The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Whois Privacy Protection Service of 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 August 7, 2013. On August 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 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 August 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2013.
The Center appointed Erick Iriarte as the sole panelist in this matter on September 11, 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
The following facts, taken from the Complaint, are uncontested:
The Complainant is a Swiss company, and is “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 owns the following registered trademarks in the International Registration:
- XENICAL International Registration No. 612908 (December 14, 1993), basis in Swiss Registration 407537 (August 5, 1993), in Class 5;
- XENICAL, International Registration No. 699154 (July 28, 1998), basis in Swiss Registration 453451 (April 21, 1998), in Class 5
The disputed domain name was registered on July 16, 2013, as confirmed by the concerned Registrar.
According to the evidence submitted, the disputed domain name appears to be used to sell pharmaceutical products bearing several different trademarks, which are (including in the domain name) not only from the Complainant, but also from Abbott, and other pharmaceutical companies. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are present in this case. In particular, the Complainant claims that:
a) The disputed domain name is confusingly similar to the above-referenced trademark in which the Complainant has rights.
The Complainant claims that the disputed domain name is confusingly similar to its trademark. Additionally, the Complainant remarks that “the Complainant’s use and registration of the trademark XENICAL do predate the Respondent’s Registration of the disputed domain name.
b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant asserts that the Respondent has no trademark and/or rights or legitimate interests in the disputed domain name .
The Complainant also asserts that the Respondent doesn’t have any licence/permission/authorization for usage of XENICAL in the disputed domain name.
Also the Complainant asserts that the Respondent’s only reason to register and use 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.
c) The disputed domain name was registered and used in bad faith.
The Complainant asserts that the Respondent knew of the Complainant’s activities when it registered the disputed domain name.
The Complainant also claims that the Respondent registered the disputed domain name for the purpose of intentionally misleading the consumers and confusing them by making them believe that the websites behind the links on the Respondent’s website are associated or recommended by 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 following three elements is present:
(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. A. Identical or Confusingly Similar
This first element requires the Complainant to demonstrate that (i) it has trademark rights and (ii) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
(i) The Panel finds that the Complainant has established that it is the owner of the registered trademark XENICAL based on the uncontested allegations and evidence provided by the Complainant. The Complainant has trademarks in the International Registration since 1993 and 1998, both based on Swiss trademarks.
(ii) The disputed domain name consists of the Complainant’s registered trademark XENICAL in its entirety, and also the disputed domain name includes the third party trademark REDUCTIL.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s registered trademarks.
Although the disputed domain name incorporates a third party’s pharmaceutical trademark REDUCTIL, the disputed domain name is nonetheless considered, by the Panel, to be confusingly similar to the Complainant’s XENICAL trademark.
In this case the transfer of the domain name could affect the rights of the owner of the trademark REDUCTIL. B. Rights or Legitimate Interests
The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent has not demonstrated any rights or legitimate interests.
In the absence of a Response, the Panel finds that according to the uncontested allegations of the Complainant, the Complainant has satisfied the second element of paragraph 4(a)(ii) of the Policy as it has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
This third element requires the Complainant to demonstrate that the disputed domain name has been registered in bad faith and is being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
The Respondent has been using the disputed domain name for a website to sell pharmaceutical products not only from the Complainant, but also products competing with those of the Complainant without any licence/permission/authorization for usage of XENICAL in the disputed domain name or as a trademark.
Therefore, in accordance with paragraph 4(b)(iii) of the Policy, the above findings lead to the conclusion that the disputed domain name has been registered and is being used in bad faith D. Requested Remedy
There is no evidence in the case file of the consent of the owner of the trademark REDUCTIL, which has a potential interest in the transferred domain name. However, neither the Policy nor the Rules expressly require such consent and the Panel accepts the Complainant’s request for transfer of the disputed domain name, noting that such order is expressly without prejudice of any rights which may be asserted by the owner of the trademark REDUCTIL. 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.
Erick Iriarte
Sole Panelist
Date: September 30, 2013
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