F. Hoffmann-La Roche AG v. Softech Ltd., DNS Administrator (gold)
Case No. D2007-1699
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by its internal representative, Switzerland.
The Respondent is Softech Ltd., DNS Administrator (gold), Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <1-stop-viagra-zyban-xenical-shop.com> is registered with Spot Domain LLC dba Domainsite.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2007. On November 19, 2007, the Center transmitted by email to Spot Domain LLC dba Domainsite.com a request for registrar verification in connection with the domain name at issue. On November 20, 2007, Spot Domain LLC dba Domainsite.com 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 the Respondent of the Complaint, and the proceedings commenced on November 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2007.
The Center appointed Tan Tee Jim, S.C. as the sole panelist in this matter on January 3, 2008. 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 field of pharmaceuticals and diagnostics. The Complainant has global operations in more than 100 countries.
XENICAL designates an oral prescription weight loss medication. The Complainant is the registered proprietor of the XENICAL trademark in over 100 countries worldwide. The registrations include International Registration Nos. 612908 and 699154, claiming a priority date of August 5, 1993.
The disputed domain name is <1-stop-viagra-zyban-xenical-shop.com>.
The Respondent operates a website using the above domain name. The website contains a search engine with sponsored links.
5. Parties’ Contentions
A. Complainant
The Complainant contends that:
(1) the disputed domain name is confusingly similar to the Complainant’s mark XENICAL because it incorporates the mark XENICAL in its entirety;
(2) the addition of the words “viagra” and “zyban” in the disputed domain name does not alter the fact that there is likelihood of confusion;
(3) the addition of such generic words as “1”, “stop” and “shop” does not sufficiently distinguish the Respondent’s disputed domain name from the Complainant’s mark XENICAL;
(4) the Respondent has no rights or legitimate interests in respect of the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy because of the following reasons:
(a) the Complainant owns the exclusive rights for XENICAL;
(b) the Complainant did not grant a licence, permission or authorization to the Respondent to use XENICAL in the disputed domain name;
(c) the Respondent’s use of the mark XENICAL alludes to the Complainant;
(d) the Respondent’s website is a search engine with sponsored links;
(e) the Respondent’s use of the mark XENICAL is to benefit from the Complainant’s mark and illegitimately trade on its fame for commercial gain and profit; and
(5) the disputed domain name was registered and is being used in bad faith because:
(a) the Respondent had knowledge of the Complainant’s mark XENICAL when it registered the disputed domain name on March 4, 2007;
(b) the Respondent is using the website to intentionally attempt to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark XENICAL;
(c) the Respondent’s use of the disputed domain name seems to advertise links to websites promoting and/or offering products and services, especially in the pharmaceutical field being the business of the Complainant; and
(d) the Respondent’s use of the disputed domain name will intentionally mislead the consumers and confuse them so as to attract them to other websites making them believe that the websites behind those links are associated or recommended by the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Elements of the Policy
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present in order to succeed in the Complaint:
(1) the disputed domain name is identical with or confusingly similar to a trademark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph14(b) of the Rules, if the Respondent does not submit a Response, the Panel shall, in the absence of exceptional circumstances, decide the dispute based on the Complaint.
(1) Identical or Confusingly Similar
The Complainant has provided prima facie evidence of its registrations in relation to its XENICAL trademarks in class 5 (covering pharmaceutical products in relation to weight loss medication) in several countries, such as France, Russia, Croatia, Ukraine, Portugal, as well as Italy. On the basis of these registrations, the Panel is satisfied that the Complainant has rights in the trademarks.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. The disputed domain name incorporates the term “xenical”, in addition to the words “viagra”, “zyban”, “1”, “stop” and “shop”.
With regard to the addition of the words “viagra” and “zyban”, in Hoffman-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy,
WIPO Case No. D2000-1493, it was held that the inclusion of a third party trademark in the disputed domain name does not change the fact that the disputed domain name is confusingly similar to the mark. In G.D. Searle & Co. v. Entertainment Hosting Services, Inc., NAF Claim No. FA0204000110783, the disputed domain name <viagra-propecia-xenical-celebrex-claritin-prescriptions.com> was found likely to be confused with the complainant’s CELEBREX mark. In Chevron Corporation v Young Wook Kim,
WIPO Case No. D2001-1142, it was held that the disputed domain name <chevron-texaco.com> was likely to be confused with the Complainant’s “Chevron” mark. The Panel agrees with these decisions and finds that the addition of the words “viagra” and “zyban” does not affect the confusing similarity between the disputed domain name and the Complainant’s mark XENICAL.
