WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Pinetree Development, Ltd.

Case No. D2006-0049

1. The Parties

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

The Respondent is Pinetree Development, Ltd., Pembroke Parish, Bermuda, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <buy-xenical-cheap-online.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2006. On January 13, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On January 13, 2006, 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, 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 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 6, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2006.

The Center appointed Peter G. Nitter as the sole panelist in this matter on February 17, 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 is, together with its affiliated companies, one of the world’s leading research-focused healthcare groups in the field of pharmaceuticals and diagnostics. The Complainant has global operations in more than 100 countries.

XENICAL designates an oral prescription weight loss medication. The Complainant has registered XENICAL as a trade mark in over 100 countries worldwide. The registrations include an international registration with priority date December 14, 1993.

The Respondent operates an online pharmacy which offers XENICAL as well as various other drugs which directly compete with the Complainant, at a web site resolving to the disputed domain name. Upon ordering, the Respondent’s website redirects Internet users to other pharmacies online.

5. Parties’ Contentions

A. Complainant

The disputed domain name <buy-xenical-cheap-online.com> is confusingly similar to the Complainant’s mark XENICAL.

The domain name incorporates the Complainant’s mark XENICAL in its entirety. The addition of the words “buy”, “cheap” and “online” does not sufficiently distinguish the domain name from the Complainant’s mark. The domain name

<buy-xenical-cheap-online.com> may instead suggest that the Respondent’s website is a location where a consumer may buy the Complainant’s products.

The Complainant’s use and registration of the mark XENICAL do predate the Respondent’s registration of the disputed domain name.

The Respondent has no rights or legitimate interests in respect of the domain name at issue. The Complainant has exclusive rights for XENICAL. The Respondent is granted no right to use XENICAL. Further, the Respondent’s website is an online pharmacy which offers XENICAL and other drugs which compete directly with the Complainant. Upon ordering, the Respondent’s website redirects Internet users to other pharmacies online.

The domain name was registered and has been used in bad faith. When the domain name was registered on July 11, 2003, the Complainant’s product/mark XENICAL was well-known. It is obvious that the domain name has been used in bad faith as the Respondent tries to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. The use of the XENICAL logo increases the likelihood of confusion.

Further, by directing Internet users to an online pharmacy which sells pharmaceuticals without requiring proof of physical examinations by a physician, the use of the disputed domain name is potentially harmful to the health of Internet users who purchase XENICAL products under the mistaken impression that they are dealing with the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is the owner of the trademark XENICAL. The domain name at issue is not identical to a trademark held by the Complainant, and the question is therefore whether there is confusing similarity.

The disputed domain name consists of the trade mark XENICAL in addition to the words “buy”, “cheap” and “online”. As the domain name contains the well-known trade mark XENICAL in its entirety, and the Respondent operates an online pharmacy selling the Complainant’s pharmaceuticals, the Panel finds it likely that the Respondent’s domain name will be confused with the Complainant’s trademark. The Panel agrees with the Complainant that the addition of the words “buy”, “cheap” and “online” is not sufficient to render the domain name dissimilar or to prevent consumer confusion.

Hence, the Panel finds that there is confusing similarity between the Complainant’s trademark and the domain name at issue.

B. Rights or Legitimate Interests

The Respondent has not contested the Complainant’s allegation that the Respondent lacks any rights or legitimate interests in the contested domain name.

It is generally difficult for the Complainant to prove that the Respondent does not have any rights or legitimate interests in the domain name at issue, and on the other hand, it would be fairly simple for the Respondent to demonstrate that it has any such rights or legitimate interests pursuant to paragraph 4(c) of the Policy. Previous decisions under the Policy have therefore found it sufficient for a complainant to make a prima facie showing of its assertion in the event of a respondent’s default.

The Panel takes for its basis that the Complainant has not granted the Respondent any rights to use its mark, and that it is in no way affiliated with the Respondent.

The Panel finds that the circumstances mentioned and evidenced by the Complainant are sufficient to establish a prima facie showing that the Respondent has no rights or legitimate interests in the domain name at issue.

As the Respondent has not demonstrated any of the three circumstances that constitute rights to or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy or any other circumstances indicating such rights or legitimate interests, and the Panel cannot find any indications of such circumstances in the case file, the Panel concludes that the Respondent does not have any rights or legitimate interests in respect of the domain name at issue.

C. Registered and Used in Bad Faith

The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration and use of the domain name in bad faith. By not submitting a Response, the Respondent has failed to invoke any circumstances that could demonstrate that the Respondent did not register and use the domain name at issue in bad faith.

The Policy, paragraph 4(b), sets forth four non-exclusive illustrations of situations that may be deemed to reflect “bad faith” registration and use of a domain name. The Panel finds that one of these has been established, i.e. attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship or affiliation of the website.

The website resolving to the domain name at issue has been used to provide an online pharmacy which offers XENICAL as well as various other drugs which directly compete with the Complainant. The use of the disputed domain name thus appears to be an attempt to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark. This is evidence of bad faith registration and use pursuant to the Policy, paragraph 4(b).

As a result of the above, the Panel finds it evidenced that the domain name at issue was registered and has been used in bad faith by the Respondent.

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 name, <buy-xenical-cheap-online.com>, be transferred to the Complainant.

Peter G. Nitter
Sole Panelist

Date: March 3, 2006