The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is ICS INC. of Grand Cayman, Cayman Islands (KY), United Kingdom of Great Britain and Northern Ireland / Whois Privacy Protection Service, Inc. of Bellevue, Washington, Untied States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 22, 2012. On October 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 26, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 26, 2012.
The Center verified that the Complaint together with the amended 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 October 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2012.
The Center appointed Masato Dogauchi as the sole panelist in this matter on December 12, 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
Whereas the Respondent has not submitted any contentions, the followings are found the factual background of this case.
The Complainant is a company organized under the law of Switzerland, with its principal place of business in Basel, Switzerland.
According to the Registrar, the Respondent seems to be an entity in the United States of America.
This dispute concerns the disputed domain name identified, registered by the Respondent on June 4, 2012.
The Complainant is, together with its affiliated companies, one of the leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries. The Complainant’s mark XENICAL is protected in a multitude of countries worldwide. For instance, the priority date for the mark XENICAL under International Registration No. 612908 & 699154 is August 5, 1993. The mark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off. The mark XENICAL is well-known worldwide.
At the date when the Complaint was filed, the website at the disputed domain name was used to redirect Internet users to a search engine with advertising links to websites promoting products and services of third parties. 5. Parties’ Contentions A. Complainant
The Complainant asserts in essence as follows:
(1) The disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights;
(2) The Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name;
(3) The disputed domain name was registered and is being used in bad faith.
With regard to the item (1) above, the Complainant is the owner of the well-known mark XENICAL. The disputed domain name incorporates the Complainant’s mark entirely. The addition of the descriptive term “world” does not sufficiently distinguish the disputed domain name from the mark. Furthermore, the Complainant’s use and registration of the mark XENICAL predates the Respondent’s registration of the disputed domain name.
With regard to the item (2) above, the Complainant has exclusive right for the mark XENICAL, and the Complainant has not allowed others to use it in their domain names. Therefore, the Respondent has no right to use it in the disputed domain name.
With regard to the item (3) above, the disputed domain name was registered in bad faith since, at the time of registration of the disputed domain name, namely on June 4, 2012, it is obvious that the Respondent had knowledge of the Complainant’s mark XENICAL. Also, it is used in bad faith since the Respondent is using the disputed domain name to intentionally attempt, for commercial purpose, to attract Internet users to its website, by creating a likelihood of confusion with the Complainant’s well-known mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to the Rules, paragraph 15(a), a UDRP panel shall decide a case 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.
In accordance with the Policy, paragraph 4(a), in order to qualify for a remedy, the Complainant must prove each of the following:
(1) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name;
(3) The disputed domain name has been registered in bad faith and is being used in bad faith. A. Identical or Confusingly Similar
The fame of the Complainant’s mark, XENICAL is obvious to the Panel.
The dispute domain name includes the mark entirely. The addition of the descriptive term “world” does not sufficiently distinguish the disputed domain name from the mark. Especially, these terms do not hinder Internet search engines from finding the mark. Accordingly, such addition is completely insufficient to dispel user confusion from inevitably occurring.
The addition of the top-level domain “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the Complainant’s trademark and the disputed domain name.
The Panel therefore finds that the disputed domain name is confusingly similar to the trade mark in which the Complainant has rights. Paragraph 4(a)(i) of the Policy is accordingly satisfied. B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests.
It is not found that the Respondent has rights or legitimate interests in respect of the dispute domain name. If not, the Respondent should have submitted evidence to show its interests, but it has not.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(a)(ii) of the Policy is accordingly satisfied. C. Registered and Used in Bad Faith
In consideration of the fame of the Complainant’s mark, XENICAL, it is highly unlikely that the Respondent would not have known of the Complainant’s legal rights in the mark at the time of the registration of the disputed domain name.
It is found that the Respondent is using the disputed domain name in order to generate Internet traffic to its website. By doing this, the Respondent is using the Complainant’s mark XENICAL and misleading Internet users to commercial websites.
The Panel therefore finds that the disputed domain name has been registered in bad faith and is being used in bad faith. For this reason, the Panel finds that paragraph 4(a)(ii) of the Policy is accordingly satisfied.
Accordingly, all three cumulative requirements as provided for in the Policy, paragraph 4(a), are determined to be 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.
Masato Dogauchi
Sole Panelist
Date: December 20, 2012
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