The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Vadim Dmitriechenko of Kherson, Ukraine / Whois Protection, Pardubice, Czech Republic. 2. The Domain Name and Registrar
The disputed domain name is registered with Gransy, s.r.o. d/b/a (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2013. On April 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2013, the Registrar transmitted by email to the Center its verification 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 April 15, 2013 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 amendment to the Complaint on April 15, 2013.
On April 15, 2013, the Center notified the Complainant that as the language of the registration agreement for the disputed domain name was Czech (as per information provided by the Registrar), the Complainant would need to either provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; submit the Complaint translated into Czech; or submit a request for English to be the language of the administrative proceedings. On April 15, 2013 the Complainant presented a request for English to be the language of the proceedings in the Complaint, providing the reasons for such request. The Respondent did not provide any comments in this regard.
The Center verified that the Complaint together with the amendment to 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 April 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2013.
The Center appointed Ladislav Jakl as the sole panelist in this matter on June 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.
On the question of the language of the proceedings, the Registrar confirmed that the language of registration agreement is Czech. On April 15, 2013 the Complainant presented a request for English to be the language of the proceedings in the Complaint, providing the reasons for such request. The Respondent did not provide any comments in this regard. The Panel, taking into account the circumstances of this case (including the language displayed on the website associated with the disputed domain name), the fact that the Respondent was invited to submit its Response in either English or Czech and a number of recent UDRP proceedings and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd.,WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd.,WIPO Case No. D2007-1836), decides that the language of the administrative proceedings will be English. 4. Factual Background
The Complainant is together with its affiliated companies one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries.
The Complainant registered trademark XELODA in a multitude of countries worldwide and introduces as an example the International trademark registration No. 664710, priority date December 4, 1996 (Annex 3 to the Complaint). Trademark XELODA designates an anticancer medicine (chemotherapy) used for treating cancer of the colon after surgery (adjuvant). XELODA is also used to treat colorectal or breast cancer that has spread to other parts of the body (metastatic cancer).
The disputed domain name was registered on March 26, 2013. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to its trademarks XELODA, that the Respondent has no rights or legitimate interests in respect to the disputed domain name and that the disputed domain name was registered and is being used in bad faith.
The Complainant contends that the disputed domain name incorporates the Complainant‘s trademark XELODA in its entirety and that the addition of the generic term “breast cancer medication” does not sufficiently distinguish the disputed domain name from trademark of the Complainant (Lilly ICOS LLC v. John Hopking/Neo net Ltd.,WIPO Case No. D2005-0694). Moreover the Complainant contends that its registration and use of its trademark XELODA predate the Respondent‘s registration of the disputed domain name . Therefore the Complainant concludes that the disputed domain name is confusingly similar to the trademark XELODA.
As to rights or legitimate interests, the Complainant essentially contends that it has exclusive rights for XELODA and no licence/permission/authorization respectively consent was granted to use XELODA in the domain name. Furthermore, it is obvious that the Respondent uses the disputed domain name for commercial gain by capitalizing on the fame of the Complainant's trademark XELODA. Moreover the Complainant contends that Internet users typing the disputed domain name are directed to an on-line pharmacy (Pfizer Inc. v. jg a/k/a Jash Green,WIPO Case No. D2004-0784). The disputed domain name in question clearly alludes to the Complainant. The Complainant concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore the Complainant argues that the disputed domain name is also being used in bad faith, when viewing the website at the disputed domain name (Annex 5 to the Complaint ) one realizes that Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent's websites by creating a likelihood of confusion with the Complainant's wellknown trade mark as to the source, affiliation and endorsement of Respondent's websites of the products or services posted on or Respondent’s website. Furthermore the Complainant argues that according to UDRP WIPO decisions the Respondent is using the domain name as a forwarding address to a for-profit on-line pharmacy (Pfizer Inc. v. jg a/k/a JoshGreen,WIPO Case No. D2004-0784) and that the use of the disputed domain name thus appears to be an attempt to attract for commercial gain (F. Hoffmann-La Roche AG v. Pinetree Development, Ltd.,WIPO Case No. 2006-0049). The Complainant also contends that the Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them by making them believe that the websites behind those links are associated or recommended by the Complainant and that, as a result, the Respondent may generace unjustified revenues and therefore is illegitimately capitalizing on the XELODA trademark fame. The Complainant concludes that above mentioned facts evidence of Respondent‘s bad faith registration and use of the domain name under paragraph 4(c)(iii) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name have been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. A. Identical or Confusingly Similar
There is no doubt to this Panel, that the disputed domain name incorporates the Complainant's trademark in its entirety and that the addition of the generic term “breast cancer medication” does not sufficiently distinguish the disputed domain name from the trademark of the Complainant (Lilly ICOS LLC v. John Hopking/Neo net Ltd.,WIPO Case No. D2005-0694). The inclusion of the gTLD suffix “.net” may be disregarded when comparing a domain name to a complainant’s mark. (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-Aventis v. Brad Hedlund,WIPO Case No. D2007-1310).
For all the above cited reasons, the Panel concludes that disputed domain name is confusingly similar to the Complainant’s trademark XELODA in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
The Panel finds that the Complainant has exclusive rights for XELODA and no licence /permission /authorization or consent was granted to the Respondent to use XELODA in the disputed domain name. The Respondent is not a licensee of the Complainant and did not obtain any authorization to use the trademark of the Complainant. It is obvious that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant's trademark XELODA. The Panel accepts the argument of the Complainant that Internet users typing the disputed domain name are redirected to an on-line pharmacy selling competing products from the Complainant which cannot be a bona fide offering of goods and services (Pfizer Inc. v. jg a/k/a Jash Green,WIPO Case No. D2004-0784). For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
The Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent knew or should have known of the Complainant’s trademark XELODA at the time he registered the disputed domain name . The fact that the disputed domain name directs Internet users to a web page relating to the Complainant’s business and history, the Respondent cannot have ignored the Complainant’s business reputation at the time of registration of the disputed domain name. The Panel finds that the disputed domain name is also being used in bad faith, as Intentionally attempt for commercial purpose to attract Internet users to the Respondent‘s website by creating a likelihood of confusion with the Complainant's wellknown mark as to the source, affiliation and endorsement of Respondent's websites of the products or services posted on or Respondent‘s website (Pfizer Inc. v. jg a/k/a JoshGreen,WIPO Case No. D2004-0784; F. Hoffmann-La Roche AG v. Pinetree Development, Ltd.,WIPO Case No. 2006-0049). The Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them by making them believe that the websites behind those links are associated or recommended by Complainant and that, as a result, the Respondent may generace unjustified revenues and therefore is illegitimately capitalizing on the XELODA trademark fame.
For the above cited reasons the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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.
Ladislav Jakl
Sole Panelist
Date: July 1, 2013
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