The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is n/a Welly Davidson of Vilnius, Lithuania. 2. The Domain Name and Registrar
The disputed domain name is registered with NetEarth One Inc. d/b/a NetEarth (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2012, the Registrar 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 June 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2012.
The Center appointed Amarjit Singh as the sole panelist in this matter on July 19, 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 companies is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, having global operations in more than 100 countries. The Complainant’s mark XENICAL is protected as trademark in a multitude of countries worldwide.
According to the Complainant, the three requirements of the Policy are satisfied in this case and the disputed domain name should therefore be transmitted to it. 5. Parties’ Contentions A. Complainant
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 on a world-wide basis. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The complainant is the registered proprietor of the trademark XENICAL in international class 5 as per the certificate filed by the Complainant in International Registration Nos. 612908 and 699154. The disputed domain name is confusingly similar to the Complainant’s mark as it incorporates the Complainant’s mark in its entirety. The addition of the generic terms “buy”, “online” and “120mg” does not sufficiently distinguish the disputed domain name from the Complainant’s trademark.
The complainant relies upon Lilly ICOS LLC v. John Hopking / Neo net Ltd.,WIPO Case No. D2005-0694 “generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”.
The Respondent has not responded to the arguments of the Complainant. The Panel agrees with the Complainant on the basis of the Registration Certificates that have been provided by the Complainant in the proceedings and finds that the Complainant is successful in proving the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has not granted any licence/permission/authorization to the Respondent to use the mark XENICAL as the essential feature of the disputed domain name. Furthermore, it is obvious that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark XENICAL.
The Complainant has been successful in proving its trademark rights in the mark XENICAL and the Respondent has not disputed the claim of the Complainant.
Furthermore, Internet users are directed to an online pharmacy store wherein what appears to be a counterfeit product of the Complainant is being sold.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and finds that the Complainant is successful in proving the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The disputed domain name was registered on June 4, 2012 much later than the registration and the use of the mark by the Complainant in the international market. Annex 5 to the Complaint clearly establishes that the Respondent is intentionally attempting to commercially gain and 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 the Respondent’s website or of the products or services posted on or linked to the Respondent’s website.
Furthermore, the Respondent is intentionally misleading the consumers and confusing them by making them believe that the websites behind the links appearing at “www. ” are associated or recommended by the Complainant.
The Respondent has registered the disputed domain name with what appears to be false address with the intention to encash upon the goodwill of the Complainant. It is pertinent to note that physical mail sent by the Center to the Respondent was not delivered due to the non-availability of correct addresses in the WhoIs record of the Registrar.
The Panel is therefore of the opinion that the disputed domain name has been registered by the Respondent in bad faith and the same has been used also in bad faith, with the likely intention to encash upon the goodwill associated with the mark of the Complainant.
The Panel finds that the Complainant is successful in proving the requirement of paragraph 4(a)(iii) 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 domain name be transferred to the Complainant.
Amarjit Singh
Sole Panelist
Dated: July 25, 2012
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