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F. Hoffmann-La Roche AG v. Drug Sale
Case No. D2006-0066
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internal representative.
The Respondent is Drug Sale, Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <buy-cheap-xenical.com> is registered with Intercosmos
Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2006. On January 17, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On January 17, 2006, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2006.
The Center appointed Adam Samuel as the sole panelist
in this matter on February 14, 2006. 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,
4. Factual Background
The Complainant is a Swiss manufacturer of medicines that operates in more than 100 countries. It manufactures a weight-loss drug called Xenical. It holds trade mark registrations for XENICAL, in a number of countries. Notably, it first registered its international trademark rights in XENICAL with the World Intellectual Property Organization in 1993. The disputed domain name was registered in 2002.
The domain name enables members of the public to buy
Xenical and other drugs, such as the weight-loss medicines, Phentermine, Bontril
and Didrex and the rather different drug, Viagra, from the Respondent. Apart
from Xenical, none of these drugs is manufactured by the Complainant or has
any particular connection with it.
5. Parties’ Contentions
The domain name incorporates the Complainant’s trade mark in its entirety. The words “buy and “cheap” do not sufficiently differentiate the domain name from the Complainant’s mark. Consequently, the domain name is confusingly similar to the Complainant’s trademark. That mark pre-dates the Respondent’s registration of the domain name.
The Complainant has not authorized or licensed the Respondent to use the trademark XENICAL. The Respondent’s domain name is an on-line pharmacy selling drugs that compete with Xenical, notably Phentermine, Bontril and Didrex. For these reasons, the Respondent does not have any rights or interest in the disputed domain name.
When it registered the domain name in dispute, the Respondent undoubtedly knew of the existence of XENICAL. This mark has a good reputation among doctors. The Respondent is intentionally seeking to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website in question. Using the mark of a company to promote its competitors’ products constitutes bad faith. By allowing Internet users to buy drugs without requiring proof of a medical examination through the disputed domain name, the Respondent is potentially harming the health of those users. They are purchasing Xenical under the mistaken impression that they are dealing with the Complainant.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Under the Policy, the Complainant must prove that
(i) the domain name is identical or confusingly similar to a trademark or service
mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the
domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The First Complainant owns a trademark registration for the name XENICAL. The domain name involves adding the words “buy-cheap-” to the front of it.
In Lilly ICOS LLC v. Self, WIPO
Case No. D2005-1099, the panel upheld the complaint concerning the domain
name <buy-cialis-tadalafil.com> saying:
“The Panel is also satisfied that the Domain Name is confusingly similar to this mark. The addition of the generic words “buy” and “tadafil” do not avoid confusion, since at least some internet users are liable to assume that the Domain Name identifies a website of or approved by the Complainant inviting members of the public to buy tadalafil supplied by the Complainant under the mark “CIALIS”.
Equally, in Lilly ICOS LLC v. Lei Lu, WIPO
Case No. D2005–0436, the panel upheld a complaint concerning the domain
name, <buycheapcialis.net> commenting:
“The disputed domain name contains the Complainant’s
CIALIS mark as well as two additional descriptive words. As stated in Microsoft
Corporation v. J Holiday Co., WIPO Case
No. D2000-1493, ‘generally, a user of a mark may not avoid likely
confusion by appropriating another’s entire mark and adding descriptive
or non-distinctive matter to it’.”...
In this case, the descriptive words are “buy” and “cheap” and, added to the Complainant’s CIALIS mark, may suggest that Respondent’s website is a location where a consumer may buy cheap CIALIS brand product. Far from creating a distinction, these terms actually reinforce the reliance on Complainant’s trademark.
Therefore, in accordance with previous panel decisions, the Panel concludes that the Respondent’s domain name is confusingly similar to Complainant’s CIALIS mark in which the Complainant has rights.
The domain name is similar to the trademark because it uses the precise name which has no general meaning and two generic words in common usage. Internet users probably have every right to expect that, when they select the disputed domain name, they will find themselves looking at a site of the Complainant or someone licensed by the Complainant to use its XENICAL trade mark. This is not the case. For that reason, and in line with other WIPO UDRP cases, the Panel concludes that the domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent is not called ‘Xenical’ and does not appear to trade under that name. There is no evidence that the owner of the trademark in question, the Complainant, has authorized it to use the trademark. The Respondent has never asserted any rights or legitimate interests in the name. Based on the case file and in the absence of a Response the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
The domain name was registered over eight years after the Complainant registered its international trademark rights in relation to the name ‘XENICAL’. The domain name leads users to a website that uses the Complainant’s trade mark to attract visitors to its the Respondent’s online pharmacy. This sells products that compete directly with the Complainant’s.
It is hard to believe that the Respondent could have selected this domain name without knowing of the Complainant’s product ‘Xenical’ since the word has no independent meaning in any language. At best, it must have suspected that the Complainant would have registered trademark rights in the name. Nevertheless, the Respondent used that name to attract visitors to its site knowing that the Complainant had not authorized it to do so. This provides clear evidence of the bad faith registration of the domain name.
The Respondent’s use of the Complainant’s trademark to sell products that compete with the Complainant’s medicine which bears the name of the mark provides further evidence of bad faith. This time, it is in the use of the domain name. It is fairly outrageous to attract customers to your site by breaching someone else’s trademark rights and then use that site to sell products that compete with the person or company whose rights you are infringing.
For all these reasons, the Panel concludes that the
domain name has been registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <buy-cheap-xenical.com> be transferred to the Complainant.
Dated: February 20, 2006