Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
Respondent is n/a, Whois Privacy Protection Service of xiamen fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2013. On March 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent was listed as the registrant and providing the contact details for the disputed domain name.
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 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 2, 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
Since 1993, Complainant has used the XENICAL mark in connection with a prescription medication which is advertised as helping its users lose weight and maintain that weight loss. Complainant has obtained trademark registrations for its mark in many of the 100 or so countries in which it does business. To further protect the XENICAL mark, Complainant has filed this and other UDRP proceedings.
Twenty years after Complainant’s mark was first used, Respondent registered the disputed domain name . This domain name led Internet users to a website that offered the weight-loss medication and that displayed links to other websites which offered a wide variety of drugs. 5. Parties’ Contentions A. Complainant
Complainant argues that it has established rights in the XENICAL mark through trademark registrations in many countries: “The Complainant’s mark XENICAL is protected as trademark in a multitude of countries worldwide. As an example reference is made to the International Registration Nos. 612908 & 699154.” It suggests that its rights in the mark long precede those of Respondent: “[T]he Complainant’s use and registration of the mark XENICAL do predate Respondent’s registration of the Domain Name.” To buttress this point, Complainant notes that the “[p]riority date for the mark XENICAL is August 5, 1993.”
In Complainant’s view, the disputed domain name is “confusingly similar to the Complainant’s mark seeing that it incorporates this mark in its entirety. The addition of the generic terms “buy” and “now” does not sufficiently distinguish the Domain Name from the trademark.”
Respondent has no rights or legitimate interests in respect of the disputed domain name, according to Complainant: “The Complainant has exclusive rights for XENICAL [. . .] and no license / permission / authorization respectively consent was granted to use XENICAL in the domain name.”
As for bad faith registration, Complainant argues that Respondent obviously knew of Complainant’s mark when it registered the domain name: “The domain name was registered in bad faith since at the time of the registration i.e. on February 13, 2013, the [respondent] had, no doubt, knowledge of the Complainant’s well-known product/mark XENICAL.”
Bad faith usage is shown by the incorporation of Complainant’s mark into the disputed domain name and the use of that domain name to lure buyers to Respondent’s websites: “Respondent has intentionally attempted (for commercial purpose) to attract Internet users to Respondent’s websites, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of Respondent’s websites or of the products or services posted on or linked to Respondent’s website”.
Based on these arguments, Complainant requests the disputed domain name be transferred to its ownership.
Lastly, Complainant asks that English be the language of this proceeding. Although Respondent’s address appears to be in China and the registration agreement seems to be written in Chinese, Respondent apparently understands English, as shown by the fact that the disputed domain name consists of three English words and is linked to an English-language website. Complainant argues the Panel has the limited discretion to conduct this proceeding in a language other than that of the registration agreement. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
The Panel finds that the language of the Registration Agreement is Chinese. Pursuant to paragraph 11(a) of the Rules, the Panel accepts Complainant’s request to conduct this proceeding in English as opposed to Chinese. Respondent apparently understands English, as shown by the fact the disputed domain name and the linked website are both written in English, and therefore Respondent will not suffer any prejudice from conducting the proceeding in this language. Indeed, there is no evidence that Respondent is actually located in China or understands Chinese: The address Respondent listed in the registration records seems to be inaccurate; a leading delivery company could not locate the Respondent. Requiring the proceedings to be conducted in Chinese, a language which Respondent may or may not actually speak would under these circumstances unnecessarily increase the cost of the proceeding.
Turning now to the substantive issues, there are three elements which Complainant must prove in order to wrest ownership of the disputed domain name from Respondent to itself:
1) That the disputed “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.” Policy, paragraph 4(a)(i).
2) That Respondent has “no rights or legitimate interests in respect of the domain name.” Id. paragraph 4(a)(ii).
3) That the disputed “domain name has been registered and is being used in bad faith.” Id. paragraph 4(a)(iii).
Complainant has proven all three elements. A. Identical or Confusingly Similar
The addition of generic terms such as “buy” and “now” do not distinguish the disputed domain name from Complainant’s XENICAL trademark. 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….”). The Panel finds the disputed domain name is confusingly similar to the XENICAL mark, in which Complainant has rights. B. Rights or Legitimate Interests
Respondent is using Complainant’s mark to mislead Internet users to a website that sells and promotes goods and services that have are in competition with Complainant’s goods or services. This is not a bona fide offering of goods or services. Respondent has no rights or legitimate interests in the disputed domain name. See Compagnie Générale des Etablissements Michelin v. PrivacyP and Kim Bum LLC,WIPO Case No. D2013-0181 (“Neither of 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
Bad-faith registration and use may be proven by evidence a 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 introduced evidence which shows bad faith: Twenty years after Complainant’s mark was registered in dozens of countries throughout the world, Respondent took that mark and registered the disputed domain name . Respondent then linked the disputed domain name to a website that offers medications and displays links to other websites that do the same. This adds up to persuasive 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 the Complainant.
Steven L. Snyder
Sole Panelist
Date: April 30, 2013
Full & Egal Universal Law Academy