Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
Respondent is Direct Privacy of Metairie, Louisiana, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , , are registered with DNC Holdings, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2012. On July 26, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 26, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 21, 2012.
The Center appointed John Terry as the sole panelist in this matter on September 17, 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
Complainant, together with its affiliated companies, is one of the world’s leading manufacturers of pharmaceutical and diagnostic products and has operations in more than 100 countries. Complainant's trademark XENICAL has been protected in a multitude of countries and registrations include international registration numbers 612908 and 699154 with a priority date of August 5, 1993. The trademark XENICAL has been used in relation to an oral prescription weight-loss medication.
The disputed domain names have been used to redirect Internet users to online pharmacies. Complainant has granted no licence or permission or authorisation for Respondent to utilise any domain name containing the trademark XENICAL or any confusingly similar domain name for the purpose of attracting Internet users to a pharmacy online. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain names are all confusingly similar to Complainant's trademark since each incorporates the trademark in its entirety and merely adds generic material which does not sufficiently distinguish any of the disputed domain names from Complainant’s trademark.
Complainant relies on Hoffmann-la Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240, for the principle that incorporating a trademark in its entirety may be sufficient to establish that the domain name is confusingly similar to the complainant’s trademark. Furthermore, Complainant relies on the principle in Lilly ICOS LLC v. John Hopking/Neo net Ltd.,WIPO Case No. D2005-0694, wherein the UDRP panel stated “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 disputed domain names comprise Complainant’s trademark XENICAL with various generic and non-distinguishing words namely “buy”, “online”, “guide”, “without prescription” and “blog”.
Complainant's use and registration of the trademark XENICAL predates the registration of the disputed domain name.
Secondly, Complainant contends that Respondent has exclusive right in XENICAL and has given no permission for its use in any of the disputed domain names, and contends further that Respondent has used the disputed domain names for commercial gain and with the purpose of capitalising on the fame of Complainant's trademark XENICAL. Internet users on accessing any of the disputed domain names are redirected to online pharmacy websites.
Complainant relies on a principle established by the UDRP panel in Hoffman-La Roche Inc. v.Samuel Teodorek, WIPO Case No. D2007-1814. In that case the panel held “Respondent’s use of the disputed domain name to redirect Internet users to an on-line pharmacy demonstrates Respondent’s lack of a legitimate interest in the domain name”.
Complainant further contends that at the time of the registration of the disputed domain names, namely May 29, 2012, Respondent must have had knowledge of Complainant's well-known trademark XENICAL and accordingly the disputed domain names were registered in bad faith.
Furthermore, Complainant contends the disputed domain names are also being used in bad faith by virtue of Respondent’s attempt to attract, for commercial purposes, Internet users to Respondent's websites, and in so doing is creating a likelihood of confusion by causing such users to believe that the websites behind at the disputed domain names are associated or recommended by Complainant.
Complainant relies on the principle that bad faith is established when "Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy"; see Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
The Panel is satisfied that Complainant and the Center have taken all possible steps to serve on Respondent copies of all relevant documents and given Respondent a reasonable opportunity to respond under the Policy and the Rules. Despite this, there has been no Response. The Panel finds that the proceedings can proceed based on the certified content of the Complaint and documents submitted in accordance with the Policy and the Rules.
The Rules require that the Panel decide a complaint on the basis of the documents submitted, and Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are all confusingly similar to a trademark of Complainant namely XENICAL in that each disputed domain name differs merely by the addition of non-distinctive material to Complainant’s mark. The Panel adopts the contentions of Complainant in this regard. The Panel finds that the requirements in paragraph 4(a)(i) of the Policy are met. B. Rights or Legitimate Interests
Annex 9 to the Complaint shows that the disputed domain names were used to redirect Internet users to online pharmacies. The Panel accepts that Respondent was using the disputed domain names commercially and using the trademark of Complainant to attract business.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes using a domain name in connection with a bona fide offering of goods and services, or the respondent being commonly known by the domain name or the respondent making a legitimate non-commercial or fair use of a domain name without intent for commercial gain to misleadingly divert consumers. See Policy paragraphs 4(c)(i)-(iii). It has been established that an absence of rights or legitimate interests can properly be found if the complainant makes out a prima facie case and the respondent enters no response; see for example Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
In the present case there is no evidence that the disputed domain names are being used in connection with a bona fide offering of goods or services. Respondent has had an opportunity that it has not taken up to demonstrate such a right or legitimate interest. Furthermore, there is no evidence Respondent has ever commonly been known by any of the disputed domain names and finally the evidence in the Complaint and in particular Annex 9 shows that the disputed domain names were used to redirect Internet users to online pharmacies and that is clearly for commercial gain and has a high propensity to mislead and divert consumers, and which the Panel finds cannot form the basis for a right or legitimate interest in the disputed domain names under the circumstances.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel also finds that the third element of paragraph 4(a) of the Policy, namely bad faith registration and bad faith use, is also established.
Plainly, Respondent must have known or ought to have known of the well-known trademark of Complainant XENICAL when it applied to register the disputed domain names in May 2012. Secondly, the Panel finds that the disputed domain names are being used in bad faith as demonstrated by the Internet websites of Respondent as evidenced in Annex 9 of the Complaint. The Panel accepts Complainant's contention that the manner of use of the disputed domain names by the Respondent is misleading or has a high propensity to mislead consumers and to confuse them by virtue of the fact that consumers are likely to believe that the websites at the disputed domain names are associated with or recommended by Complainant when this is not the case.
It is well-established the Panel may draw inferences about bad faith registration or use in the light of the circumstances such as a lack of response to the complaint and a lack of conceivable good faith; see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel therefore concludes that the disputed domain names were registered and are being used by Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy, and that paragraph 4(a)(iii) of the Policy is met. 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 Complainant.
John Terry
Sole Panelist
Dated: October 1, 2012
Full & Egal Universal Law Academy