The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Sergey Popov of Ulyanovsk, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <onlinexenical.org> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2009. On July 21, 2009, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain name. On July 22, 2009, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center concerning the Registrar information, the Complainant filed an amendment to the Complaint on July 27, 2009. The Center verified that the Complaint together with the amendment to 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 July 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 18, 2009.
The Center appointed Andrew Frederick Christie as the sole panelist in this matter on August 24, 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 major research-focused healthcare groups in the field of pharmaceuticals and diagnostics, operating globally. It is the owner in numerous countries of registrations for the trademark XENICAL, the earliest priority date for which is August 5, 1993. This trademark is used in respect of an oral weight loss medication.
The Respondent registered the disputed domain name on June 22, 2009. It is used in the URL for a website offering for sale a weight loss medication described as “Xenical”. That website also contains links to other web pages, selling other medication products.
5. Parties' Contentions
A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its XENICAL trademark. The disputed domain name incorporates the XENICAL trademark in its entirety. The addition of the descriptive term “online” does not sufficiently distinguish the domain name from the Complainant's trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed the Respondent to use its XENICAL trademark. The Respondent is using the disputed domain name in the URL of a website selling medication products. This is manifestly commercial. Hence, the Respondent is not making a legitimate noncommercial or fair use of the domain name.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. At the time of registration the Respondent had knowledge of the Complainant's XENICAL product and trademark. By using the disputed domain name in the URL of a website selling medication products, the Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or of the products or services posted on or linked to Respondent's website.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name incorporates fully the Complainant's XENICAL trademark, preceded by the word “online”. The distinctive part of the domain name is “xenical”, the Complainant's trademark. The addition of the word “online” does not dispel the confusing similarity with the Complainant's trademark. The word “online”, describes a location: the Internet. The inclusion of this word in the disputed domain name does not lessen the inevitable association of the domain name with the Complainant's XENCIAL trademark that results from the domain name's incorporation of the trademark. Thus, this Panel is satisfied that the disputed domain name is confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
The Respondent is not associated with the Complainant, and has not been licensed by the Complainant to use the XENICAL trademark. The Respondent is using the disputed domain name to promote online sales of a medication product described as “Xenical”. There is no evidence as to whether or not the product sold from this website is the product manufactured by the Complainant under the XENICAL trademark. However, even if the product sold at the Respondent's website is genuine XENICAL, this does not mean that the Respondent has a right or legitimate interest in the disputed domain name. As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“Overview”) paragraph 2.3 makes clear, the majority view is that an online reseller of goods has a legitimate interest in a domain name containing the trademark used on those goods only if the Respondent: (i) does actually sell the trademarked goods, (ii) is using the website to sell only the trademarked goods, (iii) discloses its relationship with the Complainant, and (iv) is not trying to corner the market in all relevant domain names, thus depriving the Complainant of the opportunity of reflecting its trademark in a domain name. In this case it is not necessary to decide whether the first and fourth requirements are satisfied, because, it is clear that neither the second requirement nor the third requirement is satisfied. The website to which the disputed domain name resolves contains links to pages selling other medication products, and does not disclose the registrant's (lack of a) relationship with the Complainant. Thus, this Panel is satisfied that the Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent's use of the disputed domain name in the URL of a website selling medication products is an intentional attempt to attract, for commercial gain, Internet users to that website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of that website or a product on that website. Pursuant to the paragraph 4(b)(iv) of the Policy, this is evidence of the registration and use in bad faith of the disputed domain name. Thus, this Panel is satisfied that the Respondent registered and is using the disputed domain name 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 <onlinexenical.org> be transferred to the Complainant.
Andrew Frederick Christie Sole Panelist
Dated: September 8, 2009
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