven that the Complainant has rights in the XENICAL trademark.
The Domain Name <xenicalbuyonline.com> incorporates the term “xenical” which constitutes the Complainant’s trademark.
The only difference between the Domain Name and the trademark of the Complainant is the addition of the words “buy” and “online”. The addition of the mentioned words does not add a distinctive element to the Domain Name and does not render it dissimilar to the trademark of the Complainant. Moreover, such addition increases the confusing similarity between the Domain Name and the Complainant’s trademark, because the generic terms “buy” and “online” are simply strengthening the bond and relation with the XENICAL trademark itself.
Additionally, the Panel does not consider, when analyzing the identity or confusing similarity, the generic Top-Level Domain suffix - in this case “.com” - because it is a necessary component of the Domain Name and typically does not give any distinctiveness (see i.e., Crédit Industriel et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457).
There are numerous UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established inter alia when a domain name wholly incorporates a complainant’s mark and only adds a generic word along with it (see i.e., F. Hoffmann-La Roche AG v. Bobik Marley, WIPO Case No. D2007-0694; Deceuninck nvand, Thyssen Polymer GmbH v. Dimitriy Beloussov, WIPO Case No. D2007-0347; Société des Bains de Mer et du Cercle des Etrangers à Monaco v. LaPorte Holdings, LLC., WIPO Case No. D2005-0526).
Therefore the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark.
The Respondent has not filed any response in this case. There is a prima facie case made by the evidence provided to the Panel that the Respondent has no rights or legitimate interests in the Domain Name (Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grande Media, WIPO Case No. D2007-0840; and UPIB, Inc. v. Texas Internet, WIPO Case No. D2004-0073).
Moreover, the Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademark XENICAL, nor has the Respondent been authorized to register and use the Domain Name. Furthermore, the Panel notes that the website at the Domain Name is apparently offering “Xenical” products and/or “Xenical (generic Orlistat)” products for sale. Moreover, the website at the Domain Name does not appear to disclose the relationship between the Respondent and the Complainant.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in registering the Domain Name.
In the Panel’s view, the Respondent must have been aware of the existence of the XENICAL mark owned and used by the Complainant. The Respondent must have been also aware that the trademark XENICAL is a well-known trademark in the pharmaceutical sector. Only someone who was familiar with the Complainant’s mark and its activity would have registered the Domain Name inclusive of such mark and the words “buy” and “online” (see Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0850; AT&T Corp. v. Xinzhiyuan Management Consulting Co., Ltd., WIPO Case No. DCC2004-0001; British Sky Broadcasting Group plc, v. Mr. Pablo Merino and Sky Services S.A, WIPO Case No. D2004-0131; and Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487).
There is no information as to the business activity of the Respondent that would justify the registration and the use of the Domain Name, nor is there evidence of any rights or legitimate interests in the Domain Name by the Respondent. The Panel finds that, in the absence of any rights or legitimate interests and in the absence of any contrary evidence from the Respondent, the Respondent’s registration of the Domain Name confusingly similar to the Complainant’s trademark was made in bad faith (see Accor v. Howell Edwin, WIPO Case No. D2005-0980; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395; Banca Sella S.p.a. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226). The use of the Domain Name as evidenced by the Complainant is also found to be in bad faith given the circumstance of this case discussed above, as the Respondent is intending to attract Internet users to its websites 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 its website or location or of a product or service on its website or location.
Taken together with the fact that the Respondent has not filed any Response in this proceeding in support of any good faith registration or use, the Panel finds that the Complainant has demonstrated that the Domain Name has been registered and used 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 Domain Name, <xenicalbuyonline.com> be transferred to the Complainant.
Nicoletta Colombo
Sole Panelist
Date: March 4, 2014