WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. P Martin Case No. D2009-0323 1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is P. Martin of New Delhi, India. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with NameSecure L.L.C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2009. On March 12, 2009, the Center transmitted by email to NameSecure L.L.C. a request for registrar verification in connection with the disputed domain name. On March 13, 2009, NameSecure L.L.C. 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 March 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2009. Due to settlement negotiations between the Complainant and the Respondent, on March 17, 2009, the Complainant requested suspension of the administrative proceeding. The Center duly suspended the proceedings. Subsequently a breakdown in the settlement negotiations occurred and the Complainant requested the re-institution of the proceedings on April 2, 2009. The Center duly reinstituted the proceedings and notified the parties to the proceedings that the deadline for submission of the Response was April 21, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of his default on April 22, 2009.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on May 4, 2009. 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. 4. Factual Background
The Complainant, together with its affiliated companies, has global operations in over 100 countries and is one of the world's leading research-focused healthcare groups dealing in pharmaceuticals and diagnostics. The Complainant is the trade mark owner in many countries of the mark XENICAL, such registrations dating back at least to 1993.
The disputed domain name was registered on February 16, 2009. 5. Parties' Contentions A. Complainant
The Complainant's primary contentions can be summarised as follows:
(a) Although the Domain Name incorporates the word “ALLI”, a third party's trade mark, the Domain Name is still confusingly similar to the Complainant's XENICAL mark.
(b) The Respondent has no rights in the word XENICAL, nor was the Respondent licensed or otherwise authorised by the Complainant to use XENICAL in the Domain Name.
(c) The Respondent's website is a search engine with sponsored links. This does not constitute use of the Domain Name for the bona fide offering of goods, but rather demonstrates an intention to benefit from the reputation of the XENICAL mark and illegitimately trade on its fame for commercial gain and profit.
(d) The Respondent registered the Domain Name in bad faith as there was no doubt that the Respondent had knowledge of the Complainant's XENICAL product/mark.
(e) The Respondent had used the Domain Name in bad faith as it had included links of products in direct competition with the Complainant's products and by doing so it has been capitalising on the fame of the Complainant's XENICAL trade mark. B. Respondent
The Respondent did not file a Response and has not provided any evidence to counter the Complainant's contentions.
It is open for the Panel to infer from the Respondent's failure to file a Response that the Respondent does not dispute the Complainant's contentions and otherwise to make such inferences from this as the Panel may see fit. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Domain Name 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 Domain Name; and
(iii) the Domain Name has been registered and is being used by the Respondent in bad faith.
Further, paragraph 14(b) of the Rules provides that where a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules, the Panel shall draw such inferences therefrom as it considers appropriate. Accordingly, the Panel may draw inferences from the Respondent's failure to submit a Response in accordance with paragraph 5(a) of the Rules as it considers appropriate. A. Identical or Confusingly Similar
The Panel notes that the Complainant's trade mark XENICAL has been registered and used in respect of prescription weight loss medication all around the world.
The Complainant does not claim to have rights in the word “alli”, which is a brand associated with weight loss medication which is in direct competition with Xenical weight loss products.
The Panel agrees with the decision in Nikon, Inc. and Nikon Corporation v. Technilab, WIPO Case No. D2000-1774 wherein it was stated: “The issue is not whether confusion is likely in the trade mark sense (that is, confusion as to source based on the domain name and its use in connection with a website), but rather, whether the domain name, standing alone, is sufficiently similar to the trade mark to justify moving on to other elements of a claim for cybersquatting.” It has also been consistently found that the inclusion of the trade marks of other parties in the domain name does not detract from this concept of confusing similarity: see Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy,WIPO Case No. D2003-0793 and F. Hoffmann-La Roche AG v. Softech Ltd., DNS Administrator (gold), WIPO Case No. D2007-1699.
Although “alli” is also incorporated into the Domain Name, the Panel finds that the word “xenical” is nonetheless a prominent feature of the Domain Name.
Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights in satisfaction of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
In consideration of the Complainant's contentions set out at paragraphs (b) and (c) above at 5A, the Panel finds that the Complainant has made out a prima facie case in respect of the Respondent's lack of rights or legitimate interests in the Domain Name.
Once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the subject domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In the absence of any evidence submitted by the Respondent to demonstrate that the Respondent:
(a) used, or made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services;
(b) has been commonly known by the Domain Name; or
(c) is making a legitimate non-commercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's XENICAL trade mark,
it is open to the Panel to infer that the Respondent does not dispute the Complainant's assertions. In view of this and the Complainant's contentions as set out above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that it is more likely than not that the Respondent, at the time of registering the Domain Name in February 2009 knew of the Complainant's XENICAL mark.
The Respondent's incorporation of the Complainant's competitor's mark “ALLI” in conjunction with the Complainant's XENICAL trade mark in the Domain Name can only lead to the inference that the Respondent's use of the XENICAL trade mark was not coincidental, but calculated for the purposes of exploiting the fame and reputation of the Complainant's XENICAL trade mark.
This is further supported by the use of the Domain Name as a sponsored listings site which is commonly considered to be evidence of as a bad faith exploitation of the reputation of trade marks in diversion of users in line with of paragraph 4(b)(iv) of the Policy: see L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. While it is unclear whether the links on the Respondent's website resolve to websites in connection with the sale of products directly in competition with the Complainant's “Xenical” products, the presence of links on the Respondent's website which correspond to the Complainant's XENICAL trade mark alone is in itself indicative of abusive cybersquatting: see for example Ranbaxy Laboratories Ltd v. Jucco Holdings, WIPO Case No. D2007-1562.
It is clear then, that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's XENICAL trade mark as to the source, affiliation or endorsement of the Respondent's website. By reference to paragraph 4(b)(iv) of the Policy, the Panel therefore is satisfied that the Respondent has registered and used the Domain Name in bad faith for the purposes of paragraph 4(a)(ii) of the Policy. 7. Decision
The Panel notes that the Domain Name includes the ALLI trade mark, the rights in which belong to an individual or entity that is not party to these proceedings. In view of the fact that the Policy and the Rules are silent on the requirement of the consent of the owner of a trade mark incorporated in the Domain Name not belonging to the Complainant, the Panel considers that this is not an impediment to an order for the transfer of the Domain Name though the Panel notes that it would have been preferable for such consent to have been obtained prior to the filing of the Complaint but that the Complainant may yet seek to do this to protect their own position and claim to the Domain Name.
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.
Gabriela Kennedy
Sole Panelist
Dated: May 15, 2009
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