Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internal representative.
Respondent is Anna Valdieri, Vienna, Austria.
2. The Domain Name and Registrar
The disputed domain name <xenicaldiet.com> (the “Domain Name”) is registered with Gal Communications (CommuniGal) Ltd. d/b/a Galcomm (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2007. On June 29, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 4, 2007, 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. 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 Respondent of the Complaint, and the proceedings commenced on July 6, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2007.
The Center appointed Dana Haviland as the sole panelist in this matter on August 6, 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
Complainant, a Swiss pharmaceutical company, has used and registered its trademark XENICAL (the “XENICAL Mark”) since at least August 5, 1993. Complaint, Annex 3. The XENICAL Mark designates an oral prescription weight loss medication. Complainant has not licensed or otherwise authorized Respondent to use the XENICAL Mark.
Respondent registered the Domain Name, which incorporates the XENICAL Mark, on May 31, 2007. Complaint, Annex 1. The Domain Name website contains advertising and sponsored links to other websites, including websites of sellers in competition with Complainant, offering Xenical or other competing weight loss pharmaceutical products. Complaint, Annex 6.
5. Parties’ Contentions
A. Complainant
Complainant requests transfer of the Domain Name based on the following grounds:
(1) Identical or confusingly similar
Complainant asserts that it is, together with its affiliated companies, one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, with global operations in more than 100 countries. Complainant states that its XENICAL Mark designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off.
Complainant contends that its XENICAL Mark is protected as a trademark in over 100 countries worldwide and submits copies of certificates of International Registration Nos. 612908 & 699154. Complaint, Annex 3.
According to the Complaint, the priority date for the XENICAL Mark is August 5, 1993. Complainant asserts that its use and registration of the XENICAL Mark predate Respondent’s registration of the Domain Name.
Complainant contends that the Domain Name of Respondent is confusingly similar to Complainant’s XENICAL Mark in that it incorporates this mark in its entirety and in that the addition of the word “diet” does not sufficiently distinguish the domain name from Complainant’s mark.
(2) Rights or legitimate interests
Complainant states that it has exclusive rights to the XENICAL Mark, and that no license, permission, authorization or other consent has been granted to Respondent to use XENICAL in the Domain Name.
According to Complainant, the Domain Name clearly alludes to Complainant, and as Respondent’s website is a search engine composed of sponsored links, Respondent’s only reason in registering and using the contested Domain Name is to benefit from the reputation of the XENICAL Mark and illegitimately trade on its fame for commercial gain and profit.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name.
(3) Registered and used in bad faith
Complainant asserts that the Domain Name was registered in bad faith since at the time of the registration on May 31, 2007, Respondent no doubt had knowledge of the Complainant’s XENICAL Mark and product.
Complainant asserts that the Domain Name is also being used in bad faith, as is obvious from viewing Respondent’s Internet website, since the use of the Domain Name appears to be advertising links to websites promoting and/or offering products and services of third parties, especially in the pharmaceutical field, which is Complainant’s business. Complaint, Annex 6. According to Complainant, Respondent, in so using the Domain Name, is intentionally misleading and confusing consumers so as to attract them to other websites by making them believe that the websites behind those links are associated or recommended by Complainant, so that Respondent may generate unjustified revenues for each click-through on the sponsored links by on-line consumers. Complainant contends that Respondent is illegitimately capitalizing on the fame of the XENICAL Mark, which has a good reputation among doctors.
Thus, Complainant argues, Respondent is intentionally attempting (for commercial purpose) to attract Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s XENICAL Mark, as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of the products or services posted on or linked to Respondent’s website.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Respondent has not objected to nor provided any evidence in opposition to Complainant’s assertion and evidence of its rights to the XENICAL Mark.
The Domain Name includes Complainant’s XENICAL Mark plus the word “diet”. The addition of the generic term “diet” to the trademark portion of the Domain Name does not preclude a finding of confusing similarity. See Chanel, Inc. v. Estco Technology Group, Estco Enterprises Ltd.,
WIPO Case No. D2000-0413; Nikon Inc. and Nikon Corporation v. Photocom Korea,WIPO Case No. D2000-1338. See also Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 (“Neither the addition of an ordinary descriptive word...nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, Paragraph 4(a)(i) is satisfied”).
