The Complainant is Hoffmann-La Roche Inc. of South San Francisco, California, United States of America, represented by Lathrop & Gage LLP, United States of America.
The Respondent is Charlie Kalopungi, of Victoria, Mahe, Seychelles. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2010. On October 29, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On October 29, 2010, Moniker Online Services, LLC 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 November 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2010.
The Center appointed Luca Barbero as the sole panelist in this matter on November 30, 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 is one of the global leaders in research and development of pharmaceutical and diagnostic products and is the owner of the United States trademark No. 1906281 for XENICAL, registered on July 18, 1995, in class 5 and of the United States trademark No. 3,739,382 for XENICAL ORLISTAT 120 MG CAPSULES, registered on January 19, 2010, in class 44. The parent company of the Complainant F. Hoffmann-La Roche AG owns the International registration No. 699,154 for XENICAL, registered on July 28, 1998, in class 5.
The Swiss parent of the Complainant F. Hoffmann-La Roche AG is also the owner of the domain name , registered on April 17, 1997.
The Respondent registered the Domain Name on June 16, 2010. 5. Parties’ Contentions A. Complainant
The mark XENICAL designates a pharmaceutical product indicated for weight reduction and long-term management of weight. The Complainant states that the mark XENICAL has been used by the Complainant in the United States since March 1994 and that, in light of the sales of Xenical products, which amount to hundreds of millions of dollars in the United States, and of the extensive promotion of Xenical products, the mark XENICAL has become well-known in the United States and throughout the world.
The Complainant contends that the Domain Name is confusingly similar to the mark XENICAL in which the Complainant has rights as it reproduces the trademark XENICAL in its entirety. According to the Complainant, the Respondent's registration and use of the Domain Name creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of the Respondent's website associated with the Domain Name by the Complainant. The Complainant points out that the addition of the terms “acomplia” and “reductil” does not prevent the likelihood of confusion.
The Complainant informs the Panel that a letter was sent to the Respondent on October 12, 2010, via email and via courier, by the Complainant’s attorneys, requesting the Respondent transfer the Domain Name to the Complainant, and that the letter via courier was returned to the Complainant’s counsels as “incorrect address”.
With reference to rights or legitimate interests in respect of the Domain Name, the Complainant states that the Respondent has no rights or legitimate interests in the Domain Name, since the Complainant has not authorized the Respondent to use its trademark XENICAL and the Respondent is not commonly known by the Domain Name.
The Complainant highlights that the Domain Name resolves to a web page displaying several commercial links for the offer of XENICAL, as well as competitors’ weight loss products and other pharmaceutical products of third party competitors, and that the Respondent’s use of the Domain Name demonstrates the Respondent’s intent to trade upon the reputation of Complainant's XENICAL trademark and its lack of a legitimate noncommercial interest in, or fair use of, the Domain Name. The Complainant also underlines that such use of the Domain Name cannot be considered a bona fide offering of goods and services and that the Respondent's true purpose in registering the Domain Name is to capitalize on the reputation of Complainant's XENICAL mark by diverting Internet users seeking the Complainant's website to the Respondent's own website.
With reference to the circumstances evidencing bad faith, the Complainant points out that the use of the Domain Name for advertising the sales of Xenical products, without permission or license of any kind, and the sales of competitive illegal products (non-FDA approved competitive orlistat products), show that the Respondent has intentionally attempted to attract for financial gain Internet users to its website 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 the goods sold on or through the Respondent’s website. The Complainant also states that such unauthorized use of the Complainant’s well-known mark suggests opportunistic bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service 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 has provided evidence of ownership of valid trademark registrations for XENICAL in class 5, including the United States trademark No. 1906281 for XENICAL, registered on July 18, 1995.
The Domain Name includes the Complainant’s trademark along with the trademarks ACOMPLIA and REDUCTIL, both associated with weight loss products, owned, respectively, by the Complainant’s competitors Sanofi-Aventis and Abbott Laboratories.
As stated in many panel decisions, the inclusion of the trademarks of other parties in the disputed domain name does not detract from the confusing similarity. See, along these lines, Chevron Corporation v. Young Wook Kim,WIPO Case No. D2001-1142; Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy,WIPO Case No. D2003-0793; F. Hoffmann-La Roche AG v. Softech Ltd., DNS Administrator (gold),WIPO Case No. D2007-1699.
In view of the above, the Panel finds that the Complainant has proven that the Domain Name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(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 a 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.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the Domain Name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name in order to shift the burden of proof on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).
