Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
Respondent is PrivacyP, Domain Admin of Nobby Beach, Queensland, Australia / Andrey Anatolevich Druzhinin of Lvovskaja, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on March 6, 2013. On March 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2013, 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 Complainant on March 7, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 7, 2013. The amended Complaint named the actual registrant of the disputed domain name, Mr. Andrey Anatolevich Druzhinin, a resident of Ukraine, as an additional Respondent.
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 March 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 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
“Orlistat” is a drug designed to treat obesity by preventing the absorption of fat. Since 1993, Complainant has marketed the drug around the world under the XENICAL mark. To protect its mark, Complainant has sought and obtained numerous trademark registrations. It has also filed numerous UDRP proceedings against domain name holders who have incorporated the mark into their domain names without Complainant’s permission.
In February 2013, almost twenty years after Complainant’s mark was first used, Respondent Andrey Anatolevich Druzhinin of Ukraine registered the disputed domain name . This Panel notes that the domain name is linked to a website that purportedly offers drugs from outside the USA. The name displayed on the website is “Canadian Drug Store.”
Respondent Druzhinin’s website lists products in direct competition with Complainant’s XENICAL-brand medication. Indeed, his website attempts to persuade consumers that the generic version of the medicine is as good as the branded version: “Contrary to the popular notion, there is no need to buy branded Orlistat pills, especially since cheaper alternatives are available in the market.”
In addition to the generic version of XENICAL, Respondent Druzhinin offers a wide assortment of drugs. A visitor to the website apparently may, for instance, purchase drugs for arthritis, birth control, diabetes and “men’s health.” 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” with 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.” Complainant has protected its XENICAL mark through many trademark registrations, including International Registrations Nos. 612908 and 699154.
Complainant argues that disputed domain name is “confusingly similar” to its registered mark, XENICAL. The addition of the descriptive terms “from usa” do not, Complainant contends, lessen the confusion.
In Complainant’s opinion, neither of the Respondents has any rights or legitimate interests in the disputed domain name.
Complainant argues that it owns the XENICAL trademark and it has never consented to either Respondent’s use of the mark in any domain name. Complainant believes that Respondents registered and have used the disputed domain name to benefit from the reputation of the trademark XENICAL and to illegitimately trade on the mark’s fame for commercial gain and profit.
Complainant contends that Respondents have registered and are using the disputed domain name in bad faith. Respondents were clearly aware of the XENICAL mark before they registered the disputed domain name. Following the registration, they have used the domain name to attract Internet users to the website by creating a likelihood of confusion as to the source, affiliation and endorsement of the website and the products sold through the website.
Complainant asks that the disputed domain name be transferred to its ownership. B. Respondent
Neither Respondent replied to Complainant’s contentions. 6. Discussion and Findings
As is often the case in UDRP cases, Respondents have not filed any response. Nevertheless, this does not relieve Complainant of its burden of proof. Under the UDRP, Complainant must prove three elements to prevail in this proceeding.
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 is that the respondent has “no rights or legitimate interests in respect of the domain name.” Id. paragraph 4(a)(ii). The third element is 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 disputed domain name is confusingly similar to Complainant’s well-known mark, XENICAL. The presence of generic or descriptive terms, such as “from usa,” does not distinguish the disputed 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
Respondents are using Complainant’s mark to lead Internet users to a website that purports to sell Complainant’s weight loss medicine but which instead sells a competing generic product -- as well as products that have nothing to do with weight loss. Respondents have 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 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
There are several ways to prove bad faith registration and use under the UDRP. One way 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).
Many years after Complainant’s mark was registered around the world in connection with a prescription weight-loss medication, Respondents created the disputed domain name . They simply took the well-known XENICAL mark and tacked on the descriptive words “from usa,” and then linked the newly registered domain name to a website that offers a generic medication that is in direct competition with Complainant’s brand-name medication. This is evidence of Respondents’ 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: May 2, 2013
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