The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is United Mailorder Ltd of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with AsiaRegister, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2011. On November 16, 2011, the Center transmitted by email to AsiaRegister, Inc. a request for registrar verification in connection with the disputed domain name. On November 23, 2011, AsiaRegister, 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 November 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2011.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on January 11, 2012. 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 together with its affiliated company is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries.
The Complainant is the owner of the trademark XENICAL. The XENICAL trademark is currently registered in various countries around the world.
The mark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off.
The disputed domain name was registered on June 23, 2000. 5. Parties’ Contentions A. Complainant
The Complainant states that the disputed domain name is confusingly similar to the Complainant’s mark seeing that it incorporates its mark in its entirety. The addition of the generic term “clinic” does not sufficiently distinguish the disputed domain name from the trademark.
The Complainant states that it has exclusive rights of the trademark XENICAL, and has not granted any license/permission/authorization or consent to use XENICAL in the disputed domain name to the Respondent. The Respondent’s only reason in registering and using the disputed domain name is to benefit from the reputation of the XENICAL trademark and illegitimately trade on its fame for commercial gain and profit. There is no reason why the Respondent should have any rights or legitimate interests in such domain name.
Finally the Complainant states that the Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of Respondent’s website or of the products or services posted on or linked to Respondent’s website. As a result, Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the XENICAL trademark fame. As a result the disputed domain name has been registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(i) the disputed domain name registered by the Respondent 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 respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
This first element requires that the Complainant demonstrate that (1) it has trademark rights and (2) the disputed domain name is identical or similar to a trademark in which the Complainant has rights.
The Panel finds that the Complainant has established that it is the owner of the registered trademark XENICAL based on the evidence provided by the Complainant (annex 3 to the Complaint).
The disputed domain name consists of the trademark XENICAL plus the addition of the generic term “clinic”. Therefore the issue turns to the question of whether the addition of this term would change the overall impression of the disputed domain name as being connected to the Complainant or the trade mark owned by the Complainant. The Panel considers that the addition of the generic term, especially when added to the well-known trademark is not sufficient to avoid confusion. Especially when the word added to the trademark may confuse Internet users or make them believe of the existence of a medical facility provided by the Complainant.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
By the terms used in paragraph 4(a) of the Policy it is clear that the overall burden of proof is on the Complainant, however the Policy provides the Respondent means to demonstrate its rights to and legitimate interests in the domain name in responding to a Complaint. If the Respondent does not make use of these means and the Complainant has established a prima facie case under sub paragraph 4(a)(ii) of the Policy, the burden is shifted to the Respondent to prove the contrary.
The Complainant asserts that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the name “xenical”. The Complainant has not licensed or otherwise permitted the Respondent to use the trademark XENICAL. There is no current relationship between the Complainant and the Respondent.
The Respondent has not provided a response to the allegations set forth by the Complainant, though given the opportunity.
There is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interests in the disputed domain name.
In the absence of a Response this Panel is satisfied that the Complainant has satisfied the second element, paragraph 4(a) of the Policy and has established a prima facie case that the Respondent has no rights or legitimate interests in said domain name. C. Registered and Used in Bad Faith
This third element requires that the Complainant demonstrates that (1) the disputed domain name has been registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
The disputed domain name is composed of the word, “xenical” and “clinic”. The first is a registered trademark owned by the Complainant and the second refers to a facility, often associated with a hospital or medical school, which is devoted to the diagnosis and care of outpatients, in other words a term clearly related and which involves the pharmaceutical business.
From the evidence sent by the Complainant it is clear that the Respondent was selling the pharmaceutical Xenical products on its web site, now if this action is legal or not, it is not for the Panel to determine, however, the use of the Complainant’s trademark as part of the domain name that resolves to the Respondents web site without the authorization of use of such trademark can only be considered as an act of bad faith, since clearly the Respondent had knowledge that the pharmaceutical product that it was selling on its web site pertained to a third party and that by using such mark as its domain name, it would divert Internet users to its website merely for commercial gain. The Panel considers that by registering a domain name corresponding to a well known trademark, and selling such products via the Internet, the Respondent has intentionally tried to divert Internet user’s to its webpage, for commercial gain.
Furthermore, not only has the Respondent made use of the Complainant’s trademark, and sells its products, but it also commercializes Complainant’s competitors’ products and generic pharmaceuticals. This behavior constitutes bad faith use and may tarnish the Complainant’s reputation by, among other things, attracting Internet users to a webpage that does not correspond to what they are looking for.
The above can only lead the Panel to conclude that the Respondent’s attempting to attract, for commercial 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 of the services provided on the website.
Therefore, in accordance with paragraph 4(b)(i) and (iii) of the Policy, the above findings lead to the conclusion that the disputed domain name has been registered and 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 name be transferred to the Complainant.
Rodrigo Velasco Santelices
Sole Panelist
Dated: January 16, 2012
Full & Egal Universal Law Academy