Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented by Lathrop & Gage LLP, United States of America.
Respondent is Rex Bowden of Baton Rouge, Louisiana, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2011. On May 6, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On the same day, GoD, Inc. 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 May 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2011. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 1, 2011.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on June 10, 2011. 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 is a company in the field of pharmaceutical and diagnostic product research and development. One of Complainant’s products is a drug for weight reduction and weight management which is marketed and sold under the XENICAL trademark. Complainant owns two (2) trademark registrations incorporating XENICAL in the United States, specifically the following:
Registration No. 1,906,281 for XENICAL
Registration No. 3,739,382 for XENICAL ORLISTAT 120 MG CAPSULES & Design
Registration No. 1,906,281 covers “pharmaceutical preparations for weight reduction and long-term management of weight” in Class 5. Registration No. 3,739,382 covers “providing weight management services, namely, weight reduction planning, diet planning, and supervision and behavior modification relating thereto” in Class 44.
Complainant’s parent company is F. Hoffman-La Roche AG of Switzerland. This entity owns one registration for XENICAL, namely World Intellectual Property Organization Registration No. 699,154 for XENICAL Logo for “pharmaceutical, sanitary, and veterinary preparations” in Class 5. This registration extends to 35 jurisdictions. F. Hoffman-La Roche AG is also the registered owner of the domain name . This domain name was created on April 17, 1997.
Upon learning of the registration of the disputed domain name , counsel for Complainant sent a letter to Respondent on April 29, 2011 alleging that the disputed domain name infringed the XENICAL trademark and requesting that Respondent transfer the disputed domain name to Complainant. The record does not indicate whether a response to this communication was sent by Respondent to Complainant.
Because this is a default case, very little information about Respondent is known other than that Respondent is identified on WhoIs reports for the disputed domain name as an individual by the name of Rex Bowden of Baton Rouge, Louisiana, United States of America.
The disputed domain name was created on December 30, 2010. 5. Parties’ Contentions A. Complainant
Complainant claims that it has been using the XENICAL trademark for pharmaceutical preparations since 1994 in the United States and that sales of the XENICAL product in the United States have amounted to hundreds of millions of dollars. Complainant also claims that the XENICAL trademark is well-known, citing numerous instances of unsolicited press coverage of the XENICAL product as evidence of the trademark’s notoriety.
Complainant states that the disputed domain name is likely to be confused with its XENICAL trademark because the disputed domain name incorporates the XENICAL trademark in its entirety. Complainant maintains that the incorporation of the word “rebate” into the disputed domain name does not prevent a likelihood of confusion.
Further, Complainant argues that “xenical” is not a word and has no valid use outside of its use as a trademark for Complainant’s goods. No license has ever been granted for Respondent’s use of XENICAL according to Complainant, and Complainant maintains that Respondent has never been commonly known by the disputed domain name . As such, Complainant contends that the disputed domain name was chosen by and is being used by Respondent in bad faith. Complainant further argues that Respondent is using the disputed domain name as a landing page which features links to third party websites, and that the third party websites linked to the disputed domain name offer competitive third party products. This use is cited by Complainant as evidence of bad faith use, specifically an attempt to trade off Complainant’s trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
A review of the disputed domain name’s literal composition reveals no immediately discernable English words other than “rebate”. The letter string before the word “rebate” is identical to Complainant’s XENICAL trademark. The term “rebate” is non-distinctive. See Dell Inc. aka Dell Computer Corporation v. Asia Ventures, Inc.,WIPO Case No. D2004-0452. When paired with a trademark, the term “rebate” is “likely to lead Internet users to the assumption that the domain [name] might be connected” to the trademark. See Deutsche Telekom AG v. Spiral Matrix,WIPO Case No. D2005-1145. Moreover, Complainant’s trademark is a coined term with no dictionary meaning. The disputed domain name’s incorporation of Complainant’s coined trademark in its entirety aggravates the likelihood that consumers would associate the disputed domain name with Complainant.
The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant has established rights in the XENICAL trademark which precede the creation of the disputed domain name. Complainant’s rights are recognized in the jurisdiction cited as Respondent’s country of residence.
There is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in the terms ”xenical” or “xenicalrebate”. As such, the Complainant has made out its prima facie case, which the Respondent has not rebutted.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant’s trademark is a coined word with no dictionary meaning. It is difficult to imagine a scenario where Respondent could have registered the disputed domain name in good faith given that it incorporates Complainant’s coined trademark in its entirety. Any doubt in favor of Respondent is minimized when considering the incorporation of the term “rebate” in the disputed domain name, which is defined as “a refund or fraction of the amount payable or paid for goods purchased in quantity”. The combination of Complainant’s XENICAL trademark and the term “rebate” to form a domain name suggests that the domain name will be used for refunds relating to the XENICAL product. Decisions involving other domain names combining coined trademarked terms and other non-descriptive or associative elements have similarly found that the domain names could not have been registered in good faith because they could not avoid creating a false impression of association with the trademarks and complainants involved. See, e.g., Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 (finding that “it is inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the complainant”, describing the name SONY as “a coined word, having no meaning other than as a trademark denoting the goods and services of the complainant” in a decision involving multiple domain names which combined the complainant’s SONY trademark with associative words such as “securities”, “model”, “present”, and “stock”).
It is clear from the record that Respondent has used the disputed domain name in bad faith. According to the record, the content of the disputed domain name has featured links to third party websites offering third party products which compete with Complainant’s XENICAL product in the marketplace. A website’s incorporation of third party links to goods which compete with the goods provided under another party’s trademark demonstrates a deliberate effort to trade off the goodwill associated with the trademark. See Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited,WIPO Case No. D2009-0728. Moreover, by registering a domain name incorporating Complainant’s trademark XENICAL and posting links to third party websites offering competitive goods on a webpage featured at the domain name, Respondent is diverting traffic from Complainant’s “www.” website. Respondent’s conduct therefore falls within the scope of paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that there is evidence of bad faith use and registration. The requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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 Complainant.
Kimberley Chen Nobles
Sole Panelist
Dated: June 24, 2011
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