Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland.
Respondent is Relish Enterprises of City of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <xenicalla.com> (the “Domain Name”) is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2007. On November 6, 2007, the Center transmitted by email to Faboulous.com a request for registrar verification in connection with the Domain Name. On November 7, 2007, Faboulous.com transmitted by email to the Center its verification response confirming that 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 November 9, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 2, 2007.
The Center appointed Flip Petillion as the sole panelist in this matter on December 5, 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 company incorporated under the laws of Switzerland, holds trademark registrations on a world-wide basis for the trademark XENICAL. As an example, Complainant refers to the international registration No. 612908 and 699154. The trademark XENICAL designates an oral prescription for weight loss medication and helps obese people to lose weight and keep this weight off.
Respondent registered the domain name <xenicalla.com> on December 8, 2004. Respondent is using the Domain Name for a landing page that includes advertisements for third party websites offering products similar or identical to those offered by Complainant. Among the advertisement links available on Respondent’s website are those of third parties, all of which compete with Complainant to provide weight loss services.
5. Parties’ Contentions
A. Complainant
Complainant states that it uses the trademark XENICAL to promote weight loss and weight control.
Complainant alleges that the Domain Name is confusingly similar to its trademark XENICAL. Complainant asserts that the Domain Name incorporates its trademark in its entirety.
Complainant further alleges that Respondent was granted no license, permission or authorization to use the trademark XENICAL in the Domain Name, that the Domain Name clearly alludes to the Complainant, and that Respondent’s only reason to register and use the Domain Name is to benefit from the reputation of the trademark XENICAL and to illegitimately trade on its fame for commercial gain and profit.
Finally, the Complainant alleges that Respondent has registered and is using the Domain Name in bad faith for two reasons. First, Complainant states that Respondent must have known Complainant’s product and trademark XENICAL. Its trademark XENICAL has accumulated significant reputation. Second, Complainant alleges that Respondent is intentionally attempting (for commercial purposes) to attract Internet users to Respondent’s website, by creating a likelihood of confusion with the trademark XENICAL, which has a good reputation among doctors, and by advertising links to websites promoting and/or offering products and services. Complainant argues that Respondent is intentionally misleading the consumers and confusing them so as to attract them to other websites making them believe that the websites behind those links are associated or recommended by Complainant. As a result, Respondent may generate unjustified revenues for each click-through by on-line consumers of the sponsored links.
B. Respondent
Although the Complaint was properly notified to Respondent, as required by the Rules, Respondent did not file a Response. In the absence of a Response, it is appropriate to accept as true all factual allegations of the Complaint. See, e.g., Ticketmaster Corporation v. Bill Hicks,
WIPO Case No. D2004-0400; Elan Pharmaceuticals, Inc. v. Randy Haag, WIPO Case No. D2001-0755.
6. Discussion and Findings
The burden that Complainant must meet under paragraph 4(a) of the Policy is to prove:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights,
(ii) that Respondent has no rights or legitimate interests with respect to the Domain Name, and
(iii) that the Domain Name has been registered and is being used in bad faith.
For the reasons discussed below, the Panel concludes that Complainant has satisfied its burden of proving all three of these factors by a preponderance of the evidence. See, The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340 (acknowledging consensus on use of preponderance of the evidence standard).
A. Identical or Confusingly Similar
Complainant demonstrated that it has trademark rights in the trademark XENICAL.
The Panel refers to the Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Decision Overview”), at ยง1.1: “If the complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights. The location of the registered trademark and the goods and/or services it is registered for are irrelevant when finding rights in a mark.”.1 The only remaining question, then, is whether the Domain Name is identical or confusingly similar to Complainant’s trademark.
The Panel finds that Domain Name is confusingly similar to Complainant’s trademark because the addition to the letters “la” to the Trademark XENICAL does not change the fact that the Domain Name looks and reads like Complainant’s XENINAL trademark.
The Panel thus finds that the Domain Name is confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
Even in the absence of a Response, the Panel has reviewed the record and the website to which the Domain Name resolves and finds that there is no indication of any right or legitimate interest by Respondent in the Domain Name.
Respondent registered the Domain Name several years after Complainant began offering products and offers a landing page that advertises competitive services. It thus appears that Respondent is seeking to confuse Internet users so that those searching for Complainant’s product could mistakenly reach Respondent’s website and be diverted to the websites of Complainant’s competitors. This is not a legitimate use under the Policy, nor is it a bona fide offering of goods or services. The Knot, Inc., infra (landing page is not a legitimate interest).
C. Registered and Used in Bad Faith
The same facts that support the finding that Respondent lacks rights or legitimate interest in the Domain Name also support the conclusion that Respondent is using the Domain Name in bad faith. These facts show that Respondent has intentionally sought to attract Internet users to its website by creating a likelihood of confusion with Complainant’s trademarks and domain name for commercial gain. Only two letters distinguish the Domain Name from Complainant’s trademark. Respondent is clearly specifically targeting Complainant’s trademark and attempting to divert Internet users searching for Complainant’s product to Respondent’s website. Respondent is presumably profiting from this conduct in the form of click-through revenues. These facts all support a finding of bad faith registration and use under Paragraph 4(b)(iv) of the Policy. The Knot, Inc., infra; Airbus Deutschland Gmbh v. DOMAIN-NAME-4-SALE,
WIPO Case No. D2005-0092.
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, <xenicalla.com> be transferred to Complainant.
Flip Petillion Sole Panelist
Dated: December 17, 2007
1 Although the WIPO Decision Overview is not binding precedent, it embodies a consensus of positions set forth in the opinions of several WIPO panelists during the first five years of the administration of the UDRP. See, Fresh Intellectual Properties, Inc. v. 800Network.com, Inc.,WIPO Case No. D2005-0061. It is prudent for panelists to follow such a consensus in order to promote consistency among UDRP decisions. See, Howard Jarvis Taxpayers Association v. Paul McCauley,
WIPO Case No. D2004-0014. See also, Last Minute Network Limited v. Web Domain Names,
WIPO Case No. D2007-1161.
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