The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, internally represented.
The Respondent is Vladimir Ulyanov, Minsk Belarus. 2. The Domain Names and Registrar
The disputed domain names , and (the “Domain Names”) are registered with Dynadot, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2011. On August 29, 2011, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the Domain Names. On August 30, 2011, Dynadot, 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 September 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 26, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2011.
The Center appointed Alexandre Nappey as the sole panelist in this matter on October 21, 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
The Complainant, F. Hoffmann-La Roche AG, is together with its affiliated companies a main research-focused healthcare group in the field of pharmaceuticals and diagnostics, having global operations in more than 100 countries.
The mark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off. For the mark XENICAL the Complainant holds registrations in over hundred countries.
The Complainant is the registered owner of the trademark XENICAL since at least August 5, 1993. It was registered on an international basis (international registration numbers 612908 and 699154). This trademark has been duly renewed and was in force at the date of registration of the Domain Names in issue.
The Domain Names were registered on June 29, 2011.
The Domain Names are redirected (302 redirection) to an online pharmacy store. 5. Parties’ Contentions A. Complainant
According to the Complainant, the Domain Names are confusingly similar to its trademark XENICAL.
The trademark XENICAL - duly registered since 1993 - is protected in more than 100 countries and is considered as a well-known trademark.
The Complainant states the XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off.
The Domain Names are strictly reproducing the trademark XENICAL to which various descriptive words are added (“buy”, “online”, “Australia”, “KØb” (which means “buy” in Danish language), “Danmark”, “KjØp“ (which means “buy” in Nowegian language), “Norge” (which means “Norway” in Nowegian language” and “i” (a preposition).
The Complainant asserts the Domain Names are confusingly similar to its XENICAL mark as it incorporates the mark in its entirety. The addition of various generic words does not distinguish the Domain Names from the mark as the fame of the mark is well established.
The Respondent has no rights or legitimate interests in the Domain Names. The Respondent has not been licensed, nor authorized to use the trademark XENICAL.
The Domain Names were registered and are being used in bad faith, since at the time of the registration of the Domain Names the trademark XENICAL was very well-known. In addition, the website resolved by the Domain Names is an online pharmacy. As a result, the Respondent is intentionally misleading the consumers and confusing them by making them believe that the website operated is associated or recommended by the Complainant.
The Complainant therefore requests for the transfer of the Domain Names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(i) The Domain Name are 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 respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate.”
Having consideration to the parties’ contentions, the Policy, the Rules, the Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above mentioned elements are the following. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns exclusive trademark rights with respect to the word “xenical.”
The trademark XENICAL is a distinctive sign and the Complainant has gained reputation throughout the world with the distribution and commercial use of this medicament.
All the Domain Names include the word “xenical”, which is, as previously said, the Complainant’s trademark.
In fact, all the disputed Domain Names combine the trademark XENICAL with descriptive terms:
,
and
As contended by the Complainant, these words are merely descriptive and geographic words.
The Panel finds that all of the words that are added in the Domain Names to the word “xenical” do not sufficiently distinguish the Domain Names from the trademark XENICAL.
As ruled in Wal-Mart Stores, Inc v. Kuchora, Kal,WIPO Case No. D2006-0033, “if a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words.”
The Panel concludes that the Domain Names are confusingly similar with the trademark of the Complainant.
Therefore the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant claims that it has not granted any rights to the Respondent to use the trademark XENICAL in the Domain Names.
The Complainant also contends that the Respondent is selling the Complainant’s products or counterfeit products on the website concerned. Hence the Respondent cannot be making any noncommercial or fair use of the Domain Names.
According to the decision in Pfizer Inc v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (cited by Complainant) “…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.”
None of these allegations has been challenged by the Respondent and the Panel finds that the Complainant has made at least a prima facie case of the Respondent’s lack of rights or legitimate interests in the Domain Names.
The Panel underlines that the Respondent is not authorized to sell the Complainant’s products and therefore finds in favour of the Complainant.
The Panel finds paragraph 4(a)(ii) of the Policy established. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Domain Names have been registered and are being used in bad faith.
The Complainant has demonstrated that the trademark XENICAL was a well-known trademark when the Domain Names were registered between on June 29, 2011. The Respondent should have been aware of the Complainant’s activities and of the Complainant’s well-known trademark.
The Complainant has also provided substantial evidence that the Respondent’s commercial activity is in the same area of business, that is, medicaments and pharmaceutical products. The website operated under the Domain Names is fully dedicated to online sale of pharmaceutical products, including those manufactured by the Complainant.
Therefore, it is beyond any reasonable doubt that by registering and using the Domain Names the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the websites available from the Domain Names by creating a likelihood of confusion with the Complainant’s trademark XENICAL as to the source of the websites in question and the product covered by the trademark XENICAL.
See also in similar circumstances F. Hoffmann-La Roche AG v. Pinetree Development, Ltd,WIPO Case No. D2006-0049: “the website resolving to the domain name at issue has been used to provide an online pharmacy which offers […] as well as various other drugs which directly compete with the Complainant. The use of the disputed domain name thus appears to be an attempt to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark. This is evidence of bad faith registration and use pursuant to the Policy […].”
Therefore, the Panel concludes that the Domain Names were registered and are being used in bad faith. 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 Names, , and be transferred to the Complainant.
Alexandre Nappey
Sole Panelist
Dated: November 25, 2011
Full & Egal Universal Law Academy