The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is c/o SafestWhois(TM) of Singapore, Singapore / Mr. David Drake of Chisinau, Republic of Moldova. 2. The Domain Name and Registrar
The disputed domain name is registered with IP Mirror Pte Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2015. On March 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 24, 2015, 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 March 24, 2015 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 March 24, 2015.
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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 25, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2015.
The Center appointed Alejandro Touriño as the sole panelist in this matter on April 27, 2015. 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 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 is the owner of the trademark XENICAL in a multitude of countries worldwide, including the International Registrations No. 612908 with priority date of August 5, 1993, and No. 699154 with priority date of April 21, 1998.
The trademark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off.
The disputed domain name was created on May 31, 2012 and has been held by the Respondent since at least February 18, 2015. 5. Parties’ Contentions A. Complainant
The Complainant has exclusive rights for XENICAL, and no licence/permission/authorization has been granted to the Respondent to use XENICAL in the disputed domain name.
The disputed domain name is confusingly similar to the Complainant’s trademark, since it incorporates the trademark XENICAL in its entirety. The addition of the third party trademarks REDUCTIL and ACOMPLIA (both being in use for “weight loss medications” like the Complainant’s trademark XENICAL) as well as hyphens does not sufficiently distinguish the disputed domain name from the Complainant’s trademark.
The disputed domain name was registered in bad faith since at the time of the registration the Respondent had knowledge of the Complainant’s well-known trademark XENICAL. 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 disputed domain name is being used in bad faith, to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known trademark 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
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no response has been submitted.
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. At the same time, 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 or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar
The Complainant has provided evidence of trademark registrations consisting of the term “xenical”.
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of other factors, usually considered in trademark infringement cases (See to this effect, inter alia, Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah,WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327; BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR,WIPO Case No. D2001-1480 and Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
In the case at hand, the disputed domain name contains the Complainant’s distinctive trademark XENICAL in its entirety but also incorporates the third party trademarks REDUCTIL and ACOMPLIA. Many UDRP panels have consistently found that the respondent’s inclusion of third party’s trademarks in its domain name does not eliminate the visual impression that the disputed domain name is associated with the complainant’s trademark. See to this effect, inter alia, Pfizer, Inc. v. Martin Marketing,WIPO Case No. D2002-0793 and Hofmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy,WIPO Case No. D2003-0793.
A number of other panelists have come to a similar conclusion in cases of hypothetical merger between two companies, which could be equivalent to the present case. See to this effect, inter alia, Vivendi S.A., The Seagram Company Ltd., Joseph E. Seagram & Sons, Inc., Universal Studios, Inc., and Universal City Studios, Inc. v. CPIC NET,WIPO Case No. D2000-0685; AT&T Corp v. Beomjoon Park,WIPO Case No. D2001-0133; Viacom International Inc. v. Beomjoon Park,WIPO Case No. D2001-0220; L'Air Liquide v. MIC,WIPO Case No. D2001-1246), as well as in cases of actual merger or restructuring (Pharmacia & Upjohn AB v. M Inc.,WIPO Case No. D2000-0446; Repsol YPF, SA v. COMn.com,WIPO Case No. D2001-0741; Chevron Corporation v. Young Wook Kim,WIPO Case No. D2001-1142; Société des Produits Nestlé SA v. Stuart Cook,WIPO Case No. D2002-0118; Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC,WIPO Case No. D2003-0112).
In addition, in Dr. Ing. h.c. F. Porsche AG v. Automotive Parts Solutions,WIPO Case No. D2003-0725, the panel found that “’s identity or similarity is also obvious, even though Complainant’s trademark is associated with a third party’s trade name and/or trademark which is not a party in the present procedure. The Panel agrees with the position stated by the Panel in Chevron Corporation v. Young Wook Kim,WIPO Case No. D2001-1142, December 13, 2001) regarding the domain name . In the present case, the whole of the domain name is confusingly similar to Complainant’s trademark”.
It is the opinion of the Panel that where the trademarks of several separate companies are combined in a domain name, there is a likelihood of confusion between either trademark and the domain name, if that combination of the trademarks makes it likely for the online user to get confused as to the affiliation or sponsorship of the domain name or corresponding website. While a likelihood of confusion can already be present where several trademarks combined in a domain name are owned by several unrelated companies (as held in Minnesota Mining and Manufacturing Company v. Belowcost,WIPO Case No. D2001-0420), confusion is even more likely where the trademarks combined in a domain name belong to companies operating in the same sector and selling products aiming same goals. For the above reasons, it is very likely that the public may think that the disputed domain name is somehow connected to either the Complainant or to the owners of the REDUCTIL and ACOMPLIA trademarks, or most likely to all of them. This justifies the conclusion that the disputed domain name is confusingly similar to the trademarks in which the Complainant holds rights.
Likewise, the addition of hyphens between the words does not alter the fact that the disputed domain name is confusingly similar to the Complainant’s trademark. Also, the inclusion of the generic Top-Level Domain denomination “.biz” shall be disregarded for the purpose of these proceedings.
As a conclusion, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademarks and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled. B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted the Respondent to use its trademarks to apply for the disputed domain name incorporating the Complainant’s trademark.
The Complainant alleges and has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this and, based on the record of this case, it is unlikely that any such rights or legitimate interests may exist.
In this context, the Panel notes that XENICAL is an invented word that has no specific meaning. The same may be concluded with respect to the third party’s trademarks REDUCTIL and ACOMPLIA. It can therefore be ruled out that the Respondent could plausibly claim to use the disputed domain name for any legitimate purpose unrelated to the Complainant or its products. In addition, the disputed domain name is used to redirect Internet users to a website on which the Complainant’s own and competing pharmaceutical products are offered for sale, evidencing that the Respondent has no rights or legitimate interests in the disputed domain name.
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
Paragraph 4(a)(iii) of the Policy provides that the Complainant must prove the Respondent’s registration and use of the disputed domain name in bad faith. Paragraph 4(b) sets out, by means of example, a number of circumstances which may be taken as indicative of bad faith.
Given the notoriety of the Complainant’s trademark, the coined nature of the trademark XENICAL and also the priority date as of August 5, 1993, concerning the International Registration No. 612908, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s trademark.
The disputed domain name is used in bad faith, to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known trademark 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, not only to promote the Complainant’s goods, but also to promote other competing products. The Panel therefore finds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. See inter alia, Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 and L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623.
Therefore, the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of the Policy, paragraph 4(a)(iii), are also fulfilled in this case.
The Panel notes that this results in the transfer to the Complainant of a domain name that includes the trademarks REDUCTIL and ACOMPLIA, which the Panel understands are owned by third parties that are not a party to the current proceedings, see also ABB Asea Brown Boveri Ltd v. Mark Maddison,WIPO Case No. D2001-0538. In other cases under UDRP, the complainants have presented evidence of the consent of other trademark owners with a potential interest in the transferred domain name. See inter alia, Pfizer, Inc. v. Martin Marketing,WIPO Case No. D2002-0793 and Yahoo, Inc. v. M&A Enterprise,WIPO Case No. D2000-0748. However, neither the Policy nor the Rules expressly require such consent. Accordingly, the Panel orders that the disputed domain name be transferred to the Complainant without prejudice to any rights, which may be asserted by said third parties, see Chevron Corporation v. Young Wook Kim, supra. 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.
Alejandro Touriño
Sole Panelist
Date: May 4, 2015
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