Complainant is F. Hoffmann-La Roche AG, Grenzacherstrasse Basel, Switzerland, represented internally.
Respondent is Emelyanov Sergey Petrovich, Komsomolskaya, Kiev, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with DomainContext, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2013. On February 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 11, 2013, 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 March 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 4, 2013.
The Center appointed Steven L. Snyder as the sole panelist in this matter on April 18, 2013. 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
For twenty years, Complainant has used the XENICAL mark in connection with a weight-loss medication. Complainant’s mark has been registered in dozens of countries around the world and it has taken steps to protect its mark, as evinced by the filing of this and other UDRP proceedings.
In 2013, many years after Complainant’s mark was first used, Respondent registered the disputed domain name . Until recently, the disputed domain name led to a website that ostensibly offered Internet users the chance to purchase generic versions of the XENICAL brand medication.
Although Respondent provided a name and address when it registered the disputed domain name, the address is apparently fictitious: A leading delivery company could not locate the address and was unable to deliver correspondence to Respondent. There is also some confusion as to Respondent’s name. On the WhoIs record it appears that Respondent is named Petrovich Emelyanov Sergey. After the Complaint was filed, the Registrar informed the Center that “Petrovich” was the Respondent’s middle name. Respondent has chosen not to respond to the Complaint. 5. Parties’ Contentions A. Complainant
Complainant describes itself as “one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics” and represents that it has operations in more than 100 countries. Since 1993, Complainant has used the XENICAL mark in connection with a prescription weight-loss medication “used to help obese people lose weight and keep this weight off.” In a “multitude of countries worldwide,” Complainant has protected its XENICAL mark through numerous registrations, including International Registrations Nos. 612908 and 699154.
Not surprisingly, Complainant argues that the disputed domain name is “confusingly similar” to its registered mark. The addition of the generic terms “buy” and “online” (which is misspelled as “onlinee”) do not, Complainant contends, lessen the confusion.
Respondent does not have any rights or legitimate interests in the disputed domain name , Complainant argues, noting that it owns the XENICAL registrations and stating that it has never consented to Respondent’s use of this mark in any domain name. In Complainant’s view, “Respondent’s only reason in registering and using the contested Domain Name is to benefit from the reputation of the trademark XENICAL and illegitimately trade on its fame for commercial gain and profit.”
Complainant argues that Respondent has registered and used the disputed domain name in bad faith. Respondent was undoubtedly aware of the XENICAL mark before he registered the disputed domain name. He has used the domain name to attract Internet users to his websites “by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of Respondent’s website or of the products or services posted on or linked to Respondent’s website.” Once Internet users land on his webpage, they are offered generic versions of Complainant’s product.
Based on these arguments, Complainant asks that the disputed domain name be transferred to its ownership. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
To obtain the transfer of a disputed domain name, a complainant must prove three elements, regardless of whether the respondent files a response to the complaint. The first element is that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.” Policy paragraph 4(a)(i). The second element a complainant must prove is that the registrant has “no rights or legitimate interests in respect of the domain name.” Paragraph 4(a)(ii). The third element for a complainant to establish is that the disputed “domain name has been registered and is being used in bad faith.” Paragraph 4(a)(iii).
Complainant has proven all three elements. A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to Complainant’s well-known mark, XENICAL. The addition of generic terms such as “buy” and “online” do not distinguish the domain name from the mark. See LEGO Juris A/S v. PrivacyP / Kim Bum LLC,WIPO Case No. D2012-2462 (“the addition of descriptive terms to a trademark is generally not a distinguishing feature….”). B. Rights or Legitimate Interests
It may be difficult for a complainant to prove the second element if the respondent is using the domain name “in connection with a bona fide offering of goods or services.” See Policy paragraph 4(c) in this case, Complainant faces no such difficulty: Prior to the submission of the Complaint, Respondent was using Complainant’s mark to lead Internet users to a website that promised to sell Complainant’s products but that instead sold competing products. Respondent has no rights or legitimate interests to so use the disputed domain name. See Compagnie Générale des Etablissements Michelin v. PrivacyP and Kim Bum LLC,WIPO Case No. D2013-0181 (“Neither of the Respondents has a right or legitimate interest in luring consumers to a website under false pretenses and then profiting from their presence at the website.”). C. Registered and Used in Bad Faith
The UDRP states that one way for a complainant to prove bad-faith registration and use is to show the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [the] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the] web site or location or of a product or service on [the] web site or location.” Policy paragraph 4(b)(iv). Complainant has made this showing.
Many years after Complainant’s mark was registered around the world in connection with a prescription weight-loss medication, Respondent created the disputed domain name . Respondent simply took the well-known mark, bracketed it with generic words, and then linked the newly registered domain name to a website that apparently offered generic medications that were in direct competition with Complainant’s brand-name medication. In an apparent effort to cover its tracks, Respondent used a fictitious address when registering the domain name and may have used a pseudonym as well. This is further evidence of Respondent’s bad-faith registration and use. See Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 (“Respondent’s use of the domain names to promote the sales of products in competition with PFIZER’s products constitutes bad faith.”). 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 Complainant.
Steven L. Snyder
Sole Panelist
Date: April 29, 2013
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