The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Whois Agent of Xiamen, Fujian Province, China. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with B, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2014. On January 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 20, 2014, 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 January 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2014.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on February 18, 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 the Rules, paragraph 7. 4. Factual Background
The Complainant F. Hoffmann-La Roche AG, together with its affiliated companies, is a leading healthcare supplier in the field of pharmaceuticals and diagnostic products operating in more than 100 countries.
The Complainant is the owner of the trademark XENICAL since 1993 and it has been used without interruption.
The Domain Names were registered on November 7, 2013. The websites at the Domain Names appear to be offering products branded “Xenical” and/or “Xenical (generic Orlistat)” products and/or competitors’ products. 5. Parties’ Contentions A. Complainant
The Complainant contends the following:
(a) the Domain Names are confusingly similar to the trademark of the Complainant because:
- they incorporate the Complainant’s trademarks in its entirety;
- the addition of the words “buy”, “online”, “shop”, “rx” (for prescription medicines) and the geographical indication “inusa” in the Domain Names does not detract from associating it to the trademark of the Complainant and does not sufficiently distinguish the Domain Names from the trademark.
(b) The Respondent has no rights or legitimate interests in respect to the Domain Names because:
- the Complainant has never given to the Respondent any license or authorization to use the Complainant’s trademark;
- the Respondent should not have any right or legitimate interest in such Domain Names.
(c) The Domain Names were registered and are being used in bad faith because:
- the Respondent at the time of the registrations was for sure aware of the Complainant’s well-known product/mark XENICAL;
- the Respondent attempts to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites;
- the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the XENICAL trademark fame. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has several trademark registrations for XENICAL. Therefore it has been proven that the Complainant has rights in the XENICAL trademark.
The Domain Names and incorporate the word “xenical” which constitutes the Complainant’s trademark.
The only difference between the Domain Names and the trademark of the Complainant are the addition of the words “buy”, “online”, “shop” and “rx” and the geographical indication “inusa”. The addition of the mentioned words does not add a distinctive element to the Domain Names and does not render them dissimilar to the trademark of the Complainant. Moreover, such addition increases the confusing similarity between the Domain Names and the Complainant’s trademark, because the generic terms “buy”, “online”, “shop” and “rx” and the geographical indication “inusa” are simply strengthening the bond and relation with the XENICAL trademark itself.
Additionally, the Panel does not consider, when analyzing the identity or confusing similarity, the generic Top-Level Domain suffix - in this case “.com” and “.biz” - because they are a necessary component of the Domain Names and typically do not give any distinctiveness (see i.e., Crédit Industriel et Commercial SA v. Name Privacy,WIPO Case No. D2005-0457).
There are numerous UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established inter alia when a domain name wholly incorporates a complainant’s mark and only adds a generic word along with it (see i.e., F. Hoffmann-La Roche AG v. Bobik Marley,WIPO Case No. D2007-0694; Deceininck nvand Thyssen Polymer GmbH v. Dimitriy Beloussov,WIPO Case No. D2007-0347; Société des Bains de Mer et du Cercle des Etrangers à Monaco v. LaPorte Holdings, LLC.,WIPO Case No. D2005-0526).
Therefore the Panel finds that the Domain Names are confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Respondent has not filed any response in this case. There is a prima facie case made by the evidence provided to the Panel that the Respondent has no rights or legitimate interests in the Domain Names (Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grande Media,WIPO Case No. D2007-0840; and UPIB, Inc. v. Texas Internet,WIPO Case No. D2004-0073).
Moreover, the Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademark XENICAL, nor has the Respondent been authorized to register and use the Domain Names. Furthermore, the Panel notes that the websites at the Domain Names are apparently offering “Xenical” products and/or “Xenical (generic Orlistat)” products and/or competitors’ products for sale. Moreover, the websites at the Domain Names do not appear to disclose the relationship between the Respondent and the Complainant.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in registering the Domain Names. C. Registered and Used in Bad Faith
In the Panel’s view, the Respondent must have been aware of the existence of the XENICAL mark owned and used by the Complainant. The Respondent must have been also aware that the trademark XENICAL is a well-known trademark in the pharmaceutical sector. Only someone who was familiar with the Complainant’s mark and its activity would have registered the Domain Names inclusive of such mark and the words “buy”, “online”, “shop” and “rx” and the geographical indication “inusa” (see Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0850; AT&T Corp. v. Xinzhiyuan Management Consulting Co., Ltd.,WIPO Case No. DCC2004-0001; British Sky Broadcasting Group plc, v. Mr. Pablo Merino and Sky Services S.A.,WIPO Case No. D2004-0131; and Deutsche Telekom AG v. Britt Cordon,WIPO Case No. D2004-0487).
There is no information as to the business activity of the Respondent that would justify the registration and the use of the Domain Names, nor is there evidence of any rights or legitimate interests in the Domain Names by the Respondent. The Panel finds that, in the absence of any rights or legitimate interests and in the absence of any contrary evidence from the Respondent, the Respondent’s registration of the Domain Names confusingly similar to the Complainant’s trademark was done in bad faith (see Accor v. Howell Edwin,WIPO Case No. D2005-0980; Ferrero S.p.A. v. Publinord S.r.l.,WIPO Case No. D2002-0395; Banca Sella S.p.a v. Mr. Paolo Parente,WIPO Case No. D2000-1157; Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226). The use of the Domain Names as evidenced by the Complainant in Annex 5 to the Complaint, is also found to be in bad faith given the circumstance of this case discussed above as the Respondent is intending to attract the Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its websites.
Taken together with the fact that the Respondent has not filed any Response in this proceeding in support of any good faith registration or use, the Panel finds that the Complainant has demonstrated that the Domain Names have been registered and used in bad faith. 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 Domain Names and be transferred to the Complainant.
Nicoletta Colombo
Sole Panelist
Date: March 4, 2014
Full & Egal Universal Law Academy