Complainant is Hoffmann-La Roche Inc. of, United States of America represented by Lathrop & Gage LLP of United States of America.
Respondent is Xenical Fat Blocker of United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2010. On July 9, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On July 9, 2010, eNom transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 5, 2010.
The Center appointed Timothy D. Casey as the sole panelist in this matter on August 11, 2010. 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
Complainant has used the trademark XENICAL (“the XENICAL mark”) since March 18, 1994 for a pharmaceutical preparation for weight reduction and long-term management of weight. The XENICAL mark was registered in the United States on July 18, 1995, Reg. No. 1,906,281. In addition, Complainant also owns the registration to the trademark XENICAL ORLISTANT 120 MG CAPSULES and design (“the XENICAL logo”), which it has used since December 31, 2007 for providing weight management services, namely, weight reduction planning, diet planning, and supervision and behavior modification relating thereto. The XENICAL logo was registered in the United States on January 19, 2010, Reg. No. 3,739,382.
For many years the XENICAL mark has been used extensively, and sales of the Xenical pharmaceutical preparation in the United States are in the hundreds of millions of dollars. F. Hoffman-La Roche AG, the Swiss parent company of Complainant, also owns and has registered the domain name through which Internet users can obtain information as to the Xenical weight loss product manufactured and sold by Complainant. The domain name was created on April 17, 1997.
Based on the evidence submitted, Respondent does not seem to own any trademarks. The disputed domain name was created on March 13, 2001. The disputed domain name resolves to a website that provides information about Xenical and enables users to purchase the drug through linked access to an additional website. The website also provides links to a number of additional websites related to weight loss and the purchase of weight loss drugs. 5. Parties’ Contentions A. Complainant
Complainant contends that as a result of sales of the Xenical pharmaceutical preparation, advertising and promotion, the XENICAL mark and the XENICAL logo have become well-known. Complainant first notified Respondent of its rights in the XENICAL mark and the XENICAL logo in June 2009, demanding that Respondent cease and desist from further use of the XENICAL mark and the XENICAL logo and transfer the disputed domain name to Complainant. Complainant contends that a letter sent via certified mail to Respondent’s address was not accepted because it contained the wrong zip code. Complainant contends that the zip code is a location in Minnesota rather than Oklahoma, as indicated on the WhoIs database record of the disputed domain name. Complainant further contends that a letter was sent via email to Respondent and received by Respondent.
Complainant contends that the disputed domain name contains the entire XENICAL mark. Complainant contends that the Respondent’s registration and use of the disputed domain name creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of the Respondent’s website associated with the disputed domain name. Complainant further contends that numerous UDRP panel decisions have established that the addition of words, letters or numbers to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. In this case, Complainant contends that the descriptive text in the disputed domain name, “fat” and “blocker”, does not prevent the likelihood of confusion.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that “xenical” is not a word and has no valid use other than in connection with Complainant’s trademark. Complainant has not authorized or licensed Respondent to use the XENICAL mark or the XENICAL logo, or to incorporate the XENICAL mark into any domain name, or trade name, or to use it in a copyright notice, or to incorporate the XENICAL mark into multiple email addresses associated with the disputed domain name. Complainant notes that such use by Respondent falsely suggests sponsorship or authorization by Complainant. Complainant contends that Respondent’s website offers for sale the prescription Xenical medication without any permission from Complainant, and such commercial use does not constitute fair use. Complainant lastly contends that Respondent’s disclaimer, tiny and near the bottom of Respondent’s website, does not dispel or cure the likelihood of confusion between Respondent and Complainant.
Complainant contends that Respondent has not used the disputed domain name for a bona fide offering of goods or services. Complainant contends that Respondent is using the disputed domain name to divert Internet users seeking the Complainant’s website associated with the disputed domain name. Complainant contends that Respondent’s intent is to trade upon the reputation of the XENICAL mark, and any use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services. Complainant lastly notes that Respondent offers the prescription drug Xenical over the Internet without a personal visit to a prescribing medical professional, which presents a health risk to some members of the public who are not significantly overweight.
