The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is n/a, Whois Privacy Protection Service of Xiame, Fujian Province, 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 May 14, 2013. On May 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 2013, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on May 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2013.
The Center appointed Ladislav Jakl as the sole panelist in this matter on June 20, 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 English. The Respondent did not provide any comments in this regard. The Complainant presented a request for English to be the language of the proceedings in the Complaint, providing the reasons for such request. The Panel, taking into account the circumstances of this case 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’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, certificates of which are submitted in copy as Annex 3 to the Complaint. Priority date for the mark XENICAL 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. For the mark XENICAL the Complainant holds registrations in over hundred countries on a world-wide basis.
The disputed domain name was registered on April 25, 2013. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to its trademarks XENICAL, 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 introduces that the disputed domain name incorporates the Complainant's trademark XENICAL in its entirety and that the addition of the generic term “buygeneric” does not sufficiently distinguish the disputed domain name from trademark of the Complainant. And, that the addition of the generic terms “buy” and “generic” as well as of two hyphens does not sufficiently distinguish the disputed domain name from its trademark. In Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694, according to which “generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”.
Furthermore, the Complainant’s use and registration of the mark XENICAL do predate the Respondent’s registration of the disputed domain name. Therefore the Complainant concludes that the disputed domain name is confusingly similar to the disputed domain name.
As to rights or legitimate interests, in respect of the disputed domain name, the Complainant essentially contends that it has exclusive rights for XENICAL and no licence /permission/ authorization respectively consent was granted to use XENICAL trademark in the disputed domain name. The disputed domain name clearly alludes to the Complainant. Furthermore the Complainant contends that the Respondent is using the disputed domain name to direct Internet users to sites which are offering/selling the Complainant’s products.
The Complainant refers to Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, according to which “a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and that is being used to direct consumers to an on-line pharmacy”. Moreover, the Respondent’s only reason in registering and using the disputed domain name is to benefit from the reputation of the trademark XENICAL and illegitimately trade on its fame for commercial gain and profit. The Complainant concludes that the Respondent should have 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, as at the time of the registration i.e. on April 25, 2013, the Respondent had, no doubt, knowledge of the Complainant’s well-known mark XENICAL. The disputed domain name is being used in bad faith, as it is obvious since when viewing the website from the Respondent one realizes that it has intentionally attempted (for commercial purpose) to attract Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of the Respondent’s websites or of the products or services posted on or linked to the Respondent’s website. 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. As a result, the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the XENICAL trademark fame. The Complainant concludes that above mentioned facts evidence of the Respondent‘s bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.
In accordance with paragraph 4(i) of the Policy, the Complainant requests the Panel, appointed in this administrative proceeding, issue a decision that the disputed domain name be transferred to the Complainant. 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 has 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 that the disputed domain name incorporates the Complainant's trademark XENICAL in its entirety and that the addition of the generic term “buygeneric” does not sufficiently distinguish the disputed domain name from trademark of the Complainant. As well as, two hyphens does not sufficiently distinguish the disputed domain name from the Complainant’s trademark (Lilly ICOS LLC v. John Hopking / Neo net Ltd., supra). The inclusion of the generic top level domain (gTLD) suffix “.net” does not avoid confusing similarity of domain names and trademarks (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). Furthermore, the Complainant’s use and registration of the mark XENICAL do predate the Respondent’s registration of the disputed domain name.
For all the above cited reasons, the Panel concludes that disputed domain name is confusingly similar to the Complainant’s trademark XENICAL 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 XENICAL and no licence /permission /authorization respectively consent was granted to the Respondent to use XENICAL 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 XENICAL. It is necessary to accept the arguments of the Complainant that the disputed domain name clearly alludes to the Complainant, that the Respondent is using the disputed domain name to direct Internet users to sites which are offering/selling Complainant’s products and that the Respondent’s only reason in registering and using the disputed domain name is to benefit from the reputation of the trademark XENICAL and illegitimately trade on its fame for commercial gain and profit (Pfizer Inc. v. jg a/k/a Jash Green, supra).
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) of the Policy 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 its 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 its website or of a product or service on that website or location.
The Panel finds that the Complainant has submitted evidence, unchallenged by the Respondent, that it is obvious that the Respondent knew or must have known of the Complainant’s trademark XENICAL at the time it registered the disputed domain name . Due to the fact that the Respondent intentionally attempts to attract Internet users to its websites, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of the Respondent’s website or of the products or services posted on or linked to Respondent’s website.
Moreover, 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. As a result, the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the XENICAL trademark fame. Such behaviour is considered as in bad faith actions (Lilly ICOS LLC v. East Coast Webs, Sean Lowery,WIPO Case No. D2004-1101; Am. Online Inc. v. Tencent Comm. Corp., NAF Case No. FA 93668; Pfizer Inc. v. jg a/k/a JoshGreen, supra; F. Hoffmann-La Roche AG v. Pinetree Development, Ltd.,WIPO Case No. 2006-0049).
Furthermore the Complainant argues that the disputed domain name is also being used in bad faith, as at the time of the registration i.e. on April 25, 2013, the Respondent had, no doubt, knowledge of the Complainant’s well-known mark XENICAL. The disputed domain name is being used in bad faith, as the website at the disputed domain name resolves to a website offering the Complainant’s products and competing products, and the Panel finds that the Respondent has intentionally attempted (for commercial purpose) to attract Internet users to its websites, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of its websites or of the products or services posted on or linked to its website. 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. As a result, the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the XENICAL trademark fame. The Complainant concludes that above mentioned facts evidence of the Respondent‘s bad faith registration and use of the disputed domain name under paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
For the above cited reasons the Panel finds that the disputed domains 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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