The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is A Broek, AFB ENTERPRISE of Panama city, Panama / NET4INDIA/NET4INDIA of Uttar Pradesh, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Net 4 India Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2013. On November 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 2013, after numerous reminders, 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 the Complainant on December 5, 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 December 6, 2013.
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint and the amendment to the Complaint, and the proceedings commenced on December 6, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2013.
The Center appointed Brigitte Joppich as the sole panelist in this matter on January 15, 2014. 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 paragraph 7 of the Rules. 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 has global operations in more than a hundred countries. One of the Complainant’s products is Xenical, which designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off.
The Complainant's owns rights in the trademark XENICAL again in more than a hundred countries worldwide, inter alia through International Registration No. 612908 XENICAL, registered on December 14, 1993, and International Registration no. 699154 XENICAL & Design, registered on July 28, 1998 (hereinafter referred to as the “XENICAL Marks”).
The disputed domain name was registered on October 7, 2013 and is being used in connection with a website offering products of competing third parties as well as the Complainant’s products. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
(1) The Complainant states that the disputed domain name is confusingly similar to the XENICAL Marks as it incorporates these marks in their entirety and as the addition of the third party trademarks REDUCTIL and ACOMPLIA (both being in use for weight loss medications like the Complainant’s XENICAL Marks) does not sufficiently distinguish the disputed domain name from the XENICAL Marks.
(2) The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name as the Complainant has exclusive rights in the XENICAL Marks, as no license, permission, or other authorization respectively consent to use XENICAL Marks in the disputed domain name was granted to the Respondent, as the disputed domain name clearly alludes to the Complainant, as the Respondent is using the disputed domain name to direct Internet users to websites which are offering and selling among others the Complainant’s products, and as the Respondent’s only reason for registering and using the disputed domain name is to benefit from the reputation of the XENICAL Marks and illegitimately trade on its fame for commercial gain and profit.
(3) The Complainant finally alleges that the disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant argues that the Respondent had doubtlessly knowledge of the XENICAL Marks when registering the disputed domain name. Furthermore, the Complainant argues that the disputed domain name is also being used in bad faith as the 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 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 the Respondent’s website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under 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 the Complainant’s trade mark; 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
The disputed domain name fully incorporates the well established XENICAL Marks in which the Complainant has exclusive rights.
In the view of the Panel, the addition of the third party trademarks REDUCTIL and ACOMPLIA does not eliminate the similarity between the XENICAL Marks and the disputed domain name. UDRP panels have consistently found that there is generally a likelihood of confusion where a domain name incorporates a complainant’s trademark and additional third party trademarks (cf. Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy,WIPO Case No. D2003-0793; G.D. Searle & Co. v. Entertainment Hosting Services, Inc., NAF Claim No. 110783; Chevron Corporation v. Young Wook Kim,WIPO Case No. D2001-1142; The Chase Manhattan Corporation and Robert Fleming Holdings Limited v. Paul Jones,WIPO Case No. D2000-0731; Pfizer, Inc. v. Martin Marketing,WIPO Case No. D2002-0793).
Furthermore, it is well established that the generic top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between a complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. In particular, the Respondent’s use is no bona fide use under the Policy. The Panel acknowledges that a reseller can make a bona fide offering of goods and services and thus have a legitimate interest in a domain name if the use fits certain requirements, including the actual offering of goods, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant’s relationship with the trademark holder (cf. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Mariah Boats, Inc. v. Shoreline Marina, LLC, NAF Claim No. 94392; Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,WIPO Case No. D2000-1774; Experian Information Solutions, Inc. v. Credit Research, Inc.,WIPO Case No. D2002-0095). Given that the Respondent did not sell the Complainant’s goods only, the Respondent’s use of the disputed domain name does not meet the criteria set out in Oki Data Americas, Inc. v. ASD, Inc., supra.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(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 disputed domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that 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 trade mark 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 the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the XENICAL Marks as it itself offers the Complainant’s XENICAL products for sale. Furthermore, the fact that the disputed domain name is a combination of the Complainant’s XENICAL Marks and two third party trademarks, which are both being used for weight loss medication like the Complainant’s XENICAL Marks, is additional clear evidence that the Respondent was targeting the XENICAL Marks. In the Panel’s view, it is simply inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant and its rights in the XENICAL Marks.
As to bad faith use, by fully incorporating the XENICAL Marks into the disputed domain name and by using such domain name in connection with a website offering inter alia the Complainant’s competitors’ products for sale, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy. The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith.
Consequently, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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.
Brigitte Joppich
Sole Panelist
Date: January 19, 2014
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