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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hoffmann-La Roche Inc. v. Andrew Miller

Case No. D2008-1345

1. The Parties

Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented by Lathrop & Gage L.C. of New York, New York, United States of America.

The Respondent is Andrew Miller of Orem, Utah, United States of America.

2. The Domain Names and Registrar

The disputed domain names <cheapxenical.net>, <orderxenical.net>, <purchasexenical.net>, <wwwxenical.org>, <xenicaldiet.net>, <xenical-dietpills.net>, <xenicalinformation.net>, <xenicalpharmacy.net> and <xenicalpill.net> (the “Disputed Domain Names”) are all registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2008. On September 3, 2008, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the Disputed Domain Names at issue. On September 4, 2008, Fabulous.com transmitted by e-mail to the Center its verification response confirming that 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”), 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 Respondent of the Complaint, and the proceedings commenced on September 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2008. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2008.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on October 14, 2008. 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

Complainant, states that it, “together with its affiliated companies… is one of the leading manufacturers of pharmaceutical and diagnostic products in the world.” Complainant further states that it is the owner of trademark registrations “in a multitude of countries worldwide” for the mark XENICAL, including United States Reg. No. 1,906,281 (registered July 18, 1995), for which Complainant provided a printout from the website of the United States Patent and Trademark Office (the “Xenical Trademark”). Complainant further states that: “The mark XENICAL designates a pharmaceutical preparation, namely, a pharmaceutical product indicated for weight reduction and long-term management of weight. For many years Complainant’s mark XENICAL had been extensively promoted, and Complainant has sold its pharmaceutical preparation bearing the XENICAL mark since March, 1994 in the United States. Such sales of the XENICAL pharmaceutical preparation have far exceeded hundreds of millions of dollars in the United States since 1994.” F. Hoffmann-La Roche AG, which Complainant states is “the Swiss parent of Complainant” is the registrant of the domain name <xenical.com>, which was registered April 17, 1997, and is used in connection with information about the XENICAL pharmaceutical preparation.

Each of the Disputed Domain Names other than <wwwxenical.org> was registered on June 5, 2008. The domain name <wwwxenical.org> was registered on June 6, 2008.

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

- Each of the Disputed Domain Names is identical or confusingly similar to a trademark or service mark in which Complainant has rights, based on the trademark registrations cited by Complainant (above) and the fact that the additional words or characters in the Disputed Domain Names “do not prevent the likelihood of confusion in this case.”

- Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, “Complainant has not authorized the Respondent to use its trademark XENICAL or to incorporate the trademark into any domain name”; “[b]ased upon Respondent’s web sites, it is clear that neither Respondent nor its web sites have been commonly known by the [Disputed Domain Names]”; Respondent is not using the Disputed Domain Names in connection with a bona fide offering or goods or services because it seeks “to divert Internet users” looking for Complainant’s website; Respondent’s use of the Disputed Domain Names is neither fair nor noncommercial because Respondent is “is trading on Complainant’s goodwill and is using the Disputed Domain Names… without any permission from Roche, the trademark owner to offer for sale and direct consumers to sites including a site which sells Complainant’s prescription drug XENICAL to the public without permission from the trademark owner, as well as non-FDA approved ‘generic Xenical’ pharmaceutical products of third party competitor(s)”; and the Disputed Domain Names “are being used to promote products of Complainant as well as Complainant’s competitors, including a prescription dosage generic ‘Generic Xenical’ which has not been approved for sale by the FDA, and is therefore illegal.”

- Each of the Disputed Domain Names has been registered and is being used in bad faith because “Respondent’s true purpose in registering the [Disputed Domain Names] which incorporate Complainant’s XENICAL mark in its entirety is to capitalize on the reputation of Complainant’s XENICAL mark by diverting Internet users seeking Complainant’s web site to Respondent’s own web sites, through which customers may purchase the XENICAL drug or a non-FDA approved generic product advertised under the famous XENICAL name and brand” and because the websites associated with the Disputed Domain Names “promote pharmaceutical products of competitors.”

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief they have requested: (i) the Disputed Domain Names are 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 Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is clear that Complainant has rights in the XENICAL Trademark.

