canadian-pharmacy-xeloda.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Canadian Pharmacy Network Online

Case No. D2005-1203

1. The Parties

The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by Jérôme Rhein, Switzerland.

The Respondent is Canadian Pharmacy Network Online, General Delivery, Winnipeg, Manitoba, Canada.

2. The Domain Name and Registrar

The disputed domain name <canadian-pharmacy-xeloda.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2005. On November 21, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On November 21, 2005, Go Daddy Software 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 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 November 30, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2005.

The Center appointed Dr. Clive N.A. Trotman as the Sole Panelist in this matter on January 13, 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, paragraph 7.

4. Factual Background

The Complainant states that, together with affiliated companies, it is one of the world’s leading suppliers of medicines for treatment in cancer, virus diseases and transplantation. XELODA is an anticancer chemotherapy medicine made by the Complainant and used for adjuvant treatment of colon cancer and for the treatment of metastatic colorectal or breast cancer.

The Complainant has owned the trademark XELODA and registered it in Canada and internationally since 1996, and operates the website “www.xeloda.com”.

The Respondent registered the domain name <canadian-pharmacy-xeloda.com> on January 15, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the dispute is properly within the scope of the Policy. The registration agreement, pursuant to which the domain name being the subject of this Complaint was registered, incorporates the Policy by reference.

The disputed domain name entirely incorporates and is confusingly similar to the well-known trademark XELODA in which the Complainant has held rights internationally since 1996. The additional terms incorporated into the domain name, namely “canadian-pharmacy-”, do not detract from the confusing similarity.

The Complainant contends that the trademark XELODA is protected internationally and submits copies of specimen International Registration No. 664710 dated December 4, 1996, and Canadian Registration No. 505496 dated October 16, 1996.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has exclusive rights to the trademark XELODA and has not in any way authorized or permitted the Respondent to use the trademark. There is no way in which the Respondent could have acquired any such right or interest.

The Complainant further contends that the disputed domain name was registered and is being used in bad faith. It may be construed that the Respondent registered the disputed domain name with the knowledge of the Complainant’s existing trademark. The Respondent’s website, through which the Complainant’s product XELODA is offered for sale, attracts Internet users by displaying and trading on the Complainant’s trademark and logo, thereby creating a likelihood of confusion as to the source, affiliation or endorsement of the Respondent’s website. Doctors and patients directed to the website of the disputed domain name may be misled into thinking they are dealing with the Complainant when they are not, to the possible detriment of patient health.

The Complainant requests that the disputed domain name <canadian-pharmacy-xeloda.com> be transferred to the Complainant.

B. Respondent

No Response has been received and the Respondent has not contested the allegations of the Complainant.

6. Discussion and Findings

Paragraph 4(a) of the Policy states:

“You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.”

The Complainant has made the relevant assertions as above. This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute.

A. Whether the Domain Name is Identical or Confusingly Similar to a Trademark

The Complainant provides documentary evidence that it has registered and used the trademark XELODA in Canada and internationally since 1996. The disputed domain name <canadian-pharmacy-xeloda.com> entirely incorporates the trademark XELODA in which the Complainant clearly has rights.

Irrespective of any possible trademark status attaching to the prefix “canadian-pharmacy”, its inclusion does not diminish the confusing similarity between the disputed domain name and the Complainant’s trademark, but in fact compounds the confusion by underlining the pharmaceutical context.

It is well established in precedent that the gTLD suffix “.com” or equivalent, being an inevitable part of the domain name, has no bearing on the question of confusing similarity.

The Panel finds the disputed domain name to be confusingly similar and in part identical to the Complainant’s trademarks in the terms of paragraph 4(a)(i) of the Policy.

B. Whether Respondent has Rights or Legitimate Interests in Respect of the Domain Name

The Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant certifies that it has not licensed, permitted or authorized the Respondent to use the trademark XELODA, nor entered into any relationship that could give the Respondent any right or interest in the trademark, and that there is no reason why the Respondent could have any such right or interest. A prima facie case has been made out to the effect that the Respondent does not have any rights or legitimate interests in the disputed domain name.

The Respondent has not contested the Complainant’s assertion that the Respondent does not have any rights or legitimate interests in respect of the domain name. In the terms of paragraph 4(c) of the Policy, the Respondent does not claim to have used the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or to have been commonly known by the domain name; or to have made a legitimate noncommercial or fair use of the domain name; nor has the Respondent offered any alternative defense.

Any use that even a reseller may inevitably make of a trademark does not necessarily extend to the right to incorporate that trademark into a domain name without authorization (Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793: “...a reseller does not have the right to incorporate the trademark of the resold goods into the domain name of the reseller”. AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002-0290: “While the selling of goods which originate from the Complainant might entitle the Respondent to use a mark associated with the goods in connection with their sale, this does not give it the right to register and use the mark as a domain name without the consent of the holders of the trademarks”).

The Panel finds that the Respondent does not have a legitimate interest in the domain name in the terms of paragraph 4(a)(ii) of the Policy.

C. Whether the Domain Name Has Been Registered and is Being Used in Bad Faith

In accordance with paragraph 4(a)(iii) of the Policy the Complainant must prove that the domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b)(iv) provides for a finding of bad faith where:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The printout of the Respondent’s website features the Complainant’s trademark XELODA repeatedly and offers the drug for sale. The nature of the website, including the display of the trademark XELODA in logo form together with a quantity of medical advice seeming to be in manufacturer’s style, creates a likelihood of readers being misled into thinking that the website has the Complainant’s approval. There can be no other reasonable interpretation of the Respondent’s purpose in registering and using the disputed domain name than to trade in the Complainant’s trademarked product XELODA for commercial gain. The Respondent’s activity falls squarely within the provisions of paragraph 4(b)(iv) of the Policy in establishing registration and use in bad faith.

7. Decision

The decision of the Administrative Panel is that the disputed domain name <canadian-pharmacy-xeloda.com> is confusingly similar to the trademark XELODA in which the Complainant has rights. that the Respondent has no rights or legitimate interests in the disputed domain name. and that the Respondent has registered and is using the disputed domain name in bad faith. In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <canadian-pharmacy-xeloda.com> be transferred to the Complainant.

Clive N.A. Trotman
Sole Panelist

Dated: January 25, 2006