F. Hoffmann-La Roche AG v. Ms. Lacy Ana De Oliveira, Technology Services Ltd
Case No. D2008-0093
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, of Switzerland, represented by Jérôme Rhein, Switzerland.
The Respondent is Ms. Lacy Ana De Oliveira, Technology Services Ltd, of France.
2. The Domain Name and Registrar
The disputed domain name <clubxenical.com> is registered with NameKing.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2008. On January 24, 2008, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On January 24, 2008, NameKing.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 January 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2008.
The Center appointed Edoardo Fano as the sole panelist in this matter on February 28, 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of the Respondent’s default in responding to the Complaint).
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of the Respondent’s response.
The language of the proceeding is English, being the language of the Registration Agreement.
4. Factual Background
The Complainant is F. Hoffmann-La Roche AG, one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics.
Among others, the Complainant is the owner of the following trademark registrations:
- International registration for XENICAL No. 612.908;
- International registration for XENICAL and device No. 699.154.
The Complainant provided evidence in support of the above-mentioned trademark registrations.
The Complainant’s trademark rights in the word XENICAL, associated with pharmaceutical, veterinary and hygienic products, date back respectively to 1993 and 1998.
The Respondent’s domain name <clubxenical.com> was registered on August 12, 2004. It points to a webpage with advertising links to websites promoting and/or offering products and services of third parties.
5. Parties’ Contentions
A. Complainant
The Complainant states that the disputed domain name <clubxenical.com> is confusingly similar to its trademark XENICAL, since the addition of a descriptive term like “club” does not provide a sufficient differentiation.
Moreover, the Respondent has no rights or legitimate interests in respect of the domain name at issue since it is neither a licensee of the Complainant nor otherwise authorized to use the trademark XENICAL.
The Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith.
It is not likely that the Respondent was unaware of the Complainants’ trademark XENICAL at the time of the registration of the disputed domain name.
The Respondent is using the disputed domain name to divert Internet users to third parties websites as the Respondent’s website is a search engine with sponsored links.
The Complainant requests the Panel to issue a decision that the disputed domain name be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions and is in default: no exceptional circumstances explaining the default have been put forward.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, facts asserted by the complainant may be taken as true and reasonable inferences by the panel, in accordance with paragraph 14(b) of the Rules (see also Reuters Limited v. Global Net 2000, Inc.,
WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy,
WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman,
WIPO Case No. D2000-1080; Alta Vista Company v. Grandtotal Finances Limited et. al.,
WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A.,
WIPO Case No. D2007-0288).
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As far as the first of these elements is concerned, the Panel finds that the Complainant is the owner of the trademark XENICAL both by registration and acquired reputation and that the disputed domain name <clubxenical.com> is confusingly similar to this trademark.
It is well accepted that a top-level domain, in this case “.com”, is to be ignored when assessing identity of mark and domain name (see, e.g., VAT Holding AG v. Vat.com,
WIPO Case No. D2000-0607).
Moreover, the addition as a prefix or suffix of the generic word “club” cannot be sufficient to establish that a domain name is not identical or confusingly similar to a registered trademark (see, e.g. Kirkbi AG v. Michele Dinoia,
WIPO Case No. D2003-0038; Orix Kabushiki Kaisha v. Noldc Inc.,
WIPO Case No. D2006-0422).
The Complainant has therefore met the burden of proving that the domain name at issue is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a Response in accordance with the Rules, paragraph 5.
The Complainant has established a prima facie case that the Respondent has no right or legitimate interest in the domain name. The Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services. The Respondent is redirecting Internet users to third parties’ websites, taking advantage of the reputation of the Complainant’s registered trademark.
The prima facie case presented by the Complainant is enough to shift the burden of proof to the Respondent to demonstrate that it has a right or legitimate interest in the domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in using the disputed domain name.
The Panel therefore finds that the Policy, paragraph 4(a)(ii), has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the 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 that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that 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
(iii) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the Respondent had intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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.
The Panel is of the opinion that the disputed domain name was registered and is used in bad faith. Specifically, the domain name was registered and is used by the Respondent in order to divert Internet users to other websites.
It is apparent that the Respondent is aware of both the Complainant and its use of the trademark XENICAL in respect of a weight loss medication. In fact the disputed domain name incorporating the Complainant’s trademark is the URL of a website with many sponsored links to weight loss and diet pills.
The Panel finds that the Respondent registered and is using the disputed domain name for the purposes of commercial gain by offering links to other companies’ websites related to diet and weight loss products, in the form of a “click-through” website.
In similar cases, many prior panel decisions have recognised that the registration of domain names to be used in a “click-through” website has to be considered as an evidence of bad faith (see, e.g. Abercrombie & Fitch Trading Co. v. Digi Real Estate Foundation.,
WIPO Case No. D2007-0440; Early Timis Distillers Company v. IP Admin / DNAV ASSOCS,
WIPO Case No. D2007-1812; HBOS Plc v. Whois Protection, WIPO Case No. D2007-1605).
Considering the above, the Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and used the disputed domain name in bad faith. The Panel therefore finds that the Policy, paragraph 4(a)(iii) has been satisfied.
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 <clubxenical.com> be transferred to the Complainant, namely to F. Hoffmann-La Roche AG.
Edoardo Fano Sole Panelist
Dated: March 13, 2008
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