The Complainant is Hoffmann-La Roche Inc., New Jersey, United States of America, represented by Lathrop & Gage L.C., United States of America.
The Respondent is Alan Truskowski, Michigan, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <genericxenical.net> is registered with GoDaddy.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2006. On December 20, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 20, 2006, the Registrar 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, technical contact – all in the Respondent’s name and at the same postal address. 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 11, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2007.
The Center appointed W. Scott Blackmer as the sole
panelist in this matter on February 14, 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 Complainant, a New Jersey corporation, is a leading manufacturer of pharmaceutical and diagnostic products. One of these products is the weight-loss drug XENICAL. The Complainant’s XENICAL trademark, United States Registration No. 1906281, was registered in July 1995, showing first use in commerce in March 1994. The Complainant’s Swiss parent corporation, F. Hoffmann-La Roche AG, operates websites with information about the drug at “www.xenical.com” and “www.xenical.net.” The drug has been promoted extensively since 1994, resulting in millions of dollars in sales.
The Domain Name <genericxenical.net> was registered on July 4, 2006. It does not currently resolve to a website. The Complainant furnished a printout dated July 5, 2006, the day after the Domain Name was registered, of the website to which the Domain Name resolved at that time. The website was headed with the Domain Name and the notice, “This page is parked free, courtesy of GoDaddy.com.” The website featured a list of “Sponsored Links,” including several sources for online purchases of XENICAL and/or other prescription medicines. Following these, the website displayed “Popular Searches,” links to a variety of commercial websites offering travel, fitness, financial planning, and other categories of goods and services. The Complainant also furnished a printout of one of the websites linked from the Respondent’s website, at “www.canadamedicineshop.com.” That website offered XENICAL for sale online from Canada (with a notice that US regulators have “taken the position that virtually all shipments of prescription drugs imported from a Canadian pharmacy by a U.S. consumer will violate the law”).
On July 11, 2006, a week after the Respondent’s parking website appeared online, the Complainant’s counsel sent a cease-and-desist letter to the postal and email addresses shown for the registrant of the Domain Name in the WHOIS database. There was no response.
The Panel notes that the same Complainant and Respondent were recently involved
in another Policy proceeding, Hoffmann-La Roche Inc. v. Alan Truskowski,
Nat. Arb. Forum Claim Number FA0609000808287. The proceeding concerned a similar
domain name, <genericxenical.us>, which was also named in the same cease-and-desist
letter of July 11, 2006. That domain name similarly resolved to a parking website
with sponsored advertising links. The Respondent submitted a response in that
proceeding, asserting that he did not use the domain name to operate a website;
he characterized it as merely a “parked domain name” from which
he realized no financial gain. The Respondent asserted that he had not requested
or approved sponsored links on the parking website. The panel in that proceeding
nevertheless concluded that Internet users were likely to be misled as to the
source or sponsorship of the website and that this was likely the Respondent’s
intention, in the hope of generating “click-through” fees. The panel
ordered the transfer of the domain name to the Complainant on November 14, 2006.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its registered XENICAL mark and that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant states that the Domain Name is used to sell XENICAL online “apparently without a physical examination” or proper medical supervision, which could be dangerous to patients; the Complainant asserts that this is not a bona fide offering of goods or services. The Complainant asserts that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the Domain Name is 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 Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
As in other cases where a respondent fails to reply, the Panel must still satisfy
itself that the Complainant in this proceeding has met its overall burden of
proof under paragraph 4 of the Policy. Thus, the uncontested facts must provide
a sufficient prima facie basis for finding identity or confusing similarity
with the Complainant’s mark and then for inferring that, more probably
than not, the Respondent has no right or legitimate interest in the Domain Names
and has registered and used them in bad faith. See, e.g., Croatia Airlines
d.d. v. Modern Empire Internet Ltd., WIPO
Case No. D2003-0455.
A. Identical or Confusingly Similar
The Complainant indisputably owns the registered XENICAL trademark, which is a fanciful mark that is highly distinctive and heavily promoted. The Complainant asserts that it has not authorized the Respondent to use this mark, and the Respondent did not claim otherwise in this proceeding or in the <genericxenical.us> Policy proceeding cited above.
