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and Mediation Center
F. Hoffmann-La Roche AG v. interesting dont
Case No. D2006-0115
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by in-house counsel.
The Respondent is interesting dont, of Uruguay.
2. The Domain Name and Registrar
The disputed domain name <xenicalmed.com> is registered with Wild West
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2006. On January 26, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On January 26, 2006, Wild West Domains, Inc. 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 February 1, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2006.
The Center appointed Mladen Vukmir as the sole panelist
in this matter on March 8, 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 reputable company in the field of pharmaceuticals and diagnostics.
The Complainant is the registered owner of XENICAL trademarks:
- International trademark XENICAL registered on December 14, 1993, under No. 612.908, and designating various countries in class 5 (currently 26);
- International trademark XENICAL registered on April 21, 1998, under No. 6691154, and designating various countries in class 5 (currently 35);.
The Domain Name was registered by the Respondent with
the Registrar on April 29, 2005.
5. Parties’ Contentions
The Complainant states that its company, together with its affiliated companies, is 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 further asserts that its mark XENICAL is protected as trademark in a multitude of countries worldwide. The mark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off.
The Complainant asserts that the Domain Name is confusingly similar to the Complainant’s registered mark XENICAL because (i) it incorporates this mark in its entirety and (ii) the addition of the suffix “med” does not sufficiently distinguish the domain name from Complainant’s mark. Finally, the Complainant states that the Respondent’s registration of the Domain Name is prevented by the Complainant’s use and registration of the mark XENICAL.
The Complainant claims that it has exclusive rights for mark XENICAL and that no license, permission, authorization or consent was granted to use XENICAL in the Domain Name and that therefore the Domain Name clearly alludes to the Complainant.
The Complainant asserts that the Respondent’s website is a pharmacy on-line which offers “Xenical” as well as various other drugs, e.g. ”Levitra”, “Cialis” or “Propecia” which are manufactured by competing pharmaceutical companies and concludes that the Respondent should have no right or interest in such domain name and that he registered and used it in bad faith.
The Respondent did not reply to the Complainant’s
contentions. In spite of the Respondent’s default, the Complainant must
still establish each of the three elements required by paragraph 4(a) of the
Policy. The Panel notes that the Complainant did support its assertions with
actual evidence and now turns to examine them in turn.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has proven that the domain name is identical or confusingly similar to a trademark in which the Complainant has rights, namely the XENICAL mark.
In comparing the domain name to the Complainant’s mark, it is well established
that the generic top-level domain, in this case “.com”, must be
excluded from consideration as being a generic or functional component of the
domain name (See Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO
Case No. D2000-0003).
The Panel is satisfied with the Complainant’s argumentation that the disputed domain name <xenicalmed.com> integrates the trademark XENICAL in its entirety. The Panel is convinced that it is likely that consumers will think that the domain name is a variation of the Complainant’s trademark.
The Complainant finally argued that the mere addition, within the contested
domain names, of terms which are generic/descriptive such as “med”
does not sufficiently distinguish the domain name from the mark. The Panel may
additionally refer to decision Novo Nordisk A/S v. Mr Jonathan Valicenti,
WIPO Case No. D2005-0563, where
it was held that “the addition of the term “pharma”,
which relates to the field of activity in which the Complainant operates, as
well as to services the Complainant offers to its customers, is likely to
enhance the confusion and to lead the consumers to believe that the disputed
domain name is linked to, affiliated with, or at least endorsed by the Complainant.”
The same principle may be applied in this case where instead of “pharma”,
the Respondent used the term “med” with the same purpose of confusing
the customers as to its affiliation with the Complainant, thus benefiting from
it in its business of online sale of pharmaceuticals.
B. Rights or Legitimate Interests
The Panel notes that the Notification of Complaint did not reach the Respondent in this case, even though the Center fulfilled its obligation under paragraph 2(a) of the Rules to achieve actual notice of the Complaint to the Respondent.
Under paragraph 4(c) of the Policy, the presence of any of the following circumstances may demonstrate a respondent’s rights and interests to a domain name, in particular but without limitation:
(i) respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services before any notice to them of the dispute, or
(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights, or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has argued that it has exclusive rights in the term XENICAL and that there is no contractual or other agreement between it and the Respondent by which the Respondent would be authorized to use the Complainant’s mark XENICAL in any way.
The Complainant asserted, and the Panel accepts, that the Respondent is not making a bona fide use of the Domain Name. It rather appears that internet users are diverted to the Respondent’s website for its own profit through a Domain Name which is confusingly similar to the Complainant’s trademark. The Respondent’s website is a pharmacy on-line which offers “Xenical” as well as various other drags, e.g. ”Levitra”, “Cialis” or “Propecia” which are manufactured by competing pharmaceutical companies. The Complainant has presented two UDRP decisions (Annexes 4 and 5 to the Complaint) where it has been held that the registrant of a domain name that incorporates or is similar to a pharmaceutical manufacturer’s mark and which website is being used to direct consumers to an online pharmacy has no legitimate interest in such a domain name.
The Panel is satisfied that the Complainant has made
an initial prima facie case that the Respondent lacks rights or legitimate
interests. Once such case is made, the burden of proving shifts to the Respondent
who has to prove the existence of, without limitation, any of the three circumstances
listed in paragraph 4(c) of the Policy (see cases Croatia Airlines d.d. v.
Modern Empire Internet Ltd,. WIPO Case
No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO
Case No. D2004-0110).
The Complainant has put forward its supported contentions which the Panel finds credible and hence concludes that the Respondent has no rights or legitimate interests in the domain name at dispute.
C. Registered and Used in Bad Faith
In proving the existence of the final UDRP element in accordance with paragraph 4(b) of the Policy, the Complainant submitted a printout from the Respondent’s website and it appears that the Respondent uses the trademark XENICAL to sell various medical products through the disputed website. The Complainant rightfully states that by using the domain name the Respondent is intentionally trying to attract internet users to the website by creating a likelihood of confusion with the Complainant’s trademark which would lead the customers to believe that the Respondent’s website is somehow associated with the Complainant and to continue to perform its business on such site. Furthermore, the Respondent’s actions may also have a potentially harmful impact to the health of the customers because it directs internet users to its online pharmacy which sells pharmaceuticals without requiring proof of a physical examination by a physician (Annex 7 to the Complaint).
Under the circumstances, the Panel concludes that the Respondent must have known of the Complainant’s trademarks when registering the contested domain name and when using the domain name, even more so since it deals in the pharmaceutical trade as the Complainant does.
Finally, the Panel cannot disregard the fact that the Respondent supplied insufficient
contact data when registering the Domain name. In the case Telstra Corporation
Limited v. Nuclear Marshmallows,WIPO Case
No. D2000-0003, a bad faith is considered to exist where “respondent
has taken deliberate steps to ensure that its true identity cannot be determined
and communication with it cannot be made”. It is clear that in the
case at hand the Respondent supplied incorrect and incomplete contact information
when registering the domain name, which indicates an intention of bad faith
registration and use.
For all the foregoing reasons, the Panel concludes
that the Respondent registered and used the domain name <xenicalmed.com>
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, <xenicalmed.com> be transferred to the Complainant.
Dated: March 22, 2006