WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Internet Climate
Case No. D2006-1205
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internal representative.
The Respondent is Internet Climate, Bahrain.
2. The Domain Name and Registrar
The disputed domain name is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2006. On September 21, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On September 21, 2006, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 September 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October�19, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2006.
The Center appointed Mr. P-E H Petter Rindforth as the sole panelist in this matter on November 1, 2006. 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.
On December 1, 2006, the Panel issued an Administrative Panel Procedural Order No. 1, referring to the fact that the disputed domain name is a combination of two separate trademarks, owned by separate entities, and that a transfer of this domain name may interfere with the rights of the third party trademark holder (the holder of the REDUCTIL mark).
The Panel Order requested the Complainant to provide the Panel with a signed letter of support from an authorized representative of the third party trademark holder, indicating support for the Complaint and consent to the Panel issuing an order transferring the disputed domain name to the Complainant. The Complainant was given until December 8, 2006, to send the said letter to the Center, and the due date for the decision was extended to December 14, 2006. Complainant’s response to the Panel Order was timely received by the Center on December 6, 2006.
The Administrative Panel shall issue its Decision based on the Complaint, the Response to the Administrative Panel Procedural Order No.1, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant is a leading research-focused healthcare group in the fields of pharmaceuticals and diagnostics and has operations in more than 100 countries.
The trademark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off and is registered in a number of countries worldwide, such as the International Registration No. 612908 XENICAL (word) of August 5, 1993 and No. 699154 XENICAL (figurative) (Copies of Certificates of Registration provided as Annex 3 of the Complaint).
The Respondent registered the domain name on July 4, 2003. No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant.
5. Parties’ Contentions
A. Complainant
The Complainant argues that the disputed domain name – incorporating the Complainant’s mark in its entirety – is confusingly similar to XENICAL. The Complainant refers to Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793, stating that “the Respondent’s inclusion of other third party trademarks in its domain name does not change this result. UDRP Panels have consistently found a likelihood of confusion under these circumstances”.
The Complainant declares that the Respondent has no rights or legitimate interests in respect of the domain name. The Complainant has not granted the Respondent any licence, permission our other authorization to use XENICAL in a domain name.
The Respondent’s website is a pharmacy on-line which offers XENICAL as well as REDUCTIL which directly competes with the Complainant’s mark (copy of the website of “www.” provided as Annex 5 of the Complaint). The Complainant refers to Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, and again to WIPO Case No. D2003-0793, stating that it is not legitimate for a reseller to incorporate the trademark of the resold goods and to offer to sell competitive goods on an equal footing.
Finally, the Complainant states that the disputed domain name is registered and used in bad faith. The Respondent had, no doubt, knowledge of the Complainant’s mark at the time of the domain name registration. The domain name is also used in bad faith, as the Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark, which has a good reputation among doctors, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Complainant requests, in accordance with paragraph 4(i) of the Policy, that the Panel issue a decision that the domain name be transferred to the Complainant.
As a response to the Administrative Panel Procedural Order No. 1, the Complainant has presented a Letter of Consent from Abbott Laboratories – owners of the trademark REDUCTIL – supporting a possible panel decision to transfer the disputed domain name to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner of the trademark XENICAL, which is a known trademark for a weight loss medication.
The relevant part of the domain name is “reductil-xenical”. Accordingly, the domain name consists of the Complainant’s trademark XENICAL, as well as of a hyphen and the word “REDUCTIL” which the Panel understands is also a trademark owned by one of the Complainant’s competitors.
As stated by the Complainant, with references to previous UDRP decisions, the Respondent’s inclusion of other third party trademarks in its domain name does not exclude the impression of confusing similarity with the Complainant’s mark. This Panel notes that this is particularly true when the mark in question is well known.
The Panel therefore concludes that is confusingly similar to the Complainant’s mark XENICAL.
B. Rights or Legitimate Interests
The Complainant filed the Complaint more than three years after the Respondent’s registration of the disputed domain name, a fact that is not commented on by the Complainant. There is no information provided regarding the date of first use by the Respondent. However, as stated further below, the Respondent has no rights to and cannot claim legitimate interest in the domain name in this case.
The Respondent is not an authorized agent or licensee of the Complainant’s products and has no other permission to apply for any domain name incorporating the trademark XENICAL.
As established in a number of prior cases (such as: The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113; R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201; Nokia Corporation v. Nick Holmes t/a EType Media, WIPO Case No. D2002-0001 and the cases mentioned above by the Complainant), the collateral trademark use necessary to allow resale of and/or customer support in connection with the Complainant’s pharmaceutical products does not confer the right to use the trademark as a domain name.
Such use and registration, without the permission of the trademark owner, does not create a legitimate interest in the domain name.
Moreover, the Panel notes that the Respondent also uses the web page and the domain name to sell a product from a competitor of the Complainant.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
The Complainant’s trademark XENICAL is widely known for a particular type of pharmaceutical product. The Respondent describes his business on the web page as “authorised supplier of diet & weight loss pills”. Thus, it is clear that the Respondent is in the business of selling pharmaceuticals on-line and that the Respondent in all likelihood had the XENICAL trademark in mind when he registered the disputed domain name.
By using the domain name for a web site selling XENICAL branded pharmaceticals (and a competitive product) and using the term “Authorised Supplier”, the Respondent has deliberately attempted to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website connected with the domain name.
The Panel concludes that the only possible intention of Respondent in registering and using the domain name in the circumstances was to attract Internet users to the Respondent’s website by creating a domain name confusingly similar both to the Complainant’s trademark XENICAL and to the Complainant’s competitor’s trademark REDUCTIL.
Thus, the Panel concludes that the domain name is both registered and used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant, F. Hoffmann-La Roche AG.
P-E H Petter Rindforth
Sole Panelist
Dated: December 11, 2006
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