xenickal.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. George Norman

Case No. D2007-0156

1. The Parties

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

The Respondent is George Norman, Prague, Czech Republic.

2. The Domain Name and Registrar

The disputed domain name <xenickal.com> is registered with EstDomains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2007. On February 7, 2007, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain name at issue. On February 27, 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 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 March 1, 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 March 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2007.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on April 11, 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 has provided evidence regarding the registered trademark XENICAL with international registration number 612908 with priority as of August 5, 1993, and the registered trademark XENICAL with international registration number 699154, with priority as of April 21, 1998.

The disputed domain name <xenickal.com> was registered by the Respondent on October 24, 2006.

5. Parties’ Contentions

A. Complainant

The Complainant is F. Hoffman-La Roche AG, a company organized under the laws of Switzerland with its principal place of business in Basel. The Complainant, together with its affiliated companies, is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics. The Complainant operates in more than 100 countries and the Complainant has registered the trademark XENICAL in the same number of countries. The Complainant has submitted evidence of two international trademark registrations for the mark XENICAL with the registration numbers 612908 and 699154.

The trademark XENICAL designates oral prescription weight loss medication used to help obese people loose weight.

The disputed domain name <xenickal.com> is phonetically identical to the Complainant’s registered trademark. Furthermore, the trademark predates the registration of the disputed domain name. The Complainant is of the opinion that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.

The Complainant has not granted any license or given any kind of permission or authorization to the Respondent to use the trademark XENICAL in a domain name. The Respondent’s website is a search engine with sponsored links. The Respondent lacks rights or interest in the domain name.

Furthermore, it is the opinion of the Complainant that the disputed domain name was registered in bad faith. At the time of registration, the Complainant must have had knowledge of the Complainant’s well-known trademark XENICAL.

The domain name is also being used in bad faith. The Respondent is intentionally attempting for commercial purpose to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark, as to the source, sponsorship, affiliation or endorsement of Respondent’s website or of the products or services posted on or linked to at the Respondent’s website. The domain name is being used on a website with advertising links to websites promoting and/or offering products and services of third parties, especially in the pharmaceutical field, which is the business area of the Complainant.

The Respondent is intentionally misleading consumers and makes consumers believe that other websites are associated with or recommended by the Complainant. As a result, the Respondent may generate unjustified revenues for each click-through of the sponsored links. The Respondent is illegitimately capitalizing on the fame of the Complainant’s trademark XENICAL.

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 each of the following:

(i) that the Respondent’s domain name 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 domain name; and

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

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the trademark XENICAL. Despite the fact that the trademark does not contain the letter “k” and the disputed domain name <xenickal.com> does, the domain name and the trademark are phonetically identical as well as visually confusingly similar.

Having the above in mind, the Panel concludes that the disputed domain name <xenickal.com> is confusingly similar to the Complainant’s trademark XENICAL and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that he has made 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 prior to the dispute; or

(b) that he is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) that he intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Respondent has not submitted any evidence indicating that the Respondent is the owner of any trademark rights or that he is commonly known by the disputed domain name.

The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademark XENICAL in connection with the disputed domain name <xenickal.com> which is confusingly similar to the trademark.

From the submitted evidence in this case, it is clear that the Respondent’s website, to which the disputed domain name resolves, contains numerous sponsored commercial links. Furthermore, the disputed domain name is offered for sale for USD $700. The Respondent’s use of the disputed domain name serves the purpose of generating revenue via advertised pay-per-click products and links and that it does not represent a use of the domain name in connection with a bona fide offering of goods and services.

There is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:

(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

The Complainant’s registered trademark XENICAL predates the registration of the disputed domain name <xenickal.com> and it has been argued by the Complainant that it is obvious that the Respondent knew or must have known about the Complainant’s well-known trademark when registering the domain name. This is supported by the fact that the disputed domain name resolves to a website which contains numerous advertising links to websites promoting and/or offering products and services of third parties, particularly to such products and services in the pharmaceutical field, being the business area of the Complainant. Furthermore, such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is an indication of use in bad faith according to previous decisions. See for example L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623.

The circumstances in the case before the Panel indicate that the Respondent has been aware of the Complainant’s trademark XENICAL and that the disputed domain name <xenickal.com> has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the trademark XENICAL as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website. In addition to this, the Respondent has offered the disputed domain name for sale on the website connected with the domain name.

There is no evidence in the case that refute the Complainant’s submissions.

The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the domain name <xenickal.com> has been registered and used in bad faith.

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 <xenickal.com> be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist

Dated: April 25, 2007