Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented by Lathrop & Gage LLP, United States of America.
Respondent is Danner Bruce of Benbrook, Texas, United States of America.
2. The Domain Names and Registrar
The disputed domain name <xenicalprice.com> is registered with Register.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2010. On May 5, 2010, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain names. On May 6, 2010, Register.com transmitted by email to the Center its verification response, confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 28, 2010.
The Center appointed Gregory N. Albright as the sole panelist in this matter on June 16, 2010. 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
Complainant owns the trademark XENICAL for a pharmaceutical preparation for weight reduction and long-term management of weight, registered to Complainant in the United States Patent and Trademark Office (“USPTO”) under Reg. No. 1906281, having a registration date of July 18, 1995, and a first use date of March 18, 1994. Complainant is also the owner of the service mark XENICAL ORLISTAT 120 MG CAPSULES for providing weight management services, namely, weight reduction planning, diet planning, and supervision and behavior modification relating thereto, registered to Complainant in the USPTO under Reg. No. 3739382, having a registration date of January 19, 2010, and a first use date of December 31, 2007. The disputed domain name was registered on March 3, 2010.
5. Parties' Contentions
A. Complainant
Identical or Confusingly Similar.
Complainant, together with its affiliated companies, is one of the leaders in research and development of pharmaceutical and diagnostic products in the world. Complainant's XENICAL mark is protected as a trademark for a pharmaceutical preparation for weight reduction and long-term management of weight in a multitude of countries worldwide. For example, Complainant owns Reg. No. 1906281 issued by the USPTO. In addition, Complainant owns Reg. No. 3739382 for the service mark XENICAL ORLISTAT 120 MG CAPSULES.
Complainant has extensively promoted the XENICAL mark and its pharmaceutical preparation bearing the XENICAL mark since March 1994 in the United States. Complainant has enjoyed hundreds of millions of dollars of sales of the Xenical pharmaceutical in the United States alone. As a result, Complainant's XENICAL mark has become well-known throughout the world.
Complainant's Swiss parent company, F. Hoffman-La Roche AG, has registered the domain name <xenical.com> through which Complainant's customers obtain information about Complainant's XENICAL product.
The disputed domain name <xenicalprice.com> includes the entirety of Complainant's XENICAL mark. In view of Complainant's rights in the XENICAL mark and its parent company's use of the <xenical.com> domain name, Respondent's registration and use of the disputed domain name creates a strong likelihood of confusion as to the source, sponsorship, association or endorsement of Respondent's web site. Numerous UDRP Panel decisions have established that the addition of words, letters or numbers to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark.
Rights or Legitimate Interests.
Respondent has no rights or legitimate interests in the disputed domain name. “Xenical” is not a dictionary word and has no valid use other than as Complainant's trademark. Complainant has not licensed or otherwise authorized Respondent to use the XENICAL mark.
The web site to which the disputed domain name resolves offers Complainant's XENICIAL drug, competitors' weight loss products, and other products of Complainant and its competitors through the site “www.rx-u.com”. Respondent's appropriation and use of Complainant's XENICAL mark in the disputed domain name is a clear attempt to create and benefit from consumer confusion regarding an association between Respondent's unlicensed activities and Complainant's bona fide business. Since the disputed domain name is being used to promote products of Complainant and its competitors, Respondent has no legitimate noncommercial interest in the disputed domain name, and is not making a fair use of it.
Registered and Used in Bad Faith.
Respondent's purpose in registering the dispute domain name was to capitalize on the reputation of Complainant's XENICAL mark by diverting Internet users to Respondent's web site where, via a linked site, consumers can purchase the XENICAL prescription drug, other products of Complainant, and competitors' weight loss and other pharmaceutical products. Respondent's bad faith intent is apparent from the facts that (a) “xenicalprice” is not a word; (b) Complainant's XENICAL mark is an invented and coined mark that has a strong worldwide reputation; (c) Complainant did not give Respondent permission to use its well-known XENICAL mark, and Respondent is not otherwise associated with Complainant; (d) Respondent must have been aware of Complainant's XENICAL mark before registering and using the disputed domain name; and (e) Respondent has used the disputed domain name to advertise for sale the XENICAL product and competitive products.
B. Respondent
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has shown that it owns trademark rights in the XENICAL mark. The XENICAL mark is a fanciful designation of source, rather than a dictionary word, and thus a strong mark. Further, Complainant has shown that it has built up goodwill through substantial advertising and sales of its product under the XENICAL mark, leading to consumers to associate the mark with Complainant as the source of the XENICAL pharmaceutical product.
The disputed domain name <xenicalprice.com> incorporates the entirety of the XENICAL mark. “Numerous […] UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark.” PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),
WIPO Case No. D2003-0696 (collecting cases). Moreover, including “price” in the disputed domain name does not dispel confusion, but rather compounds it, because it signals an authorized commercial use of the mark. Internet users drawn to the web site to which the disputed domain name resolves, and to sites linked with it, would reasonably expect to be dealing with the owner of the XENICAL mark, or an authorized seller of products under the XENICAL mark.
Complainant has established the first element.
B. Rights or Legitimate Interests
Complainant has also made an adequate prima facie showing that Respondent does not have rights or legitimate interests in respect of the disputed domain name. XENICAL does not resemble Respondent's name. Complainant asserts that it has not licensed or otherwise granted Respondent permission to use the XENICAL mark. The web page to which the disputed domain name resolves manifests Respondent's intent to capitalize upon the use of the XENICAL mark for commercial gain, rather than for any legitimate noncommercial or otherwise fair use.
Respondent did not come forward with any evidence to demonstrate that he has any rights or legitimate interests in respect of the disputed domain name.
Complainant has established the second element.
C. Registered and Used in Bad Faith
The Panel is satisfied that Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to the we bsite to which the disputed domain name resolves, and to linked sites, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of the site. Indeed, the intentional but unauthorized commercial nature of Respondent's registration and use of the disputed domain name is inescapable, given that the disputed domain name combines Complainant's fanciful XENICAL mark and the term “price.” These facts taken together constitute evidence of both bad faith registration and bad faith use.
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 <xenicalprice.com> be transferred to Complainant.
Gregory N. Albright Sole Panelist
Dated: July 6, 2010
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