The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Private Registration of Nanjing, Jiangsu Province, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GO AUSTRALIA DOMAINS, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2013. On June 26, 2013, the Center transmitted by email to the original registrar Nanjing Imperiosus Technology Co. Ltd (“the original registrar”) a request for registrar verification in connection with the disputed domain name. On June 27, 2013, the original registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 27, 2013, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 July 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2013.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on July 29, 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.
Prior to the Notification of Decision, the Center noted that the original registrar and registrant of the disputed domain name were changed to different entities although the disputed domain name, as confirmed by the original registrar, had been put on registrar lock and would remain so during the pending proceedings. The Center communicated with the original registrar and the new registrar GO AUSTRALIA DOMAINS, LLC. on this matter, and received the confirmation on September 6, 2013 that the original registrant information had been restored. However, due to the technical reasons, the disputed domain name was not able to be restored to the original registrar at this stage. In light of this, on September 20, 2013, the Center invited GO AUSTRALIA DOMAINS, LLC. to confirm if it is in a position, under the current circumstances, to implement the decision should the Panel order the cancellation or transfer of the disputed domain name in accordance with paragraph 4(k) of the Policy. The confirmation was received from GO AUSTRALIA DOMAINS, LLC. on the same day. 4. Factual Background
The Complainant, together with its affiliated companies, is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and has global operations in more than 100 countries. The Complainant has adduced evidence to prove that the Complainant’s mark XENICAL is protected as a registered trademark in more than 100 countries throughout the world.
The Respondent has registered the disputed domain name on June 17, 2013. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to trademarks or service marks in which the Complainant has prior rights for the following reasons:
1) That the disputed domain name incorporates the Complainant’s XENICAL mark in its entirety.
2) That the addition of the descriptive term “prime”, does not sufficiently distinguish the disputed domain name from the Complainant’s XENICAL trademark.
3) That the Complainant’s use and registration of the mark XENICAL predates the Respondent’s registration of the disputed domain name.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:
1) That the Complainant has exclusive rights for the mark XENICAL and no licence, permission, authorization or consent has been granted to the Respondent to use XENICAL in the disputed domain name.
2) That the disputed domain name in question clearly points to the Complainant.
3) That the disputed domain name directs Internet users to a website which is a search engine composed of sponsored links.
4) That the Respondent’s only reason in registering and using the disputed domain name is to benefit from the reputation of the Complainant’s trademark XENICAL and illegitimately trade on its fame for commercial gain and profit.
The Complainant contends that the disputed domain name has been registered and is being used in bad faith for the following reasons:
1) That the disputed domain name was registered in bad faith since at the time of the registration i.e. June 17, 2013, the Respondent had knowledge of the Complainant’s trademark XENICAL and that the said trade mark is applied on all of the Complainant’s products.
2) That the disputed domain name is being used in bad faith as it is evident from the Internet-website upon which the disputed domain name points to that the Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark, which has a good reputation among doctors, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products or services posted on or linked to the Respondent’s website.
3) 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. As a result, the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the fame of the Complainant’s XENICAL trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
According to the information received by the Center from the Registrar, the language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the Case File, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceedings should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that English should be the language of the present proceeding for the following reasons:
1) That the Registrar’s Registration Agreement is entirely in English language.
2) That the current website upon which the disputed domain name resolves is entirely in English.
After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel’s discretion under the Policy
Paragraph 11 of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; and (b) the website to which the disputed domain name is pointed is in English which suggests that the Respondent understands English; (c) the Panel accepts the evidence adduced by the Complainant evidencing that the Respondent is conversant and familiar with the English language; and (d) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. The Panel is of the view that if the Respondent had experienced difficulty with the English language, it could have communicated this to the Center and the Panel will rule accordingly. However, the Respondent has chosen not to respond to the Complainant’s allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English. 6.2. Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following Policy elements are satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the XENICAL mark for an oral prescription weight loss medication in many countries in the world, including China, the country which the Respondent appears to reside.
In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. Furthermore, it is also pertinent to have regard to the distinctiveness of the Complainant’s trademark. The issue of degree of similarity between the Complainant’s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.
The disputed domain name consists of the Complainant’s mark XENICAL in its entirety followed by the word “prime” and the top level domain suffix “.com”. The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the term “xenical” which for all intents and purposes is identical to the Complainant’s registered trademark XENICAL. Given that the XENICAL mark is a coined word and thus highly distinctive, the addition of the word “prime” does not provide sufficient distinction from the Complainant’s mark. Furthermore, it is also an accepted principle that the addition of suffixes such as “.com” or “.net” being the generic top-level domain is not a distinguishing factor.
Bearing in mind the following factors, in particular (a) the distinctive character of the Complainant’s XENICAL mark; and (b) the dominant component of the disputed domain name, the Panel therefore finds that the disputed domain name is confusingly similar to the XENICAL mark in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
(i) the Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “xenicalprime” in its business operations;
(ii) there was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the XENICAL mark;
(iii) there is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services.
The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Based on the above reasons, the Panel finds that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights to or legitimate interests in the disputed domain name.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent appears to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain name.
The Panel finds for the Complainant on the second part of the test. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(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 the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product.
The above circumstances are indicative of registration and use of the disputed domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the disputed domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel’s assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Taking into account the substantial reputation of the Complainant and its XENICAL mark, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. A simple search on the Internet would reveal the presence of the Complainant’s trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of association with the Complainant and its products.
Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant’s trademark and where the mark in question has through extensive use acquired a widespread reputation and enjoys a high degree of recognition given its inherent distinctiveness as an invented word, a reasonable conclusion is that the mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no evidence that the Respondent has used or intends to use to the disputed domain name for purposes of bona fide offering of goods and services over the Internet. On the contrary, the Respondent has used the disputed domain name to direct Internet users to an online pharmacy where different types of drugs are sold, creating the impression that they are associated or recommended by the Complainant when that is not true (Annex 5 to the Complaint). In this regard, the Panel finds that the Respondent has not provided an explanation for its actions.
The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website under paragraph 4(b)(iv) of the Policy. The Panel finds that the Complainant’s mark in question has through extensive use acquired a widespread reputation and enjoys a high degree of recognition given its inherent distinctiveness as an invented word. This fact coupled with the lack of a plausible explanation for the choice of incorporating the Complainant’s distinctive mark in the disputed domain name, the link by the Respondent of the disputed domain name to an online pharmacy where different drugs are sold, creating the impression that they are associated or recommended by the Complainant when that is not true is certainly a relevant factor indicating bad faith registration and use.
Thus, the Panel finds for the Complainant on the third part of the test. 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.
Susanna H.S. Leong
Sole Panelist
Date: September 23, 2013
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