The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by Jérôme Rhein, Switzerland.
The Respondent is John Brave, Canada.
2. The Domain Name and Registrar
The disputed domain name <buyxenical.net> (the “Disputed Domain
Name”) is registered with EstDomains Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2006. On December 20, 2006, the Center transmitted by email to Estdomains Inc. a request for registrar verification in connection with the domain name at issue. On January 23, 2007, Estdomains 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 24, 2007. The Center verified that the Complaint, together with the amendment to 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 25, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 14, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2007.
The Center appointed Maxim H. Waldbaum as the sole
panelist in this matter on February 26, 2007. 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 following uncontested facts are summarized from the Complaint.
Complainant, together with its affiliated companies, is one of the world’s leading healthcare groups in the fields of pharmaceuticals and diagnostics, having global operations in more than 100 countries.
Complainant’s mark XENICAL is protected as trademark in a multitude of countries worldwide. For example, Complainant holds International Registration Nos. 612908 and 699154 for XENICAL, with a priority date of August 5, 1993.
XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off.
The Disputed Domain Name was registered on November 8, 2006.
5. Parties’ Contentions
A. Complainant
Confusingly Similar
Complainant contends that the Disputed Domain Name is confusingly similar to Complainant’s XENICAL mark and incorporates the mark in its entirety. The addition of the word “buy” does not sufficiently distinguish the Disputed Domain Name from Complainant’s mark, as it may suggest that Respondent’s website is a location where a consumer may buy XENICAL product.
The Complainant’s use and registration of the mark XENICAL predates the Respondent’s registration of the Disputed Domain Name.
Rights or Legitimate Interests
No license, permission, or authorization to use Complainant’s XENICAL mark was granted to Respondent. Respondent’s website located at the Disputed Domain Name is an online pharmacy which purports to offer for sale XENICAL and other drugs, including weight loss drugs in direct competition with XENICAL (e.g. FLORINEF, HOODIA Patch and YERBA DIET).
Upon clicking on the “XENICAL” link on the website, it purports to sell “Generic Xenical”, and not XENICAL.
Bad Faith Registration and Use
The Disputed Domain Name was registered in bad faith because at the time of registration, November 8, 2006, Respondent had knowledge of Complainant’s XENICAL mark and the product marketed under the mark.
The Disputed Domain Name is being used in bad faith because Complainant is attempting to use Complainant’s mark to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark, as to the source, sponsorship, affiliation, or endorsement of the website.
Respondent is using the Disputed Domain Name to promote and sell for commercial drugs, including generic Xenical, in direct competition with Complainant’s product.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The 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 domain names; and
(iii) The domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights, through
registration and use, in the mark XENICAL. The Panel further finds that the
Disputed Domain Name, which differs from the mark only by virtue of the descriptive
prefix “buy”, is confusingly similar to Complainant’s mark.
Numerous panels in prior cases under the Policy have held that the mere addition
of a descriptive word to the complainant’s trademark does not overcome
confusing similarity. See, e.g., F. Hoffman-La Roche AG v. Direct Response
Marketing Ltd, WIPO Case No. D2006-1370 (involving
<xenical-sales.net>).
Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Disputed Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant bears the burden of proof on the “rights
or legitimate interests” issue (as it does for all three elements of the
Policy). Louis de Bernieres v. Old Barn Studios Limited, WIPO
Case No. D2001-0122 (March 26, 2001).
Respondent, who filed no response in this proceeding, has not invoked any of the circumstances of Policy, paragraph 4(c) to suggest any “rights or legitimate interests” in respect of the Disputed Domain Name.
Respondent is apparently not licensed or authorized
by Complainant to use the latter’s mark in any manner. Respondent’s
commercial activities undertaken through use of the Disputed Domain Name in
the present case are neither fair use nor bona fide under the Policy.
There are numerous prior decisions under the Policy holding that the unauthorized
appropriation of another’s trademark in one’s domain name and the
commercial use of the corresponding website do not confer rights or legitimate
interests upon the owner of such a domain name. See, e.g. America Online,
Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374
(“it would be unconscionable to find that a bona fide offering
of services in a respondent’s operation of website using a domain name
which is confusingly similar to the complainant’s mark and for the same
business”).
Further, utilizing a trademarked domain name to sell
products that compete with the product associated with the trademark is not
a bona fide use. See Pfizer Inc. v. jg a/k/a Josh Green, WIPO
Case No. D2004-0784(“a registrant has no legitimate interest
in a domain name that is similar to a pharmaceutical manufacturer’s mark
and that is being used to direct consumers to an on-line pharmacy”).
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Disputed Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s 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 Panel finds that Respondent in all probability had Complainant’s mark in mind when registering the Disputed Domain Name. XENICAL is a fanciful mark, and its constituent combination of letters has no known meaning other than as a reference to Complainant’s Xenical product.
Respondent has used the Disputed Domain Name in bad
faith, within the meaning of paragraph 4(b)(iv) of the Policy, by offering for
sale various weight loss products and pharmaceuticals that compete with Complainant’s
Xenical product. See Pfizer Inc v. Juan Gonzales, WIPO
Case No. D2004-0589 (“no good faith can be assumed in Respondent’s
conduct, in view of the fact that the Domain Name is confusingly similar with
Complainant’s trademark and is used in connection with the promotion and
sale of competing products”).
Based on the undisputed evidence, there is no reasonable conclusion other than that Respondent registered the Disputed Domain Name with the intention of seeking to attract, for commercial gain, Internet visitors to his website by creating confusion between the Disputed Domain Name and Complainant’s mark.
Accordingly, the Panel finds that paragraph 4(a)(iii)
of the Policy is satisfied.
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, <buyxenical.net> be transferred to the Complainant.
Maxim H. Waldbaum
Sole Panelist
Dated: March 12, 2007
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