In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.
Moreover, it has been repeatedly stated that when the respondent does not avail himself of his right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269).
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the Domain Name, has made preparations to use the Domain Name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the Domain Name.
The Panel notes that, as highlighted in the Complaint, the Domain Name is pointing to a sponsored pay-per-click website aimed at directing visitors to websites where various products and services are advertised and sold, including XENICAL and other weight loss products.
The Panel finds that under the circumstances, the use of the Domain Name for a pay-per-click page which directs visitors to various third party commercial websites does not constitute a legitimate, noncommercial use of the Domain Name under the Policy, as found in Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044.
See also, inter alia, Sports Holdings, Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1146, where the panel stated: “[t]he evidence in the Complaint indicates that the website at the disputed domain name is commercial in the sense that it appears to provide links to other sites being competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit. Such use does not constitute a legitimate non-commercial or fair use of the disputed domain name by the Respondent within the meaning of paragraph 4(c)(iii) of the Policy.”
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
As to bad faith at the time of the registration, the Panel notes that, in light of use of the trademark XENICAL since 1994, of the amount of the sales of the Complainant’s products in the United States and worldwide, and in view of the combination in the Domain Name of the trademark XENICAL with two other trademarks designating weight loss products, the Respondent was more likely than not aware of the Complainant’s trademark when registered the Domain Name.
The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks, as found in Gateway, Inc. v. Lorna Kang,WIPO Case No. D2003-0257. Along the same lines, Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn,WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd.,WIPO Case No. D2003-0050; and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions,WIPO Case No. D2003-0103. As stated also in DHL Operations B.V v. Net Marketing Group,WIPO Case No. D2005-0868 “...it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
The Panel finds that, in view of the combination of the trademarks XENICAL, ACOMPLIA and REDUCTIL in the Domain Name, users might believe that there is an affiliation between and among the three marks and the drugs they identify, even though they are all owned by different companies. As stated in Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, supra, in relation to the domain name , “This is likely to lead to confusion about the source or origin of the products offered on Respondent’s site. It is likely that some consumers will mistakenly believe that the hyphens suggest a ‘family of marks’ owned by a single or affiliated companies”.
The selection of a so structured Domain Name is, indeed, apt to amplify Internet search exposure and to increase the Respondent’s profits deriving from the pay-per-click links published on the corresponding website. As found in Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, supra, “This reckless disregard for the confusion caused by the hyphenated fusion of unaffiliated trademarks for the purpose of maximizing Internet traffic constitutes bad faith”.
See also F. Hoffmann-La Roche AG v. Softech Ltd., DNS Administrator (gold), supra: “The website using the disputed domain name contains a search engine with sponsored links. It provides an online pharmacy which offers “Xenical” and various other drugs which directly compete with the Complainant. It is apparent that the use of the disputed domain name is an attempt to attract, for commercial gain, Internet users to the Respondent’s site, by creating a likelihood of confusion with the Complainant’s mark. Further, the use of the disputed domain name is likely to confuse or mislead Internet users that the Respondent’s site is sponsored or endorsed by the Complainant or is affiliated to the Complainant”.
The Panel, therefore, finds paragraph 4(b)(iv) of the Policy to be applicable in this case, since the Respondent has attempted to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response and, in this case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1146, “it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.
The Panel also considers the incomplete or false information originally provided by the Respondent on the WhoIs as an additional circumstance evidencing the bad faith of the Respondent, concurring with the views expressed, inter alia, in Steelcase Development Corporation v. Admin, Domain,WIPO Case No. D2005-1352, stating that the use of false contact information by the Respondent is a further indication of bad faith (Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775). See along these lines Süd-Chemie AG v. ,WIPO Case No. D2000-0376, finding bad faith use and registration where Complainant “was unsuccessful in its attempt to contact the Respondent by using the contact details in the Registrar’s registry”.
In view of the above, the Panel finds that the Domain Name was registered and is being 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. The Panel notes that this results in the transfer to Roche of a domain name that includes the ACOMPLIA mark owned by Sanofi-Aventis and the REDUCTIL mark owned by Abbott Laboratories, neither of whom are parties to this proceeding, and that there is no record in the Complaint of the other trademark owners with a potential interest in the transferred domain. However, the Panel finds that, as stated in Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, supra, neither the Policy nor the Rules expressly require such consent when a prima facie case for transfer has been made and, therefore, orders the transfer.
Luca Barbero
Sole Panelist
Date: December 15, 2010
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