The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland.
The Respondents are Vladimir Zaicev and Dmitry Bogdanov of Moscow, Russian Federation. 2. The Domain Names and Registrar
The disputed domain names and are registered with eN (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2011. On December 7, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 7, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are 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 Respondents of the Complaint, and the proceedings commenced on December 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2011. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 29, 2011.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on January 12, 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
4.1 The Complainant and its group of companies is a leading research-focused healthcare group in the fields of pharmaceuticals and diagnostics, with global presence in more than 100 countries.
4.2 The XENICAL and KYTRIL trademarks have been registered by the Complainant on a worldwide basis. The Complainant holds registrations in over 50 countries. The trademark XENICAL has a priority date of August 5, 1993 (International Registration No. 612908) and the trademark KYTRIL (International Registration No. 848105) has a priority date of February 19, 1990.
4.3 The XENICAL trademark is applied to weight loss medication used to assist obese people to manage weight problems. KYTRIL is applied as a trademark for antiemetic drugs used to prevent nausea and vomiting associated with chemotherapy or radiation.
4.4 The disputed domain names were registered on November 23, 2011. 5. Parties’ Contentions A. Complainant
5.1 The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s XENICAL and KYTRIL trademarks. The disputed domain names are comprised of the Complainant’s XENICAL and KYTRIL trademarks in their entirety and the descriptive terms “rxb” and “medk” respectively, do not sufficiently distinguish the disputed domain names from the XENICAL and KYTRIL trademarks.
5.2 The Complainant further contends that the Respondents do not have any rights or legitimate interests to the disputed domain names because:
(a) the Complainant has exclusive rights to the XENICAL and KYTRIL trademarks.
(b) the Complainant has not licensed, authorised or otherwise permitted the Respondents to use the XENICAL or KYTRIL trademarks for domain names.
(c) the Respondents do not have legitimate interests in the disputed domain names as they direct Internet users to an online pharmacy by applying the Complainant’s XENICAL and KYTRIL trademarks.
(d) the Respondents are not making legitimate noncommercial or fair use of the disputed domain names as the Respondents seek to trade on the fame of the XENICAL and KYTRIL trademarks for commercial gain and profit.
5.3 In relation to the requirement of bad faith registration and use of the disputed domain names, the Complainant contends as follows:
(a) the Respondents had knowledge of the Complainant’s XENICAL and KYTRIL trademarks when they registered the disputed domain names on November 23, 2011.
(b) the content of the website which the disputed domain names resolve to indicates an intentional attempt by the Respondents to create a likelihood of confusion with the Complainant’s well-known XENICAL and KYTRIL trademarks as to the source, affiliation and endorsement of the website or of the products or services posted on or linked to the website.
(c) the disputed domain names resolve to an online pharmacy, which relies on the confusion caused by the Respondents through the use of the Complainant’s trademarks. B. Respondent
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel noted the Complainant’s request to proceed with a single Complaint against purportedly the two different Respondents that had registered the disputed domain names separately. The Complainant contends that the Respondents, as revealed in the WhoIs database, represent the same person and are using aliases. This is supported by the similar circumstances surrounding the registration and use of the disputed domain names. The Complainant further relies on FragranceX.com, Inc. v Argosweb Corp a/k/a Oleg Techino,WIPO Case No. D2010-1237, where the panelist agreed that proceedings may be heard in a single complaint where it is clear that the same person is registering domain names using fictitious aliases. This Panel is satisfied with the evidence adduced by the Complainant in that the Respondents represent the same person who had used aliases or false identities to register the disputed domain names. The evidence include the same website to which the disputed domain names resolve towards, the identical date of registration of the disputed domain names, the same Registrar and the identical IP location for the disputed domain names. Hence, the Panel agrees with the request by the Complainant to consolidate complaints against the two Respondents into the same Complaint.
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(c) that the disputed domain names have been registered and are being used in bad faith. 6.1. Identical or Confusingly Similar to the Trademark
The Panel is satisfied with the evidence adduced by the Complainant to establish its rights to the XENICAL and KYTRIL trademarks. The trademarks have been registered since 1993 and 1990 respectively and used by the Complainant on a global basis.
The disputed domain names comprise the XENICAL and KYTRIL trademarks in their entirety with the additional descriptive terms “medk” and “rxb” respectively. The term “med” is often used as a short form reference to medical and the term “rx” is commonly applied in the medical or pharmaceutical industry as a reference to medical prescriptions.
Notwithstanding the addition of the descriptive matter, the distinctive features of the disputed domain names remain the XENICAL and KYTRIL trademarks. The additional descriptive matter, which clearly has a bearing on the medical and pharmaceutical industries in which the trademarks relate to, does not seem to distinguish the disputed domain names from the XENICAL and KYTRIL trademarks nor does it eliminate the confusing similarity (see Wal-Mart Stores, Inc. v Kuchora, Kal, WIPO Case No. D2006-0033).
As such the Panel finds that the disputed domain names are confusingly similar to the Complainant’s XENICAL and KYTRIL trademarks for the purpose of the Policy. 6.2. Rights or Legitimate Interests in the Disputed Domain Name
The Complainant’s assertions have not been rebutted by the Respondents to indicate whether they have any rights or legitimate interests to the disputed domain names.
The Complainant unequivocally denied granting the Respondents any licence, authority or permission to use the XENICAL and KYTRIL trademarks. There was also no evidence to indicate that the Respondents were known by the name XENICAL or KYTRIL or the additional descriptive terms “medk” or “rxb”.
The disputed domain names resolve to a website that provides online pharmacy services. In this Panel’s opinion, as the Respondents use the XENICAL and KYTRIL trademarks as critical features of their respective domain names and the use thereof are unauthorized, then such use cannot be regarded as bona fide offerings of goods or services or fair or noncommercial in nature (see also Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo,WIPO Case No. D2004-0990). This Panel also agrees with the Complainant’s contention that the use of the XENICAL and KYTRIL trademarks as part of the disputed domain names (albeit partly) to provide online pharmacy services (through the resolution of the disputed domain names to the website concerned) cannot give rise to a legitimate interest (see also Pfizer Inc. v jg a/k/a Josh Green,WIPO Case No. D2004-0784; F. Hoffmann- La Roche AG v. Pinetree Development, Ltd.,WIPO Case No. D2006-0049).
In the circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been satisfied by the Complainant. 6.3. Registration and Use in Bad Faith
The Panel agrees with the contention by the Complainant that the Respondents must have had knowledge of the Complainant’s XENICAL and KYTRIL trademarks when they registered and started using the disputed domain names. The factors that were taken into account to arrive at this conclusion include the date of registration of the XENICAL and KYTRIL trademarks which pre-dated the registration of the disputed domain names and the widespread use of the XENICAL and KYTRIL trademarks at an international level.
The Panel is satisfied with the contention by the Complainant that the use of the XENICAL and KYTRIL trademarks as part of the disputed domain names appear to be an attempt to mislead or to divert Internet traffic to the website that provides online pharmacy services. The use of the XENICAL and KYTRIL trademarks seek to represent a connection or association between the online pharmacy and the Complainant or the Complainant’s products or services related to the XENICAL and KYTRIL trademarks. This is supported further by the fact that the disputed domain names resolve to the same website that offers online pharmaceutical services, a service offering which is directly related to products and services related to the XENICAL and KYTRIL trademarks.
As such, the Panel finds that bad faith has been demonstrated under paragraph 4(b)(iv) of the Policy. 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 disputed domain names, and be transferred to the Complainant.
Syed Naqiz Shahabuddin
Sole Panelist
Dated: January 28, 2012
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