The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland.
The Respondent is Private Whois Service of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2010. On July 28, 2010, the Center transmitted by email to I Corp. a request for registrar verification in connection with the Domain Name. On July 28, 2010, I Corp. 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 July 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 20, 2010.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on August 27, 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
The Complainant F. Hoffmann-La Roche AG, is a company based in Switzerland.
The Complainant, together with its affiliated companies, is one of the leading researchers and developers of pharmaceutical and diagnostic products in more than 100 countries throughout the world. The Complainant’s XENICAL mark is protected as a trademark in a large number of countries in which the Complainant has operations. A sample proof of this allegation was presented, namely copies of the International Registrations for the mark, which priority date goes back to August 5, 1993.
The mark XENICAL has acquired fame and celebrity, symbolizing the goodwill that the Complainant has created in its mark. It identifies a very popular oral prescription weight loss medication, used to help people lose and keep off weight. Although evidence of such was not provided, a quick search on the Internet states this fact, as the mark even appears on “”.
The Domain Name was registered on June 7, 2010. The Domain Name leads to a webpage selling all kinds of prescription drugs, including the Complainant’s products marked XENICAL 5. Parties’ Contentions A. Complainant
According to the Complaint, the Complainant is the owner of registrations worldwide for the mark XENICAL, which is incorporated entirely in the Domain Name. The Complainant argues that because of this, the Domain Name is confusingly similar to its mark XENICAL.
The Complainant further argues that the Respondent does not have any rights or legitimate interests in the Domain Name, as it has not granted the Respondent any permission to register and use the Domain Name and the Respondent, according to the Complainant, uses the Domain Name for commercial gain, with the purpose of capitalizing on the fame of the Complainant’s mark XENICAL.
The Complainant finally alleges that the use of the Domain Name is intentional to mislead consumers and to confuse them, giving the false impression that the owner of the mark XENICAL is in some manner endorsing the website, which, according to the Complainant, is proof of registration and use in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Domain Name is, indeed, confusingly similar to the XENICAL trademark.
The use of the mark added to the verb “comprar” (Spanish for “to buy”) and the expression “online” does not differentiates the Domain Name from the mark – on the contrary, they form a phrase that, in Spanish, misleads the public, as it may give the idea that the website is an authorized way to buy the drug Xenical online.
The Complainant, on its turn, has presented consistent evidence of ownership of the mark XENICAL in the world, by presenting two international registrations for this mark.
Given the above, the Panel concludes that the Domain Name is confusingly similar to the registered mark of the Complainant. B. Rights or Legitimate Interests
Given the clear evidence that the XENICAL trademark is registered in the Complainant’s name and is widely known as identifying one of the Complainant’s products, the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the Domain Name. Hence, in this Panel’s view, the Respondent cannot claim to have been using the trademark not knowing of the Complainant’s rights to it.
Besides, the Domain Name leads to a webpage selling all kinds of prescription drugs, including the Complainant’s products marked XENICAL. This commercialization can be seen as irregular, as those goods are not supposed to be sold on the Internet and without a prescription.
The use of the Domain Name as is, intentionally misleads consumers, giving the false impression that the owner of the mark XENICAL is in some manner endorsing the associated website.
The Panel, thus, finds for the Complainant under the second element of the Policy. C. Registered and Used in Bad Faith
The facts outlined in items A and B above can also evidence the Respondent’s bad faith in obtaining the Domain Name.
The Respondent’s website sells several prescription drugs on the Internet, including the Complainant’s products marked XENICAL, even though such commercialization is forbidden under some national laws. The website shows extensive comments on the benefits of buying those drugs online, including the advantageous reductions in price, in comparison to the regular prices. The website clearly intends to pass as an official one, as it bears comments on all the drugs that are sold through it – for most of them, as mentioned, commercialization is strictly controlled.
This can be seen as clear evidence that the Respondent wishes to give an overall impression that the Domain Name leads to an official website, or to a website endorsed by the owners of the XENICAL trademark, which is not true. This attempt to mislead consumers is also evidence of bad faith from the Respondent.
All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the Complainant when it registered the Domain Name and that the Respondent registered and is using the Domain Name in bad faith.
The Panel finds that the Complainant has also proved the third element of the Policy. 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.
Alvaro Loureiro Oliveira
Sole Panelist
Dated: September 13, 2010
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