Complainant contends that the disputed domain name was registered in bad faith to capitalize on the reputation of the XENICAL mark and the XENICAL logo by diverting Internet users to Respondent’s commercial pharmaceutical sales website. Complainant contends that Respondent does not identify itself on the website associated with the disputed domain name, suggesting bad faith registration. Complainant contends that Respondent intentionally attempts to attract Internet users to Respondent’s website associated with the disputed domain name for financial gain by creating a likelihood of confusion.
Complainant requests that the disputed domain name be transferred to Complainant. B. Respondent
The Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In the absence of any reply and the default by Respondent, the discussion and findings will be based upon Complainant’s contentions and any reasonable position that can be attributable to Respondent.
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the Panel finds that:
(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 the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy. A. Identical or Confusingly Similar
As noted above, Complainant owns a registered trademark in the name XENICAL mark and the XENICAL logo. The XENICAL mark was in use prior to registration of the disputed domain name. The fact that the disputed domain name further includes the descriptive phrase “fat blocker” associated with Respondent’s use of the disputed domain name to sell the Xenical pharmaceutical preparation, without the Complainant’s authorization or license, is of no merit. The Xenical name is made up and has no other meaning other than to function as the XENICAL mark.
The Panel finds the disputed domain name to be confusingly similar to the XENICAL mark and this element of the Policy to be met by Complainant. B. Rights or Legitimate Interests
Respondent does not allege it has any rights or legitimate interests in the disputed domain name or any parts thereof. The disputed domain name used by Respondent fully and completely incorporates the XENICAL mark. Respondent has not been authorized by Complainant to utilize the XENICAL mark in the disputed domain name. In addition, Complainant has not authorized Respondent to use the XENICAL mark or the XENICAL logo in any trade name, on the Respondent’s website associated with the disputed domain name, in any trade name, as part of copyright notices, or as part of an email address associated with the disputed domain name. The Respondent is not personally identified with, or commonly known by, the term “xenical” in any fashion, other than selling the Xenical medication. Respondent’s use is clearly commercial and does not appear to constitute any form of fair use. Furthermore, Respondent’s apparent offer for sale of the Xenical medication without a prescription can possibly lead to the harm of consumers, all to the detriment of Complainant. Respondent’s website appears to exist for the primary purpose of diverting legitimate consumers of Xenical to Respondent’s website, rather than Complainant. In addition, the Panel agrees with Complainant that the use of the small disclaimer near the bottom of Respondent’s website would not cure the likelihood of confusion in consumers between Respondent and Complainant and does not create any right or legitimate interest in the disputed domain name. The Panel further notes that Respondent has failed to properly identify itself on the website associated with the disputed domain name.
The Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name and this element of the Policy to be met by Complainant. C. Registered and Used in Bad Faith
Respondent is seemingly in the business of soliciting orders for the Xenical medication. It is highly unlikely that Respondent was not aware of the XENICAL mark, which has been in use since 1994 and federally registered in the United States since 1995, prior to registering the disputed domain name. While Respondent registered the disputed domain name about 7 years before the first use of the XENICAL logo and about 10 years before the registration of XENICAL logo, the Panel presumes that the XENICAL logo must have been incorporated by Respondent into the disputed domain name after becoming aware of the existence of the XENICAL logo.
Respondent has used the disputed domain name for the bad faith purpose of driving commercial business to its website which sells the Xenical medication. In addition, Respondent potentially jeopardizes the health of consumers by providing the Xenical medication through the Internet without a prescription, which presents a hazard to consumers who may not be significantly overweight. The Panel agrees with Complainant that Respondent’s failure to properly identify itself on the website associated with the disputed domain name suggests a bad faith registration.
The fact that the initial mail correspondence was not accepted because it contained a wrong zip code, while noteworthy and to an extent suggesting bad faith registration due to the fact that the wrong zip code differs greatly from an Oklahoma zip code, is not necessarily fatal to Respondent’s case.
Nevertheless, the Panel finds that Respondent registered and used the disputed domain name in bad faith. This element of the Policy has been met by Complainant. 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 disputed domain name be transferred to Complainant.
Timothy D. Casey
Sole Panelist
Date: August 25, 2010
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