xenicalnet.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Metropharm International

Case No. D2006-0052

1. The Parties

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

1.2 The Respondent is Metropharm International, Manila, Philippines.

2. The Domain Name and Registrar

2.1 The disputed domain name <xenicalnet.com> is registered with Dotster, Inc.

3. Procedural History

3.1 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 Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On the same day Dotster, 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”).

3.2 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 19, 2006. In accordance with the Rules, Paragraph 5(a), the due date for Response was February 8, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2006.

3.3 The Center appointed Jay Simon as the sole Panelist in this matter on February 22, 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

4.1 Complainant is one of the world’s largest healthcare companies and operates (with its affiliates, not parties to these proceedings) in over 100 countries. Complainant is a leader in research, development, and marketing of pharmaceutical products and diagnostics.

4.2 Complainant holds trademark registrations for XENICAL, an oral prescription weight loss medication in many countries. Exemplary of Complainant’s trademark registrations are International Registration Nos. 612,908 and 699,154 claiming a priority date of December 14, 1993.

4.3 The disputed domain name was registered by Respondent on February 29, 2000.

4.4 The disputed domain name resolves to a website where Complainant’s trademarked XENICAL products are offered for sale.

4.5 Respondent did not reply to the Complaint and was notified of its default by the Center on February 9, 2006.

5. The Parties Contentions

A. Complainant

5.1 Complainant contends that the disputed domain name is confusingly similar to its mark because the domain name incorporates the mark in its entirety, adding only “net” and “.com” which do not distinguish adequately the disputed domain name from Complainant’s mark.

5.2 Complainant contends that it has not licensed, authorized, permitted or consented to the use of its mark by Respondent in the disputed domain name.

5.3 Complainant further contends that a reseller does not have the right to incorporate the trademark of the resold goods into the domain name of the reseller, and that a respondent has no legitimate interest in a domain name that is confusingly similar to a pharmaceutical manufacturer’s mark, the domain name resolving to an online pharmacy.

5.4 Complainant contends that the disputed domain name was registered in bad faith because at the time of registration Respondent had knowledge of Complainant’s mark.

5.5 Complainant further contends that the disputed domain name is being used in bad faith and that Respondent is intentionally attempting, for commercial gain, to attract internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the relationship of Complainant and Respondent’s website.

5.6 Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

5.7 Respondent failed to respond to the Complaint and has not otherwise actively participated in these proceedings.

6. Discussion and Findings

6.1 Complainant, by virtue of its international and national trademark registrations, has established rights in the XENICAL mark. This Panel notes, however, that Respondent registered the disputed domain name some five and a half years before Complainant instituted these proceedings. This Panel is of the opinion that a Complainant should be diligent in protecting its trademark rights and that the passage of time may affect those rights, e.g., whether a registrant has become commonly known by a domain name. Nevertheless, there is no evidence in these proceedings to suggest that the passage of time has inured to Respondent’s benefit.

6.2 The Policy as affected by the Rules and the Supplemental Rules provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (Complainant) proves each of the following elements:

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

(b) the registrant (Respondent) has no rights or legitimate interests in respect of the domain name; and

(c) the domain name has been registered and is being used in bad faith.

6.3 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element in Paragraph 6.1.

6.4 Respondent, having failed to respond in these proceedings, is in default, and in accordance with paragraphs 14(b) of the Rules, “the panel shall draw such inferences…as it considers appropriate”.

A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)

6.5 Complainant has established rights in the trademark XENICAL by virtue of its international trademark registrations. The disputed domain differs from Complainant’s mark by the addition of “net” and the gTLD suffix “.com”. The test for confusing similarity is straightforward and involves a comparison of the disputed domain name with the mark in which Complainant has rights. Under this test, there is no doubt in this Panel’s mind that the disputed domain name is confusingly similar to Complainant’s mark, the two additions notwithstanding. Further, this Panel is aware of, and is guided, by the decision and reasoning in EAuto LLC v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047, where the incorporation of the entirety of a registered mark in a disputed domain name rendered the domain name confusingly similar to the trademark.

B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)

6.6 Paragraph 4(c) of the Policy lists three, non-exclusive methods for determining whether a respondent has rights or legitimate interests in a disputed domain.

6.7 In respect of demonstrating a respondent’s lack of rights or legitimate interests in a disputed domain name, the burden of proof rests with complainant. However, where the complainant having made the necessary assertions and providing evidence, it is incumbent upon the respondent to come forward with evidence of its rights or legitimate interests in the disputed domain name, the respondent being uniquely possessed of this evidence, if such evidence exists. Respondent has failed to present any evidence of its rights or legitimate interests in the disputed domain name, and such failure is tantamount to admitting the truth of Complainant’s assertions, see Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

6.8 Respondent having failed to respond to the Complaint, there is no evidence that Respondent was commonly known by the disputed domain name, and there is no evidence that the passage of time before Complainant brought these proceedings has allowed Respondent to become known by the disputed domain.

6.9 Respondent’s use of the disputed domain name is certainly for commercial purposes. Respondent is clearly a reseller of the XENICAL product and the issue arises as to whether a reseller of a product can have a right or legitimate interest in a disputed domain name. This issue was addressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. There was no consensus view on this issue, although a majority view has developed. The majority view is that a reseller can be making a bona fide offering of goods or services if the use of the website of the disputed domain name meets certain requirements. Among these requirements is the accurate disclosure of the registrant’s relationship with the trademark owner. Evidence submitted by Complainant shows that no such disclosure exists. Consequently, under the majority view, Respondent has not satisfied the necessary requirements for a bona fide use of Complainant’s mark. This Panel notes that it has serious questions about whether a reseller can ever obtain rights or legitimate interests in another’s trademark (regardless of the majority view requirements) without the consent of the trademark owner. Thus, this Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.

C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy)

6.10 Given the rather fanciful trademark “XENICAL” this Panel believes that Respondent must have had knowledge of Complainant’s mark at the time of registration of the disputed domain name. Further, the nature of Respondent’s website clearly suggests that prior knowledge and the fact that Respondent is trading-off the goodwill and reputation developed by Complainant for its trademark.

6.11 This Panel is also of the opinion that Respondent’s registration of the disputed domain name was and is for the purpose of attracting internet users, for Respondent’s commercial gain, to a website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or products sold on that website, thereby satisfying Paragraph 4(b)(iv) of the Policy.

6.12 This Panel is also aware of and agrees with similar decisions involving this Complainant, e.g., F. Hoffmann-La Roche AG v. Drug Sale, WIPO Case No. D2006-0066, F. Hoffmann-La Roche AG v. NetMarketing cc, WIPO Case No. D2005-1216, and F. Hoffmann-La Roche v. George McKennitt, WIPO Case No. D2005-1300, as well as F. Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More On-Line Pharmacy, WIPO Case No. D2003-0793.

6.13 It is the opinion of this Panel that the disputed domain name was registered and is being used in bad faith by Respondent.

7. Decision

7.1 For all the foregoing reasons, in accordance with Paragraph 4(a) of the Policy and Paragraph 15 of the Rules, this Panel orders that the domain name <xenicalnet.com> be transferred to Complainant.

Jay Simon
Sole Panelist

Dated: March 8, 2006