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and Mediation Center
F. Hoffmann-La Roche AG v. NHP Trust
Case No. D2006-0076
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internal representative.
The Respondent is NHP Trust, Auckland, New Zealand.
2. The Domain Name and Registrar
The disputed domain name <xenical-buy.com> is registered with Network
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2006. On January 18, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On January 19, 2006, Network Solutions, LLC 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 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2006.
The Center appointed Adam Samuel as the sole panelist
in this matter on February 27, 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 domain
name was registered on June 23, 1999.
5. Parties’ Contentions
The domain name incorporates the Complainant’s trade mark in its entirety. The addition of the descriptive word “buy” does not sufficiently distinguish the domain name from the Complainant’s mark. It may suggest that Respondent’s website is a location where a consumer may buy XENICAL products.
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 domain name redirects users to an on-line pharmacy. 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. 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.
or Confusingly Similar
The Complainant owns a trademark registration for the name XENICAL. The domain name in dispute involve adding a hyphen and the word “buy”“ to the trademark name.
The panel in Lilly ICOS LLC v. East Coast
Webs, Sean Lowery, WIPO Case No. Case
No. D2004-1101 said in relation to <cialis-buy.com>:
“Here, Respondent’s addition of the descriptive word “buy” to Complainant’s CIALIS brand pharmaceutical product suggests that Respondent’s web site is a source from which a consumer might purchase Complainant’s CIALIS brand pharmaceutical product. The addition of “buy” does not in any way distinguish Respondent from Complainant, and indeed suggests an affiliation, using Complainant’s trademark to promote Respondent’s business.
Further, when a domain name incorporates a distinctive
mark in its entirety, that has in many instances been found to create sufficient
similarity between the mark and the domain name to render the domain name
confusingly similar. See, e.g., EAuto v. Triple S. Auto Parts, WIPO
Case No. D2000-0047 (March 24, 2000). In the case at hand, the Domain
Name is confusingly similar to the CIALIS mark because it incorporates the
mark in its entirety, adding only a generic term that does not undermine but
rather reinforces the connection.
In short, Respondent’s Domain Name is confusingly similar to Complainant’s CIALIS trademark.”
The domain name in this case is similar to the Complainant’s trademark because it uses the precise trademark name which has no general meaning and a generic word 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. For these reasons, on the basis of the case file, notably 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 <xenical-buy.com> leads the internet user to a website selling Xenical online. The website gives no indication that the site has no connection with the Complainant.
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, the Respondent 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 bad faith registration of the domain name.
The Respondent is using the Complainant’s trademark to attract visitors to a website to purchase from it, rather than from the Complainant. The Respondent will have attracted them to the site by infringing the Complainant’s trademark name in the hope that once there, they will purchase Xenical from the Respondent rather than the Complainant. It is irrelevant to the question of bad faith as to whether this is likely to be successful.
For all these reasons, the Panel concludes that the
domain name in dispute 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 names <xenical-buy.com> be transferred to the Complainant.
Dated: March 13, 2006