Moreover, “where, as here, Respondent has adopted the [word “diet”] which coincides with the exact kinds of products Complainant provides, confusion is inevitable.” Barry D. Sears, Ph.D. v. Texas International Property Associates,
WIPO Case No. D2007-0284.
The Panel finds that the Domain Name is confusingly similar to a trademark in which Complainant has rights, within the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant states that it has not licensed or otherwise authorized Respondent to register any domain name incorporating the XENICAL Mark and that Respondent has no other rights or legitimate interests with respect to the Domain Name. The Domain Name resolves to a commercial website with advertisements and sponsored links to other commercial websites selling pharmaceutical products, some in competition with Complainant.
Such use of Complainant’s trademark does not constitute a bona fide offering of goods or services within the meaning of Paragraph 4(c)(i) of the Policy. “Use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or service.” Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809. See also Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo,
WIPO Case No. D2004-0990 (“the sole diversion of Internet traffic by Respondent to other, unrelated websites, does not represent a use of the Domain Name in connection with a bona fide offering of goods and services. Rather, the conduct of Respondent serves the purpose of generating revenues, e.g. from advertised pay-per-click products”).
Nor does such use constitute a “legitimate noncommercial or fair use” under Paragraph 4(c)(iii) of the Policy. See LTD Commodities LLC v. Mahmoud Nadim, NAF No. FA207281 (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy, 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy, 4(c)(iii), because it routes unsuspecting Internet users, who are seeking Complainant, to a website containing a series of links to commercial sites, presumably for referral fees”).
Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the domain name. Respondent has not asserted any right or interest in the Domain Name and has presented no evidence in opposition to Complainant’s assertions in this regard. “[W]here Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is uniquely within the knowledge and control of the respondent.” Diebold, Incorporated v. Paul Terwilliger,WIPO Case No. D2003-0416.
For these reasons, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Panel finds that Complainant has shown bad faith registration and use under paragraph 4(b)(iv) of the Policy. It appears that Respondent has used the Domain Name in order to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s XENICAL Mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and the products or services offered there. As statedin Joe David Graedon v. Modern Limited - Cayman Web Development,WIPO Case No. D2003-0640, “the Respondent’s domain name points to a website which is a mere collection of links to other websites… .[T]his website is obviously merely a vehicle for generating advertising revenue. By using the domain name, the Respondent therefore has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s trademarks. Policy, paragraph 4(b)(iv) is therefore satisfied”.
In Deutsche Telekom AG v. Spiral Matrix,
WIPO Case No. D2005-1145, the panel found that such activity constitutes bad faith: “As regards Respondent’s use of the domain names, it appears that under the websites that are connected with the Respondent’s domain names there is a list of sponsored links, thereby allowing the Respondent to make commercial gain. As stressed in Deutsche Telekom AG v. WWW Enterprise Inc.,WIPO Case No. D2004-1078, ‘it is now a well known practice to display on a web page or search engine various links to other commercial websites, every link activated by an Internet user enables the host of the search engine to collect financial remuneration proportional to the number of connections.’ Therefore…it seems evident that the Respondent has registered and used the domain names with the intent to attract to his websites Internet users looking for the products and services of Complainant, thereby making commercial gain by the sponsored links.” Similarly, in Bilfinger Berger AG v. eService Finance Dept.,WIPO Case No. D2003-0827, the Panel noted that “it appears that the Respondent, by using the Domain Name…tried to attract consumers seeking the Complainant’s official website to a website that did not correspond to their expectations, and from which they could be diverted to on-line locations without any relation whatsoever with the Complainant. In other words, the Respondent attempted to misleadingly divert Internet traffic that was initially intended for the Complainant…The websites to which the links in the directory resolve are commercial sites”.
Here, as in the above cited cases, evidence of such use of a domain name is sufficient for Complainant to make a prima facie showing of bad faith registration and use under paragraph 4(b)(iv) 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 <xenicaldiet.com> be transferred to Complainant.
Dana Haviland
Sole Panelist
Dated: August 14, 2007
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