With respect to the inclusion of the generic words “1”, “stop” and “shop” in the disputed domain name, there are a number of previous Panel decisions which state that confusing similarity, for the purposes of the Policy, is established when a disputed domain name wholly incorporates a complainant’s mark and only adds a generic word (see for example, F. Hoffmann-La Roche AG v. Bobik Marley,
WIPO Case No. D2007-0694 (for the word “1”); Sanofi-Aventis v. Link,
WIPO Case No. D2004-0810, (for the word “stop”, among other words); and Ferrari S.p.A. v. JK Marketing,
WIPO Case No. D2001-1003 (for the word “shop”). The Panel agrees with these decision and finds, in the present case, that the inclusion is not sufficient to distinguish the domain name from the Complainant’s mark and to negate the impression that the Respondent’s disputed domain name is related to the Complainant’s mark since the domain name implies that it is a one-stop shop selling “Xenical” drugs, apart from” Viagra” and “Zyban” drugs.
The Panel therefore finds for the Complainant in relation to the first element.
(2) Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the Respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following:
(1) the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute; or
(2) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(3) the Respondent is making 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 or service mark at issue.
As the Respondent failed to file a Response, the Panel does not have before it any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances which might reasonably be said to give to the Respondent a right to or a legitimate interest in the disputed domain name. Previous decisions under the Policy have found it sufficient for a Complainant to make a prima facie showing of its assertion in the event of a respondent’s default.
The Panel finds that the circumstances mentioned and evidenced below by the Complainant are sufficient to establish a prima facie showing that the Respondent has no rights or legitimate interests in the domain name at issue:
(1) the Complainant has provided evidence of its worldwide registrations and use of its XENICAL trademarks in relation to pharmaceutical products and, consequently, the XENICAL mark is not one that could be legitimately adopted other than for the purpose of creating an erroneous impression of an association with the Complainant and/or its products;
(2) the Complainant has not licensed or otherwise authorized the Respondent to use any of its XENICAL trademarks or to apply for or use any domain use incorporating the term “xenical”;
(3) there is no evidence to suggest that prior to the registration of the disputed domain name, the Respondent is commonly known by the term XENICAL as an individual, business or organization or has been using the term in connection with a bona fide offering of goods or services; and
(4) the Respondent has not provided any evidence of legitimate use of the disputed domain name or reasons to justify the choice of domain name and/or the term “xenical” in the domain name.
The Panel therefore finds for the Complainant in relation to the second element.
(3) Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely,
(1) circumstances indicating that the Respondent has registered or have acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(3) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) the Respondent has, by using the domain name, intentionally attempted to attract, for commercial gain, Internet users to his 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
By failing to file a Response, the Respondent has failed to invoke any of the circumstances that could demonstrate that the Respondent did not register and use the disputed domain name in bad faith and to assist the Panel in this regard.
The website using the disputed domain name contains a search engine with sponsored links. It provides an online pharmacy which offers “Xenical” and various other drugs which directly compete with the Complainant. It is apparent that the use of the disputed domain name is an attempt to attract, for commercial gain, Internet users to the Respondent’s site, by creating a likelihood of confusion with the Complainant’s mark. Further, the use of the disputed domain name is likely to confuse or mislead Internet users that the Respondent’s site is sponsored or endorsed by the Complainant or is affiliated to the Complainant.
Additionally, the choice of such an inventive and uncommon word as “Xenical” for use in the same field as the Complainant’s could not have been coincidental or unintentional. It is probable that the Respondent knew or must have known of the Complainant’s XENICAL mark when it registered the disputed domain name in March 2007 and chose or used the mark to attract, for commercial gain, Internet users to its site by creating a likelihood of confusion with the Complainant’s mark or to confuse or mislead Internet users that the Respondent’s site is sponsored or endorsed by the Complainant or is affiliated to the Complainant.
The Panel accordingly finds for the Complainant in relation to the third element.
7. Decision
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <1-stop-viagra-zyban-xenical-shop.com> be transferred to the Complainant.
Tan Tee Jim, S.C. Sole Panelist
Dated: January 17, 2008
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