The Complainant is Hoffmann-La Roche Inc., of Nutley, New Jersey, United States of America, represented by Lathrop & Gage L.C., United States of America.
The Respondent is George Thomas, of Coos Bay, Oregon, United States of America.
2. The Domain Name and Registrar
The disputed domain name <buy-cheap-xenical-online.net> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on December 24, 2008, and in hard copy on December 29, 2008. On December 29, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On December 29, 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” or “UDRP”), 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 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 27, 2009.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on February 3, 2009. 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 a manufacturer of pharmaceutical products. It registered the XENICAL mark with the United States Patent and Trademark Office, for “pharmaceutical preparation for weight reduction and long-term management of weight,” on July 18, 1995. Information on the Xenical product is available on the Internet, by referring to the <xenical.com> domain name. The Swiss parent corporation of the Complainant, F. Hoffmann-La Roche AG, registered this domain name on April 17, 1997.
The Respondent registered the disputed domain name <buy-cheap-xenical-online.net> on June 17, 2004.
5. Parties' Contentions
A. Complainant
The Complaint states that: (i) the disputed domain name is identical or confusingly similar to the XENICAL mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
Under paragraphs 5(e) and 14(a) of the Rules, the Panel may decide the dispute based on the Complaint. The Panel may also draw appropriate inferences from such default, according to paragraph 14(b) of the Rules.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has rights in XENICAL, which appears to be an “arbitrary and fanciful” mark for the product for which it is used. The disputed domain name <buy-cheap-xenical-online.net> is confusingly similar to the XENICAL mark. The addition of the generic terms “buy,” “cheap,” and “online,” and the “.net” top level domain does not defeat confusing similarity. The XENICAL phrase is still prominent in the disputed domain name. This view is consistent with the decision in America Online, Inc. v. Anson Chan,
WIPO Case No. D2001-0004. There, the panel ordered the transfer of the domain name <icqroaming> to the complainant, which had rights in the “ICQ” mark. The panelist wrote, “the addition of the words ‘roaming' and ‘.com' do nothing to detract from and indeed are likely to reinforce the strong association between the word ICQ and the Complainant.” Id.
The Complainant has established the first element.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and urges that it has not authorized the Respondent to use the XENICAL mark in any way. The Complainant has met its initial burden of making a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The burden thus shifts to the Respondent to demonstrate any such right or legitimate interest, but the Respondent has defaulted. The Panel is unable to ascertain any evidence that would demonstrate the Respondent's rights or legitimate interests in the disputed domain name, as described paragraph 4(c) of the Policy or otherwise.
The second element is established.
C. Registered and Used in Bad Faith
The Complainant is required to show that the disputed domain name “has been registered and is being used in bad faith,” under paragraph 4(a)(iii) of the Policy. Internet users who type in the disputed domain name are taken to a website that contains several blatant references to Xenical:
>“Xenical helps dieters lose weight by helping the body reduce fat intake.”
>“Xenical is a unique weight-loss supplement that works in the digestive system as opposed to the nervous system. While many other weight-loss supplements work by altering your brain chemistry, Xenical works at the source. Xenical actually stops the body from digesting some of the fat you eat and thus allows you to decrease the amount of fat build-up in the body.”
>“Xenical attaches to these lipases and prevents them from doing their job.”
The Panel determines that bad faith is shown in the present case under paragraph 4(b)(iv), in that “by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's] web site . . ., by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent's] web site.”
The third element is established.
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 <buy-cheap-xenical-online.net> be transferred to the Complainant.
Ilhyung Lee Sole Panelist
Dated: February 14, 2009
Stay updated! Get new cases and decisions by daily email.
