WIPO Domain Name Decision D2009-1128 for xenicalweightloss.info

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. Whois Protection Case No. D2009-1128 1. The Parties

The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented by an internal representative.

The Respondent is Whois Protection of New Zealand. 2. The Domain Name and Registrar

The disputed domain name is registered with eNom in Bellevue, Washington, United States of America. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2009. On August 24, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On August 25, 2009, eNom 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 August 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 17, 2009.

The Center appointed Cherise M. Valles as the sole panelist in this matter on September 23, 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 and its affiliated companies are internationally recognised as a leading research-focused healthcare group in the fields of pharmaceuticals and diagnostics with operations in more than 100 countries. The Complainant's mark XENICAL is protected as a trademark in a multitude of countries. The mark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and to keep this weight off. The mark is protected through International Registration Nos. 612908 & 699154. The priority date for the mark XENICAL is August 5, 1993.

There is no information available on the Respondent. The disputed domain name was registered on July 27, 2009. 5. Parties' Contentions A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

-The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant's mark XENICAL is protected as a trademark in many countries. Copies of the Complainant's certificates for International Registration Nos. 612908 & 699154 for the mark XENICAL were provided as Annex 3 to the Complaint. The 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 to keep this weight off. The Complainant asserts that the disputed domain name, is confusingly similar to the Complainant's mark in the light of the fact that it incorporates this mark in its entirety. Moreover, the addition of the generic term “weightloss” that follow the term “xenical” does not sufficiently distinguish the disputed domain name from that of the Complainant's registered mark. The trademark's current notoriety will increase the likelihood of confusion. The Complainant's use and registration of the mark XENICAL predates the Respondent's registration of the disputed domain name.

-The Respondent has no rights or legitimate interests with respect to the disputed domain name. The Complainant has the exclusive rights to the mark XENICAL and has not authorised, licensed, permitted or otherwise consented to the use of the mark XENICAL in the disputed domain name. Visiting the Respondent's domain name directs users to a website offers on-line pharmacy services. The only reason the Respondent is registering and using the disputed domain name is to capitalise illegitimately from the reputation of the trademark XENICAL for the purpose of commercial gain and profit.

-The domain name was registered and is being used in bad faith. The Complainant asserts that the disputed domain name was registered in bad faith. At the time of its registration, that is, on July 27, 2009, the Respondent undoubtedly had knowledge of the Complainant's well-known product/mark XENICAL and intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with that well-known mark. The Complainant asserts that the Respondent is misleading consumers by attracting them to its website by creating a likelihood of confusion with the Complainant's mark, which has a good reputation with doctors. By capitalising on this confusion, the Respondent may generate unjustified revenues from Internet users looking for the Complainant's products. The Complainant asserts that the Respondent is, therefore, using the Complainant's mark in bad faith.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(b)(i) of the Policy. B. Respondent

The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings

The Policy, the Rules and the Supplemental Rules provide specific remedies to trademark owners against registrants of domain names where the owner of the mark (the Complainant) establishes each of the following elements:

(a) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights;

(b) the Respondent has no rights or legitimate interests in respect of the domain name; and,

(c) the domain name was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent, having failed to respond in these proceedings is in default, and the Panel shall draw appropriate inferences therefrom. A. Identical or Confusingly Similar

The Complainant must demonstrate that it has trademark rights and that the disputed domain name is identical or confusingly similar to the Complainant's trademark.

The Complainant has submitted evidence demonstrating that it is the owner of the registered mark XENICAL. The mark is protected through International Registration Nos. 612908 & 699154. The priority date for the mark XENICAL is August 5, 1993.

The disputed domain name differs from the Complainant's mark by the addition of the term “weightloss” after the term “xenical”. Thus, the disputed domain name incorporates the Complainant's mark in its entirety. It has been held in many prior panel decisions that when a domain name incorporates a registered mark in its entirety, it is confusingly similar to that registered trademark. See, EAuto, L.L.C v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc,WIPO Case No. D2000-0047. The addition of the common, generic terms “weightloss” does not serve to distinguish the Complainant's mark from the disputed domain name. See, Credit Suisse Group v. Kingdomdatanet Network, Inc,WIPO Case No. D2004-0846. Indeed, the term “weightloss” reinforces the perception that the disputed domain name is associated with the product Xenical that is used for weight loss by obese people.

It is also well-established that the top level of a domain name such as “.info” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See, F. Hoffmann-La Roche AG v. Digi Real Estate Foundation,WIPO Case No. D2005-1286. Therefore, the use of the gTLD “info” in the disputed domain name is not germane to the determination of whether that domain name is confusingly similar to the Complainant's registered mark.

In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant's registered mark and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests

The burden of proof is on the Complainant to establish a prima facie case that the Respondent lacks rights or interests in the disputed domain name. If a prima facie case is established, then the burden shifts to the Respondent to demonstrating that it has rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy enumerates three, non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent did not submit a response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure.

The Panel finds that the Respondent, at the time of registration of the disputed domain name, most likely knew or should have known of the existence of the Complainant's trade mark XENICAL. The mark XENICAL is well-known among doctors. The Complainant, who has registered the mark XENICAL, has not authorised, licensed, permitted or otherwise consented to the Respondent's use of the mark XENICAL in the disputed domain name.

The Respondent has not attempted to make any bona fide use of the disputed domain name. The disputed domain name links to a website that offers on-line pharmacy services. The evidence suggests that the Respondent registered, and is using the disputed domain name, only because it is similar to the Complainant's well known mark. As noted in Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784, “several cases have found that a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer's mark and that is being used to direct consumers to an on-line pharmacy”.

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 respondent's website or location or of a product or service on its website or location.

The Panel finds that the Respondent in all probability had intended to use the Complainant's mark when registering the disputed domain name. In the light of the reputation of XENICAL among the medical community, it is not credible to assume that the Respondent was not aware of the Complainant's registered trademark. Indeed, as the Panel held in Hoffmann-La Roche Inc v. WhoisGuard, WIPO Case No. D2005-1288, “only someone with knowledge of the mark – considering the fact that the mark is an invented term – could have registered the disputed domain name”. This Panel is of the view that the Respondent registered the disputed domain name with full knowledge and for the express purpose of re-directing Internet users to an on-line pharmacy.

As noted in Pfizer Inc. v. jg a/k/a Josh GreenWIPO Case No. D2004-0784 bad faith is established when the “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy”.

Thus, the Respondent is intentionally misleading Internet users to a for-profit on-line pharmacy by creating a likelihood of confusion with the Complainant's well-known mark.

As stated by the panel in Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400, “[f]urther, by using the disputed domain name to lead to a website promoting, for commercial gain, goods of competitors of the Complainant, the Respondent has intentionally sought to confuse Internet visitors as to products on his website and sought improperly to divert business away from the Complainant. This is evidence of both bad faith registration and bad faith use within paragraph 4(b)(iv) of the Policy.”

The evidence in this proceeding, in the Panel's view, supports the conclusion that the Respondent sought to profit from, or exploit the trademark XENICAL of the Complainant. Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy. 7. Decision

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 be transferred to the Complainant.

Cherise M. Valles
Sole Panelist

Dated: October 7, 2009

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