The Complainant is Hoffmann-La Roche Inc., New Jersey, United States of America, of United States of America, represented by Lathrop & Gage L.C., United States of America.
The Respondent is Lindy Shaw, Huntsville, Alabama, United States of America.
2. The Domain Name and Registrar
The disputed domain name <xenical-for-sale.info> is registered with Registrar Company, Inc. (Previously named Blog.com Inc.).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2008. On July 1, 2008, the Center transmitted by email to Blog.com Inc. a request for registrar verification in connection with the domain name at issue. On July 4, 2008, PublicDomainegistry.com on behalf of Blog.com Inc. 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 July 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 28, 2008.
The Center appointed William F. Hamilton as the sole panelist in this matter on July 31, 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, together with its affiliated companies, is one of the leading manufacturers of pharmaceutical and diagnostics products in the world. The XENICAL mark is a trademark owned by the Complainant for a pharmaceutical preparation for weight reduction and long-term management of weight in a multitude of countries world wide. XENICAL is registered to the Complainant in the United States Patent and Trademark Office under Reg. No. 1,906,281, having a registration date of July 18, 1995 and a first use date of March 18, 1994.
The mark XENICAL has been extensively promoted worldwide and in the United States. XENICAL branded sales in the United States have exceeded hundred of millions of dollars since 1999.
The contested domain name was registered on March 17, 2008.
5. Parties' Contentions
A. Complainant
The Complainant asserts that Respondent has utilized the Complainant's well-known XENICAL mark in the contested domain name for commercial purposes. Complainant contends that the Respondent is not licensed nor authorized to use the XENICAL mark and has no legitimate rights or interest in the domain name. Complainant asserts that the contested domain name was registered and is being used in bad faith by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to the Complainant's trademark or service mark; 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 are being used in bad faith.
The Complainant must carry its burden of proof by a preponderance of evidence. Bootie Brewing Company v. Deanna D.Ward and Grabebootie Inc.,
WIPO Case No. D2003-0185.
A. Identical or Confusingly Similar
The contested domain name <xenical-for-sale.info> contains the entire XENICAL trademark of Complainant. The mere addition of generic or descriptive words after the Complainant's mark does little to avoid the conclusion that the contested domain name is confusingly similar to the Complainant's XENICAL mark. See e.g. F. Hoffman-LaRoche AG v. Daniel Sundin,
WIPO Case No. D2008-0094 (transferring <xenical-plan.com>); F. Hoffman- LaRoche v. Eugene,
WIPO Case No. D2007-1882 (transferring <xenical-bazer.com>; F. Hoffman-La Roche AG v. Transliner Consultants,
WIPO Case No. D2007-1347 (transferring <xenical-now.com>).
“Numerous [UDRP] Panel decisions have established that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain names are confusingly similar to the mark 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'.” J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998). See America Online, Inc. v. Anson Chan,
WIPO Case No. D2001-0004 (citing Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F. 3d 489, 497-98 (2d. Cir. 2000)).
The addition of a generic word to a trademark will not avoid a determination that the contested domain name is confusingly similar. “The fact that a domain name wholly incorporates a Complainant's trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks.” Oki Data Americas Inc. v. ASD Inc.,
WIPO Case No. D2001-0903. The addition of a generic term does not serve to distinguish the domain name from the trademark, but may reinforce the association of the Complainant's trademark with a domain name. Viacom International Inc. v. Frank F. Jackson and Nancy Miller,
WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet Limited,
WIPO Case No. D2000-0275; Société Air France v. RBlue,
WIPO Case No. D2005-0290.
The Panel concludes the Complainant has met its burden under Paragraph 4(a)(i).
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by the Respondent, shall be evidence of the Respondent's rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to the Respondent, the Respondent's use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) 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.
The Respondent has not provided any explanation for the use of the Complainant's mark. The Complainant has specifically alleged that the Respondent's use is not authorized and that Respondent has never been a licensee of the Complainant. The Respondent's websites are not criticism sites or websites designed to provide merely informational content with no commercial purpose. “Xenical” is an invented and coined mark. There is no evidence that Respondent is making a legitimate non-commercial or fair use of the disputed domain names without intent for commercial gain. See the Policy, paragraph 4(c)(iii).
The Complainant has established a prima facie case which has not been rebutted by the Respondent. Accordingly, the Complainant has established that the Respondent has no rights or legitimate interests in the contested domain name.
C. 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 domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product.
The Complainant must establish that the domain name was registered in bad faith and continues to be used in bad faith. Sanofi-aventis, Avnetis Pharmaceutical Holdings, Inc. v. Babak Azizzadeh,
WIPO Case No. D2007-1727. Again, the Respondent has provided no explanation as to why the contested domain name was chosen. The Respondent is clearly aware of the XENICAL mark. Indeed, the apparent commercial purpose of the “www.xenical-for-sale.info” site is to promote the sale of XENICAL and other pharmaceutical products while also promoting competing and unrelated products.
Accordingly the Panel concludes that the contested domain name was registered and is being 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 domain name <xenical-for-sale.info> be transferred to the Complainant.
William F. Hamilton Sole Panelist
Dated: August 14, 2008
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