As to whether the Disputed Domain Names are identical or confusingly similar to the XENICAL Trademark, the relevant comparison to be made is with the second-level portion of each of the Domain Names only (i.e., “cheapxenical”, “orderxenical”, “purchasexenical”, “wwwxenical”, “xenicaldiet”, “xenical-dietpills”, “xenicalinformation,” “xenicalpharmacy” and “xenicalpill”), as it is well-established that the top-level domain names (i.e., “.net” and “.org”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Case No. 95491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”); see also United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.’) nor the TLD have any source-indicating significance”).

None of the Disputed Domain Names is identical to a trademark in which Complainant has rights, as the second-level portion of each of the Disputed Domain Names includes one or more words or characters in addition to the XENICAL Trademark. However, Complainant need prove only that the Disputed Domain Names are “confusingly similar” to a mark in which Complainant has rights. The Panel agrees with Complainant that the additions of the words and characters “do not alter the fact that the domain name is confusingly similar to the mark”, and that “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.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998). See also, e.g., Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561 (“when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”) (quoting Yellow Corporation v. MIC, WIPO Case No. D2003-0748).

Accordingly, each of the Disputed Domain Names is confusingly similar to the XENICAL Trademark, and the Panel is convinced that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant alleges that, inter alia, “Complainant has not authorized the Respondent to use its trademark XENICAL or to incorporate the trademark into any domain name”; “[b]ased upon Respondent’s web sites, it is clear that neither Respondent nor its web sites have been commonly known by the [Disputed Domain Names]”; Respondent is not using the Disputed Domain Names in connection with a bona fide offering or goods or services because it seeks “to divert Internet users” looking for Complainant’s website; Respondent’s use of the Disputed Domain Names is neither fair nor noncommercial because Respondent is “is trading on Complainant’s goodwill and is using the disputed domain names… without any permission from Roche, the trademark owner[,] to offer for sale and direct consumers to sites including a site which sells Complainant’s prescription drug XENICAL to the public without permission from the trademark owner, as well as non-FDA approved ‘generic Xenical’ pharmaceutical products of third party competitor(s)”; and the Disputed Domain Names “are being used to promote products of Complainant as well as Complainant’s competitors, including a prescription dosage generic ‘Generic Xenical’ which has not been approved for sale by the FDA, and is therefore illegal.”

Under the Policy, a complainant is required to make out a “prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1, http://arbiter.wipo.int/domains/search/overview/index.html.

Accordingly, as a result of Complainant’s allegations and without any evidence of Respondent’s rights or legitimate interests in the Disputed Domain Names to rebut Complainant’s prima facie showing, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant alleges that bad faith exists because, inter alia, Respondent’s websites using the Disputed Domain Names “promote pharmaceutical products of competitors,” evidencing bad faith under paragraph 4(b)(iv) of the Policy. The Panel agrees with the decision under the Policy cited by Complainant, State Fair of Texas v. Granbury.com, NAF Case No: 95288, which found bad faith because “[t]he only apparent reason to use [the complainant’s trademark] as part of a domain name is to benefit from the goodwill associated with the mark.” Numerous other decisions under the Policy have reached similar conclusions. See, e.g., Hoffmann-La Roche Inc. v. UrProxy Domains, WIPO Case No. D2007-0456.

Further, in light of the strength of the XENICAL Trademark – based upon its arbitrariness, and long-term and widespread usage – the Panel also agrees with the decision under the Policy cited by Complainant that Respondent’s registration and use of the Disputed Domain Names represents “opportunistic bad faith” under the Policy. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.

Therefore, the Panel is convinced that Complainant has proven the third element of the Policy.

7. Decision

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 <cheapxenical.net>, <orderxenical.net>, <purchasexenical.net>, <wwwxenical.org>, <xenicaldiet.net>, <xenical-dietpills.net>, <xenicalinformation.net>, <xenicalpharmacy.net> and <xenicalpill.net> be transferred to the Complainant.


Douglas M. Isenberg
Sole Panelist

Dated: October 28, 2008

 

: https://www.internet-law.ru/intlaw/udrp/2008/d2008-1345.html

 

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