The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Fundacion Private Whois, Domain Administrator of Panama, Panama. 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 June 19, 2012. On June 19, 2012, the Center transmitted by email to I Corp a request for registrar verification in connection with the disputed domain name. On June 22, 2012, 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 June 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2012.
The Center appointed Moonchul Chang as the sole panelist in this matter on August 2, 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 is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operation world widely in many countries. The Complainant owns trademark rights regarding the mark XENICAL in many countries including International Registration Nos. 612908 & 699154.
The disputed domain name was created on June 2, 2012 according to the publicly available WhoIs information. The Respondent uses the website connected to the disputed domain name and there is evidence that such website has contained in the past advertising links to products and services of third parties. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
(1) The disputed domain name is confusingly similar to the Complainant’s mark. It incorporates the Complainant’s mark XENICAL in its entirety. The addition of the term “faq” (“frequently asked question”) does not sufficiently distinguish the disputed domain name from the trademark.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
Although the Complainant has never permitted or authorized the Respondent to use the mark XENICAL in the disputed domain name, the Respondent uses the disputed domain name for commercial gain. The Respondent has used the disputed domain name to redirect Internet users to a search engine with sponsored links in the pharmaceutical field of the Complainant’s business.
(3) The disputed domain name has been registered and is being used by Respondent in bad faith. Firstly, the disputed domain name was registered in bad faith because the Respondent was obviously aware of the Complainant’s well-known mark XENICAL. Secondly, the Respondent is using the disputed domain name in bad faith because he has intentionally attempted to attract internet users to its website by creating a likelihood of confusion with the Complainant’s well-know mark as to the source, affiliation and endorsement of the Respondent’s website or the products posted on the website. The disputed domain name has been used to advertize links to websites of third parties, including in the pharmaceutical field of the Complainant’s business. As a result the Respondent may generate unjustified revenues for each click-through by on-line consumers of the sponsored links to capitalize on the XENICAL trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name entirely incorporates the Complainant’s trademark XENICAL and is likely to be associated with the Complainant which has no apparent connection with the Respondent. Numerous UDRP panels held that where a domain name substantially incorporates a Complainant’s trademark, this is sufficient to make the domain name “confusingly similar” within the meaning of the Policy. (See A, Inc. v. MCL International Limited,WIPO Case No. D2000-1678). The addition of a term, “faq” is not sufficient to avoid the confusing similarity (see Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227). Further, the generic top-level suffix ".com" can be disregarded under the confusing similarity test, (see DHL Operations B.V. v. zhangyl, WIPO Case No. D2007-1653).
Accordingly, the Panel finds the first element under paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on the Complainant. However, once the Complainant presents a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of rebuttal is transferred to the Respondent, (see Belupo d.d. v. WACHEM d.o.o.WIPO Case No. D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Firstly, the Panel considers that in the absence of any license or permission from the Complainant to use the Complainant’s trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. Such is the case here, in as much as the Complainant is widely known in the pharmaceutical field and did not give any license or other permission to the Respondent to use the mark XENICAL.
Secondly, the Respondent failed to come forward with any appropriate allegations or evidence that might demonstrate his rights or legitimate interests in the disputed domain name to rebut the Complainant’s prima facie case.
Thirdly, there is no evidence presented to the Panel that the Respondent has ever used the disputed domain name in connection with a bona fide offering of goods or services pursuant to the Policy or UDRP jurisprudence. In addition there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name. The name “xenical” has no apparent association with the Respondent.
Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the domain name “has been registered and is being used in bad faith.” As this requirement is conjunctive, the Complainant must establish both bad faith registration and bad faith use. In addition the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and other circumstances may likewise lead to a finding of bad faith registration and use.
Since the Complainant’s mark XENICAL is internationally well-known, the Respondent is likely to have registered the disputed domain name with notice of the Complainant’s trademark. The Panel considers that the Respondent in all likelihood registered the disputed domain name to take advantage of the similarity between the disputed domain name and the Complainant’s trademark. Several UDRP decisions stated that bad faith may be inferred from the registration of a well known trademark, (see DHL Operations B.V. v. Ali Kazempour, WIPO Case No. D2004-1094).
In addition the Panel considers that the Respondent uses the disputed domain name, which includes in its entirety the well known trademark XENICAL, though he has no rights or legitimate interests in the domain name. This is supported by the fact that the Respondent has operated a website located at to advertize links to websites of third parties, including in the pharmaceutical field of the Complainant’s business. As a result, the Respondent, by using the disputed domain name, is intentionally confusing the consumers so as to benefit from its confusing similarity with the trademark XENICAL. Such finding indicates the Respondent’s bad faith in the registration and use of the disputed domain name, (see Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; The Nasdaq Stock Market, Inc. v. Act One Internet Solutions,WIPO Case No. D2003-0103).
Based on the foregoing, the Panel is satisfied that bad faith registration and use have been sufficiently established with respect to the disputed domain name in accordance with paragraphs 4(a)(iii) and 4(b) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Moonchul Chang
Sole Panelist
Dated: August 23, 2012
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