The Complainant is Hoffmann-La Roche Inc., New Jersey, United States of America, represented by Lathrop & Gage L.C., United States of America.
The Respondent is UrProxy Domains, Vista, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <order-xenical.net> (the “Domain Name”) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2008. On February 18, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On February 19, 2008, eNom 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 February 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2008.
The Center appointed Michelle Brownlee as the sole panelist in this matter on April 7, 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 owns United States Trademark Reg. No. 1,906,281 for XENICAL for pharmaceutical preparations for weight loss and weight management, issued on July 18, 1995 and claiming a first use date of March 18, 1994, and two later-issued United States trademark registrations for the mark XENICAL ORLISTAT & design in connection with printed instructional and materials in the field of weight management and weight management services.
5. Parties’ Contentions
A. Complainant
The Complainant has sold a pharmaceutical preparation used for weight loss and weight management under the XENICAL trademark in the United States of America since March, 1999. Complainant’s Xenical product has been extensively promoted, and the Complainant has sold hundreds of millions of dollars of product under the XENICAL mark since 1999. Accordingly, the Complainant’s XENICAL mark has become well-known in the United States of America and throughout the world. The Complainant’s parent company owns the domain name <xenical.com> through which the Complainant’s customers can access a web site with information about the Complainant’s Xenical products.
The Respondent is using the Domain Name in connection with an Internet web site that allows users to buy Xenical prescription medication online. The Respondent’s web site prominently features the Complainant’s distinctive XENICAL ORLISTAT logo. The Complainant submits that the Domain Name is confusingly similar to its XENICAL trademark, that the Respondent has no rights or legitimate interests in the Domain Name and that the Respondent has registered and is using the Domain Name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name pairs the Complainant’s well-known XENICAL trademark with the term “order”. Use of the Complainant’s XENICAL trademark with a non-distinctive term such as “order” is confusingly similar to the XENICAL mark. Further, Internet users are likely to believe that the Domain Name is affiliated with the Complainant. Other panels have found confusing similarity under similar circumstances. See, e.g., Parfums Christian Dior v. 1 Netpower, Inc.,
WIPO Case No. D2000-0022 (<christiandiorcosmetics.com> and <christiandiorfashions.com> confusingly similar to CHRISTIAN DIOR); Toyota MotorSales USA v. Rafi Hamid dba ABC Automobile Buyer,
WIPO Case No. D2001-0032 (<leasinglexus.com> and <lexuselite.com> confusingly similar to LEXUS).
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate a right or legitimate interest in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
The Respondent has not provided any evidence of rights or legitimate interest in the Domain Name. Because the Respondent is using the Domain Name in connection with a commercial enterprise, it cannot claim a legitimate noncommercial or fair use. There is also no evidence that the Respondent has been commonly known by the Domain Name. The only question is whether the Respondent’s offering can be viewed as a bona fide offering of goods or services. Because the Respondent is using the confusingly similar Domain Name to mislead consumers as to the sponsorship or affiliation of its services, the services cannot be viewed as bona fide. See G.D. Searle & Co. v. Entertainment Hosting Services, Inc., NAF Case No. FA110783 (June 3, 2002) (respondent’s use of domain names incorporating pharmaceutical brand names in connection with web sites that sold pharmaceutical products was not bona fide use).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Respondent’s use of the Domain Name in connection with a web site that allows users to order the Complainant’s products and falsely suggests an association with the Complainant by using its logo attracts Internet users to the Respondent’s site by creating confusion as to source and results in commercial gain to the Respondent.
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 <order-xenical.net> be transferred to the Complainant.
Michelle Brownlee Sole Panelist
Dated: April 16, 2008
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