The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Private Whois of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2012. On the same date, the Center transmitted by email to I Corp a request for registrar verification in connection with the disputed domain name and I Corp 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 March 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2012.
The Center appointed R. Eric Gaum as the sole panelist in this matter on April 25, 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, F. Hoffmann-La Roche AG, is the owner of the mark XENICAL, which is protected by, inter alia, International Registration Nos. 612908 and 699154, with a priority date for the mark of August 5, 1993 and April 21, 1998 respectively.
The mark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep the weight off. The Complainant holds registrations for the mark XENICAL in over a hundred countries on a world-wide basis.
The Respondent is Private Whois , which has a contact address, located in Nassau, Bahamas.
The disputed domain name was registered on February 27, 2012. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s mark seeing that it incorporates this mark in its entirety. The addition of the term “norx” (i.e., no prescription, as “rx” is a commonly used acronym for prescription) does not sufficiently distinguish the disputed domain name from the Complainant’s mark. Furthermore, the Complainant’s use and registration of the mark XENICAL predates the Respondent’s registration of the domain name.
The Complainant has exclusive rights for XENICAL, and no license, permission, authorization or consent respectively was granted to use XENICAL in the domain name. Respondent is using the domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark XENICAL. Internet users typing the disputed domain name are directed to an online pharmacy. The disputed domain name clearly alludes to the Complainant and there is no reason why the Respondent should have any right or legitimate interest in such domains.
The disputed domain name was registered in bad faith since at the time of the registration, i.e., February 27, 2012, the Respondent certainly knew of the Complainant’s product/mark XENICAL. The domain name is also being used in bad faith. This is obvious since when viewing the websites under the disputed domain name, one realizes that 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.
Respondent, by using the disputed domain name, is intentionally misleading consumers and confusing them by making them believe that the website behind those links is associated or recommended by Complainant. As a result, Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the XENICAL mark fame. 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 and in accordance with the Policy, [the] 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 disputed domain name registered by the Respondent is identical or confusingly similar to a mark or a service in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and,
(iii) that the disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as are appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. As a result of the Respondent’s default, the Panel may even accept as true all of the allegations stated in the Complaint. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of the mark XENICAL, which is protected by, inter alia, International Registration Nos. 612908 and 699154 having a priority date for the mark of August 5, 1993 and April 21, 1998, respectively. Based on the registered mark and the Complainant’s continuous use of the XENICAL mark, the Complainant clearly has rights in the mark.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s XENICAL mark. The disputed domain name incorporates the XENICAL mark in its entirety, which alone has been held sufficient to support a finding that a domain name is confusingly similar to a complainant’s mark. See Hoffman-La Roche Inc. v. Patsy Hail,WIPO Case No. D2008-1343; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. Furthermore, the addition of non-distinctive or generic terms is insufficient to avoid confusion. See Diageo Ireland v. Guinnessclaim,WIPO Case No. D2009-0679; Roche Products Limited v. Domains by Proxy, Inc. / Christian Hunter,WIPO Case No. D2010-1892.
The Panel finds that the disputed domain name is confusingly similar to the XENICAL mark, and that the Complainant has established it has rights in the mark, pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name for purposes of paragraph 4(a)(ii) of the Policy.
The Panel finds that the Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Further, there is no evidence in the record that would indicate that the Respondent has any rights or legitimate interests in respect of the disputed domain name. Presumably, the Respondent would have provided a response to the Complaint had it had any rights or legitimate interests.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name pursuant to 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, which are set forth in paragraph 4(b) of the Policy, 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 domain name 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 mark 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 domain name 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 domain name 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 domain name 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 its website or location or of a product or service on the holder’s website or location.
Respondent is using the disputed domain name to intentionally attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known XENICAL mark, and using the disputed domain name to link to an online pharmacy. This practice has been recognized as sufficient to establish bad faith. See Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784.
As already mentioned, nothing in the record suggests that the Respondent is making any other legitimate non-commercial use of the disputed domain name. Presumably, the Respondent would have provided a response to the Complaint if it had been.
Accordingly, the Panel finds that the Complainant has established that the Respondent registered and used the disputed domain name in bad faith, pursuant to 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 name be transferred to the Complainant.
R. Eric Gaum
Sole Panelist
Dated: May 10, 2012
Full & Egal Universal Law Academy