The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Alex Rino of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2012. On September 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 September 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2012.
The Center appointed David J.A. Cairns as the sole panelist in this matter on November 8, 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 the registered owner of the international trademark registration No. 612,908 dated March 3, 1994 for the trademark XENICAL for pharmaceutical, veterinary and hygiene products. This international registration is based on the Swiss registration No. 407,537 dated August 5, 1993.
The disputed domain name was created on August 11, 2012.
The Panel entered the disputed domain name in his web browser on November 12, 2012. The landing page to which the disputed domain name resolved was entitled “Buy Xenical Diet Pill Xenical FAQ & Answers”. There followed a series of headings, including “Weight Loss Pills”; “Online Prescriptions”; “Weight Loss Plan Experts”, and various others relating to weight loss. These headings included “Xenical Pills” and “Information on Xenical” where there appeared photos of blue capsules bearing the word “xenical” and the name “Roche”. The ‘Information on Xenical’ section included the statement “For some serious information on Xenical, you can try the company’s website. Roche Laboratories ltd. has an informative website. Try checking out “”. It has detailed information on Xenical.” On the right hand side of the pages on the website there was a heading “Buy Xenical (Orlistat)” followed by a picture of a blue capsule and the word XENICAL and the line “Generic Xenical is used for managing obesity in adults and adolescents”. The link took the Panel to a webpage entitled “ED Online Store” where various combinations of weights and pill quantities of “Generic Xenical” were offered for sale, identifying the “Brand” as “Orleph” and the “Manufacturer” as “Aurochem”. There were links to the sale of many other categories of pharmaceutical products on the same page. 5. Parties’ Contentions A. Complainant
The Complainant states that it 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 further states that it holds registrations in over hundred countries on a world-wide basis for XENICAL, which is used in respect of an oral prescription weight loss medication.
The Complainant states that the disputed domain name is confusingly similar to the Complainant’s XENICAL trademark, as it incorporates this mark in its entirety, and the addition of the generic terms “buy” and “dietpill” do not sufficiently distinguish the disputed domain name from the trademark. It also notes that the Complainant’s use and registration of the mark XENICAL predate the Respondent’s registration of the disputed domain name.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It says that the Complainant has exclusive rights for XENICAL, and no licence, permission, authorization or consent was granted to use XENICAL in the disputed domain name. Furthermore, 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, by redirecting Internet users to a pharmacy online.
The Complainant alleges that the disputed domain name was registered and is being used in bad faith. It states that the disputed domain name was registered in bad faith since at the time of the registration, i.e. on August 11, 2012, the Respondent had knowledge of the Complainant’s well-known product/mark XENICAL. The disputed domain name is being used in bad faith as the Respondent has intentionally attempted (for commercial purposes) to attract Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of the Respondent’s websites or of the products or services posted on or linked to the Respondent’s websites. It refers to Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784. It also states that the Respondent is intentionally misleading consumers and confusing them by making them believe that the Respondent’s websites are associated or recommended by the Complainant. As a result, the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the XENICAL trademark.
The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel is required to decide the 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 15(a) of the Rules).
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark 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.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. A. Identical or Confusingly Similar
The Panel accepts that the Complainant owns the XENICAL trademark internationally.
The disputed domain name is not identical with the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark entirely, adding the prefix “buy” and the suffix “dietpill”. “The fact that a trademark is incorporated in its entirety in a domain name is a solid indication of but does not ipso facto mean that the domain name is confusingly similar to the trademark. The similarity of the trademark and the domain name depends on many factors, including the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin.” (See Pfizer Inc v. The Magic Islands,WIPO Case No. D2003-0870).
In the present case, the Panel considers that the disputed domain name is confusingly similar to the XENICAL trademark for the following reasons: (a) “xenical” is an unusual and invented word with a high degree of inherent distinctiveness, and is the most prominent element in the disputed domain name; (b) “buy” and “dietpill” both refer to and emphasize the trademark function of XENICAL in that XENICAL is the product that can be bought on the website, and the nature of this product is a diet pill; and (c) the disputed domain name in its entirety identifies a website that Internet users will assume offers the Complainant’s pharmaceutical for sale.
Therefore the addition of the words “buy” and “dietpill” are not sufficient to avoid a confusing similarity between the XENICAL trademark and the disputed domain name, and so the first element required by the Policy is satisfied. B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain name; (ii) the Respondent is not authorized or licensed by the Complainant to use the XENICAL trademark or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name; (iv) the Respondent has been making a commercial use of the disputed domain name (through offering pharmaceuticals for sale) so the circumstances described in paragraph 4(c)(iii) of the Policy do not exist in the present case.
As regards paragraph 4(c)(i) of the Policy, the Panel finds that the Respondent is using the disputed domain name in relation to an offering of goods or services. However, this offering is not bona fide for two distinct reasons. Firstly, the disputed domain name directs to a website that sells not the Complainant’s trademarked pharmaceutical but a generic equivalent. Secondly, the Respondent’s website also offers for sale many other pharmaceutical products, and so is attracting Internet users through the fame of the Complainant’s trademark that are then offered a wide range of unrelated products. For both these reasons the Respondent’s conduct constitutes “bait and switch” marketing, which is not bona fide: see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
Accordingly, and in the absence of any response from the Respondent providing any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Thus, the second element of paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel notes that “xenical” is an invented word with no meaning in English. It is a highly distinctive trademark and has been extensively used by the Complainant internationally. The Respondent has registered and used a domain name incorporating prominently this well-known trademark to offer for sale not the Complainant’s product, but the generic equivalent of a competitor, as well as unrelated products. The Respondent is in the business of the sale of pharmaceuticals, and the Panel finds that the Respondent knew of the Complainant’s trademark at the time of registration, and deliberately sought to use its goodwill to attract Internet users seeking the Complainant’s product. The Panel concludes that the Respondent has registered and used the disputed domain name in order to deceive Internet users seeking the Complainant’s product, so as to generate revenue from selling unrelated or competing pharmaceuticals. This constitutes bad faith registration and use within the meaning of the Policy.
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith. In particular, paragraph 4(b)(iv) of the Policy states that if the Panel finds that the Respondent has used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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, it should be taken as evidence of the registration and use of the disputed domain name in bad faith.
The Respondent’s use of the disputed domain name with the intention to attract Internet users for commercial gain is established by the fact that the disputed domain name hosts a website offering pharmaceuticals for sale. The likelihood of confusion as to source, sponsorship, affiliation or endorsement is established by the fact that the disputed domain name is confusingly similar to the XENICAL trademark, and Internet users are likely to assume the disputed domain name hosts a website that is affiliated with or endorsed by the Complainant, or at least offers for sale XENICAL originating from the Complainant or subject to quality control by the Complainant. The appearance of photograph of a blue pill on the website at the disputed domain name clearly showing the trademark XENICAL and the name “Roche” confirms the impression of affiliation or endorsement. The website identifies the “Brand” as “Orleph” and the “Manufacturer” as “Aurochem” at the point of sale, so at this point the buyer might realize that this is not a website selling the Complainant’s product. However, the fact that the deception as to source or affiliation is rectified prior to purchase does not alter the fact that the buyer has been brought to the point of purchase by deception and a bad faith misuse of the goodwill attached to the Complainant’s trademark.
Accordingly, the third element of paragraph 4(a) of the Policy is also satisfied. 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.
David J.A. Cairns
Sole Panelist
Date: November 16, 2012
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