The XENICAL mark is included in its entirety in the Domain Name. The addition
of the English word “generic” in the Domain Name does nothing to
avoid confusion, particularly because consumers are often able to purchase “generic”
versions of advertised prescription drugs. See, e.g., Lilly ICOS LLC v. Cialis
Pillz,WIPO Case No. D2005-0063,
and cases cited therein (combining apparently relevant words such as “pillz,”
“drug,” or “online” with the trademarked name of a prescription
drug heightens rather than lessens the likelihood of confusion as to source).
Thus, the Panel finds that the Domain Name is confusingly similar to the Complainant’s
XENICAL trademark, satisfying the first requirement under the Policy.
B. Rights or Legitimate Interests
The Complainant asserts without contradiction that it has not authorized the
Respondent to use the XENICAL trademark. The Panel concurs with the reasoning
of Western Research 3000, Inc. v. NEP Products, Inc., WIPO
Case No. D2004-0755, to the effect that paragraph 4(c) of the Policy “contemplates
an obligation on the part of respondent to come forward with evidence of rights
and legitimate interests,” and that the panel can “appropriately”
infer the absence of such rights or legitimate interests under paragraph 14(b)
of the Rules in cases where the respondent fails to submit any response to the
complaint. See, also Parfums Christian Dior v. QTR Corporation, WIPO
Case No. D2000-0023. The Respondent did not come forward with a Response
in this proceeding, and he apparently did not offer evidence of rights or legitimate
interests in the recent proceeding cited above concerning the domain name <genericxenical.us>,
where he did submit a response.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(i) before any notice to you 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 (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 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.”
The record does not suggest that any of the circumstances listed above are present here. The Domain Name resolved to parking website with “sponsored” advertising links for goods and services sold by third parties. There is no evidence that the Respondent used the Domain Name to sell goods or services himself, or that the Respondent has ever been known by a name corresponding to the Domain Name, or that he has ever used the Domain Name in connection with a legitimate noncommercial use.
Since the Respondent has not demonstrated rights or legitimate interests in the Domain Name, and a review of the record does not suggest the existence of such rights or legitimate interests, the Panel concludes that the Complaint satisfies the second Policy requirement.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and used the Domain Name opportunistically, evincing bad faith essentially as described in the Policy, paragraph 4(b)(iv):
“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 Respondent did not reply to the Complainant’s contentions in its
cease-and-desist letter or in this proceeding. However, in the recent <genericxenical.us>
proceeding, the Respondent denied obtaining commercial gain from a similar parking
website. This is not entirely implausible, since the Panel is aware that some
registrars temporarily “park” new domain names at websites with
sponsored advertising links, without automatically sharing the click-through
advertising revenues with the owner of the domain name unless and until the
owner makes further arrangements. See, e.g., Fifth Third Bancorp v. Joseph
Robinson, WIPO Case No. D2006-1073.
Even assuming (charitably) that the Respondent has not yet recognized any commercial
gain from the Domain Name, it is hard to imagine any other intention in registering
a domain name confusingly similar to the Complainant’s fanciful, well-established
trademark. The list of instances of bad faith in paragraph 4(b) is expressly
nonexclusive, and Policy panels have often found bad faith even in “passive
holding” cases where there was no evidence that the disputed domain name
had yet been used for a respondent’s commercial gain. See, e.g., Telstra
Corporation Limited v. Nuclear Marshmallows, WIPO
Case No. D2000-0003. Here, as in Telstra, the Complainant’s
mark is distinctive and well known, the Respondent has not come forward with
a legitimate reason for registering the Domain Name, and it is difficult to
conceive of a good-faith reason to select the Domain Name, precisely because
of the fame and distinctiveness of the mark.
Moreover, even if the Respondent did not choose the specific advertising links displayed on the domain parking website (including links to competing sources of the Complainant’s XENICAL drug), as the registrant of the Domain Name the Respondent must bear some responsibility for the uses to which it is put. Paragraph 2 of the Policy, “Your Representations,” is incorporated by reference in the registration agreements of ICANN-approved registrars. It reads as follows:
“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that . . . (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”
The Respondent has not explained his registration and use of a Domain Name confusingly similar to the Complainant’s distinctive trademark, and he has also not explained how that Domain Name could legitimately be used by himself, the Registrar, or any other party to advertise the Complainant’s products, competing products, and unrelated products.
The Panel concludes, therefore, that the Domain Name
was registered and used in bad faith within the meaning of paragraph 4(b) 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 <genericxenical.net> be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Dated: February 28, 2007
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