The Complainant is F. Hoffmann-La Roche, Basel, Switzerland, represented by internal representatives.
The Respondent is Globex International, Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <xenicalcure.com> is
registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2006. On June 2, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On June 2, 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 June 12, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2006.
The Center appointed Anders Janson as the sole panelist
in this matter on August 16, 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 asserted, and provided evidence in support of, the following facts, which the Panel finds established:
The Complainant is, together with its affiliated companies, a worldwide operating healthcare group in the fields of pharmaceuticals and diagnostics. The groups global operations cover more than one hundred countries. The Complainant’s mark XENICAL is, according to the Complainant, a protected trademark in a multitude of countries. The mark XENICAL designates an oral prescription weight loss medication used to help obese people loose weight and keep this weight off.
The Complainant has put two registrations forward;
- International Registration with the WIPO no 612908 of the trademark XENICAL, registered on August 5, 1993 for the class 5.
- International Registration with the WIPO no 699154 of the figure mark XENICAL, registered on October 22, 1998 for the class 5.
The Panel notes that the registration date of the two above mentioned registrations predate the registration of the disputed domain name by the Respondent, which was on May 16, 2006.
The Respondent is Globex International, with a stated
address in Delhi, India. The Respondent is in default and, accordingly, has
not challenged the conclusions of the Complainant.
5. Parties’ Contentions
A. Complainant
The Complainant contends that:
- The disputed domain name is confusingly similar to a trademark or a service mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the domain name;
- The domain name was registered and is being used in bad faith; and
- The domain name <xenicalcure.com> should be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name at issue is <xenicalcure.com>. The Complainant is the holder of the registered trademark XENICAL and the Panel finds it established that XENICAL is a well-recognized trademark and that the trademark is both distinctive and famous.
The disputed domain name contains the Complainant’s trademark XENICAL in its entirety with the added suffix “cure” and the generic and functional top level domain name “.com”. When determining whether a domain name and a trademark are identical or confusingly similar, the gTLD shall be disregarded.
The question is therefore if the addition of the suffix “cure” renders the disputed domain name dissimilar from Complainant’s registered trademarks.
In a large number of previous decisions, panelists
have found that the fact that a domain name incorporates a Complainant’s
registered mark is sufficient to establish identical or confusingly similarity
for the purpose of the Policy, despite the addition of other words to such marks
(Oki Data Americas Inc v. the ASD Inc,WIPO
Case No. D2001-0903 and CSC Holdings, Inc. v. Elbridge Gagne,WIPO
Case No. D2003-0273).
The generic term “cure” adds little to the general impression of the disputed domain of which the term XENICAL is the distinctive part. Internet users are likely to assume that the addition of the words “cure” to the trademark XENICAL signify a website associated with the Complainant, especially in relation to the fact that the Complainant markets weight loss medication under the trademark XENICAL. The Panel finds that the addition of the suffix “cure” does not reduce the similarity between the disputed domain name and the Complainant’s trademark.
The disputed domain name is therefore found to be confusingly similar to the trademark XENICAL. The Panel holds that the Complainant has established element (i) of the Policy’s Paragraph 4(a).
B. Rights or Legitimate Interests
The Complainant has asserted that the Complainant has exclusive rights for the trademark XENICAL and that no license, permission, authorization respectively consent to use XENICAL in the domain name has been granted to the Respondent.
The Panel finds, on the basis of the evidences provided by the Complainant, it established that the disputed domain name’s website is composed of sponsored links. This diversion of Internet Traffic does not, as the Complainant correctly asserted, represent a use of the domain name in connection with a bona fide offering of goods and services.
The Respondent has not filed a Response in accordance with the Rules, paragraph 5. In those circumstances, when the Respondent does not have an obvious connection with the disputed domain name, once the Complainant has made out an initial prima facie case that the Respondent has no rights or legitimate interests, is enough to shift the burden of proof to the Respondent to demonstrate that such rights and legitimate interests exist.
The Respondent has not demonstrated or argued that it used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services or that any other right or legitimate interest exists. Registration of a domain name in itself does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.
In conclusion, the Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name and has no obvious connection to it. The Panel therefore holds that the Complainant has established element (ii) of the Policy’s paragraph 4(a).
C. Registered and Used in Bad Faith
Finally, the Panel has to consider whether of the disputed domain name has been registered and is being used in “bad faith.” Paragraph 4(b) of the Policy states four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name. Paragraph 4(b)(iv) of the Policy states that a circumstance indicating bad faith is using a domain to intentionally attempt to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Complainant has asserted that the Respondent’s registration and use of the disputed domain name is undoubtedly made in bad faith with regard to the Complainant’s well-established rights to the well-known trademark XENICAL. The Panel has already established that the trademark mark XENICAL is recognizable.
The Panel finds that Internet users searching for weight loss medication provided and marketed by the Complainant are likely to visit the Respondent’s website. It is furthermore highly unlikely that the Respondent by utter accident registered the disputed domain name, which differs from the Complainant’s trademark only by the addition of the suffix “cure”.
The mere fact that the suffix “cure”, chosen by the Respondent, is a term used not only in the pharmaceutical industry but also a common word for, examples, “heal”, “antidote”, “treatment” and “rehabilitate”, describing the wanted effect of the products marketed by the Complainant under the trademark XENICAL is, according to this Panel, enough evidence that the registration of the disputed domain name was made in bad faith.
The Panel has already found, on the basis of the evidence provided by the Complainant, that the disputed domain name’s website is composed of sponsored links. The domain name diverts Internet users to advertising links promoting and offering products and services of third parties, especially in the pharmaceutical field. It would appear in all likelihood that the Respondent, by these actions, is trying to mislead consumers in order to attract them to other websites making them believe that the websites behind those links are associated or recommended by the Complainant.
The Panel finds, with reference to the above-mentioned and the proof provided by the Complainant, that the Respondent uses the disputed domain name in bad faith, hence having intentionally attempted to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with Complainant’s mark as to the source.
The Panel therefore concludes that the Complainant has proven that the Respondent
registered and is using the domain name in bad faith pursuant to Paragraph 4(a)(iii)
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 name <xenicalcure.com> be transferred to the Complainant.
Anders Janson
Sole Panelist
Dated: August 30, 2006
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