The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented by Jérôme Rhein, Switzerland.
The Respondent is CIP, Dan Rivers, Panama City, Panama.
2. The Domain Names and Registrar
The disputed domain names <testimonialsforxenical.com> and <xenicalsuccessstories.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2009. On February 11, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On February 11, 2009, GoDaddy.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” 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 February 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 9, 2009.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on March 17, 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 one of the world's leading research-focused healthcare groups in the field of pharmaceuticals and diagnostics.
The Complainant's trademark XENICAL is registered in many countries, designating oral prescription weight loss medication used to help obese people lose weight and keep weight off. The Complaint's Annex 3 shows trademark registrations since 1993.
The Respondent registered the domain names <testimonialsforxenical.com> and <xenicalsuccessstories.com> on January 8, 2009. The Respondent uses the disputed domain names in connection with pay-per-click (“PPC”) parking pages.
When the Panel accessed the websites at the disputed domain names after receipt of the case file, they showed a list of links for acupuncture weight loss, green tea capsules, medicines and others.
5. Parties' Contentions
A. Complainant
The Complainant makes the following contentions:
i. The Respondent's domain names are confusingly similar to the Complainant's trademark seeing that it incorporates this mark in its entirety. The addition of the descriptive words “testimonials for” and “success stories” does not sufficiently distinguish the domain names from the Complainant's mark.
Furthermore, the Complainant's use and registration of the mark XENICAL predate the Respondent's registration of the domain names.
ii. The Complainant has exclusive rights for the trademark XENICAL and no license, permission or authorization was granted to the Respondent to use XENICAL in the domain names.
The Respondent's only reason in registering and using the contested domain names is to benefit from the reputation of the trademark XENICAL and illegitimately trade on its fame for commercial gain and profit.
iii. The domain names were registered in bad faith since at the time of the registration the Respondent had knowledge of the Complainant's product/mark XENICAL.
The domain names are also being used in bad faith since the Respondent is intentionally attempting (for commercial purposes) to attract Internet users to its websites, by creating a likelihood of confusion with the Complainant's mark, which has a good reputation among doctors, as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites or of the products or services posted on or linked to the Respondent's websites.
Furthermore, the use of the domain names in question seems also to be advertising links to websites promoting and/or offering products directly competing with those of the Complainant. As a result, the Respondent may generate unjustified revenues for each clickthrough by on-line users of the sponsored links. The Respondent is therefore illegitimately capitalizing on the XENlCAL trademark fame.
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 shall prove the following three elements:
“(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.”
Regardless of the fact the Respondent failed to submit a formal reply, the Panel shall consider whether the requirements of the Policy have been met.
A. Identical or Confusingly Similar
The Complaint's Annex 3 proves that the Complainant has rights in the XENICAL trademark at least since 1993.
The trademark is wholly encompassed within the disputed domain names. Although the domain names also contain descriptive words such as “testimonial for” and “success stories”, this is not sufficient to refute the confusingly similar requirement under Paragraph 4(a)(i).
In a previous UDRP case, concerning the domain names <buy-xenical-000.biz> and <order-xenical-a.biz>, the panel stressed that “it is now well-established that the adoption of a trademark in its entirety as a domain name together with other descriptive material does not generally suffice to enable a respondent to overcome an allegation that the domain name is distinguishable from the Trademark in question” (F. Hoffmann-La Roche AG v. sysadmin admin, balata.com ltd.,
WIPO Case No. D2008-0954).
The same conclusion was reached in Hoffmann-La Roche Inc. v. UrProxy Domains,
WIPO Case No. D2008-0237, concerning the domain name <order-xenical.net>: “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”. See also Lilly ICOS LLC v. John Hopking/Neo net Ltd.,
WIPO Case No. D2005-0694.
Therefore, the Panel finds the disputed domain names to be confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing 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.
Based on the Respondent's default and on the prima facia evidence in the Complaint, it is presumed that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant has not licensed the trademark to the Respondent. The Respondent is not commonly known by the domain names.
While it might be argued that the disputed domain names initially suggest websites for commentaries and criticism about the Complainant's product XENICAL, in the present circumstances no such argument has been presented and no such use is evident from the record.
In Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers,
WIPO Case No. D2000-0190, the panel denied the claim, pointing that the “Respondent's principal purpose in using the domain name appears not to be for commercial gain, but rather to exercise his First Amendment right to criticize the Complainants. The use of the <trademark.net> domain name appears to be for the communicative purpose of identifying the companies, which are the subject of his complaints. He is not misleadingly diverting users to his website, as he has not utilized the <.com> domain and has posted adequate disclaimers as to the source of the website. It does not appear that his actions are intended to tarnish, or have tarnished, the Complainants' marks. . . Nor does it appear that Respondent's registration and use of the Domain Name have harmed Complainants commercially”.
But this is not the present situation. Here, although the domain names reproduce the Complainant's trademark in conjunction with the words “testimonials for” and “success stories”, there are no testimonials or commentaries in the referred websites. Both are regular pay-per-click parking pages, including advertising links to websites promoting competing products. This circumstance can not be understood to be noncommercial or fair.
Consequently, the Panel is satisfied that Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular but without limitation, shall be 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 Panel has had little difficulty in concluding that the circumstances referred on Paragraph 4(b)(iv) have happen in the present case.
The disputed domain names encompass the Complainant's trademark XENICAL (together with the words “testimonials for” and “success stories”) and are being used as pay-per-click landing pages, displaying sponsored links for third party websites that offer competing products. Therefore, in doing so, the Respondent:
i. creates a likelihood of confusion with the Complainant's trademark, causing Internet users searching for information on the Complainant's product to mistakenly believe that the Respondent is authorized to sell the product named XENICAL;
ii obtains clicktrough revenue from this practice; and
iii. deprives the Complainant from selling its product to someone who is clearly looking for it and, at the same time, promotes products offered by competitors.
For reference on the subject see Asian World of Martial Arts Inc. v. Texas International Property Associates,
WIPO Case No. D2007-1415.
Accordingly, the Panel finds that the Complainant has proved that the Respondent registered and used the disputed domain names in bad faith, satisfying the third element of the Policy.
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 names <testimonialsforxenical.com> and <xenicalsuccessstories.com> be transferred to the Complainant.
Rodrigo Azevedo Sole Panelist
Dated: March 31, 2009
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