The Complainant is F. Hoffmann-La Roche AG, Grenzacherstrasse Basel, Switzerland, represented by Jérôme Rhein, Switzerland.
The Respondent is Mihey, Mira Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <buy-xenical-onlin.org> (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 September 18, 2007. On September 24, 2007, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain name at issue. On September 24, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a response to Complaint Deficiency Notification on September 28, 2007. 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 October 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2007.
The Center appointed Michael D. Cover as the sole panelist in this matter on November 1, 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 is, together with its affiliated companies, one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, having global operations in more than 100 countries. The Complainant’s trade mark is registered in a multitude of countries worldwide. Such trade mark registrations include International trade mark registration No 612908 XENICAL, registered in Class 5 claiming a priority date of August 5, 1993. The Complainant holds registrations of the mark XENICAL in over one hundred countries throughout the world.
The trade mark designates an oral prescription weight loss medication, used to help people lose weight and keep this weight off.
The Complainant has exclusive rights for XENICAL and no licence or the like has been granted to use XENICAL in the Disputed Domain Name.
As at September 18, 2007, the Disputed Domain Name linked to a website “www.centerporn.com”, which features adult content.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the Disputed Domain Name is confusingly similar to a trademark or service mark in which it has rights, namely XENICAL. It states that the Disputed Domain Name incorporates the Complainant’s mark in its entirety, that the addition of the descriptive words “buy” and “online” does not sufficiently distinguish the Disputed Domain Name from the Complainant’s mark. It also points out that the Complainant’s use and registration of the mark XENICAL predates the registration of the Disputed Domain Name.
With regard to lack of rights and legitimate interests in respect of the Disputed Domain Name, the Complainant maintains that no licence was granted and cites PepsiCo, Inc v Phayze Inc. WIPO Case No. D2003-0693 in support of the contention that driving traffic from a disputed domain name to pornographic websites has itself been found to be evidence of a lack of legitimate interest. The Panel prefers the description websites featuring adult material, which is the description that it will use in this decision.
On bad faith, the Complainant states that the Respondent must have known of the Complainant’s trade mark at the time of registration of the Disputed Domain Name on 1 June 2007. It maintains that redirecting internet users to the adult material website the Respondent is seeking to create a likelihood of confusion with the Complainant’s mark. Finally, it cites, Six Continents Hotels, Inc. v. Seweryn NowakWIPO Case No. D2003-0022 in support of its contention that the Disputed Domain Name was registered and is being used in bad faith and requests a decision that the Disputed Domain Name be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In the absence of exceptional circumstances, under paragraph 14 (b) of the Rules, if the Respondent does not submit a Response, the Panel shall decide the dispute based on the Complaint. No such exceptional circumstances exist here and the Panel will proceed to decide the dispute based on the Complaint.
A. Identical or Confusingly Similar
The Panel finds that the Complainant’s trade mark, XENICAL, is distinctive and has no colloquial use. The decision that is cited by the Complainant, Lilly ICOS LLC v. John Hopking / Neo net Ltd.,WIPO Case No. D2005-0694, which deals with a series of domain names which included the mark CIALIS, quotes with approval from Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493 “generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. The use of the prefix “buy” and the suffice “onlin” suggests that the Respondent’s website is a location where a consumer may buy Xenical products.
The Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s mark XENICAL and, accordingly finds for the Complainant on this point.
B. Rights or Legitimate Interests
Paragraph 4 (c) of the Policy gives the following three examples of ways in which a respondent can demonstrate its rights or legitimate interests to a domain name:
- use or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering or goods or services.
- that the respondent is commonly known by the Disputed Domain Name, even if he has not acquired any trademark or service mark rights.
- legitimate non-commercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in question.
A complainant is always in the difficult position of proving a negative in this regard. It has therefore been recognized by many previous panels that a complainant only needs to establish a prima facie case in order to shift the burden of rebuttal to the respondent. The Complainant in this case has done this by establishing that it has exclusive rights to XENICAL and that no licence or the like has been granted to the Respondent to use XENICAL in the Disputed Domain Name.
Although no Response was filed, the evidence shows that the use of the Disputed Domain Name is certainly not a bona fide offering of goods or services; the contrary is true, in that there were links to a website featuring an extensive range of adult material. There is no evidence that the Respondent is commonly known by the Disputed Domain Name. The Complainant cites PepsiCo, Inc. v. Phayze Inc,WIPO Case No. D2003-0693 which itself quotes other decisions where “The use of domain names base on a complainant’s trademark to drive traffic to other, pornographic websites has in itself been found to be evidence of a lack of legitimate interest in those domain names”. Similarly in the present case, the Panel finds that, the link referred to above constitutes evidence that the Respondent lacks rights or legitimate interests in this Disputed Domain Name.
The Panel accordingly finds for the Complainant on this head.
C. Registered and Used in Bad Faith
The evidence is that, at the time of the registration of the Disputed Domain Name on June 1, 2007, XENICAL was widely registered as a trade mark around the world and had been so for some fourteen years. It is a reasonable inference that sales have been substantial. It is highly unlikely that the Respondent did not know of the Complainant’s trade mark, XENICAL, at the time that he registered the Disputed Domain Name.
A recent case where it was accepted that there was bad faith use of a disputed domain name was La Francaise des Jeux v Domain Drop S.A,
WIPO Case No. D2007-1157. There, the panel readily accepted that there was bad faith use where the sole use of the disputed domain name was as a divert to a site or sites featuring adult material.
The Panel in this case therefore finds that the Disputed Domain Name was registered and has been 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 Disputed Domain Name <buy-xenical-onlin.org> be transferred to the Complainant.
Michael D. Cover Sole Panelist
Dated: November 14, 2007
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