The Complainant is Hoffmann-La Roche Inc., San Francisco, California, United States of America (“United States”), represented by Lathrop & Gage LLP, United States of America, with its principal place of business in Nutley, New Jersey, United States.
The Respondent is Private Whois Service, c/o buyxenicalonlinepharmacy.com, with stated its principal place of business in Nassau, Bahamas.
The disputed domain name <buyxenicalonlinepharmacy.com> is registered with Internet.bs Corp. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2010. On July 29, 2010, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name.
On the same date the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details; that the domain name under dispute <buyxenicalonlinepharmacy.com> has been placed on lock to prevent any transfers or changes to the registration information during the proceedings.
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”).
The undersigned Panel has independently determined and agrees with the Center’s assessment that the Complaint is in formal compliance with the requirements of the Policy, the Rules, and 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 August 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2010.
The Center appointed Pedro W. Buchanan Smith as the sole panelist in this matter on September 15, 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.
This Panel further considers that the Complaint was properly notified to the registered domain name holder, as provided for in paragraph 2(a) of the Rules.
The Panel has not received any further requests from the Complainant or Respondent regarding submissions or waivers, extensions of deadlines and the Panel has not found it necessary to request any further information, statements or documents from the Parties, nor the need as an exceptional matter, to hold any in-person hearings as necessary for deciding the Complaint, as provided for in paragraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of domain name dispute proceedings.
The language of the proceeding is English, pursuant to paragraph 11(a) of the Rules.
Based on the information provided by the Complainant, and due considering that the same was not disputed by the Respondent, the following facts and circumstances are recognized within this proceeding:
The Complainant, together with its affiliated companies is one of the leaders in research and development of pharmaceutical and diagnostic products in the world. The XENICAL mark of Roche is protected as a trademark for a pharmaceutical preparation for weight reduction and long-term management of weight in a multitude of countries worldwide.
The trademark XENICAL is registered to the Complainant in the United States Patent and Trademark Office ("U.S.P.T.O.") under Reg. No. 1,906,281, having a registration date of July 18, 1995, and a first use date of March 18, 1994. The Complainant also owns the registration XENICAL ORLISTAT 120 MG CAPSULES registered on January 19, 2010 under Reg. No. 3,739,382. Copies of these XENICAL certificates of registration were attached to the Complaint as Exhibit 3. Additionally, the parent of Roche, F. Hoffmann-La Roche AG, also owns an International registration for XENICAL Logo, Reg. No. 699,154. Copies of the mentioned International and United States registrations showing the current status and ownership by the Complainant were attached to the Complaint as Exhibit 4.
The mark XENICAL designates a pharmaceutical preparation, namely, a pharmaceutical product indicated for weight reduction and long-term management of weight. The Complainant's mark XENICAL was extensively promoted for many years and the Complainant has used its pharmaceutical preparation bearing the XENICAL mark since March, 1994 in the United States. Sales of the XENICAL pharmaceutical preparation are in the hundreds of millions of dollars in the United States alone.
As a result of such sales and advertising, and its fair dealings with customers, the XENICAL mark of Roche has become well-known in the United States and throughout the world. Copies of unsolicited press including newspaper articles indicating the well-known status of XENICAL were attached to the Complaint as Exhibit 5.
F. Hoffmann-La Roche AG, the Swiss parent of the Complainant, owns and has registered the domain name <xenical.com>, through which customers of Roche obtain information as to the XENICAL weight loss product of Roche. A copy of the web site homepage located at “www.xenical.com” associated with domain name of Roche, <xenical.com> is attached to the Complaint as Exhibit 6. A copy of the WHOIS record concerning the domain name <xenical.com> of Roche owned by F. Hoffmann-La Roche AG, the parent of the Complainant, is attached to the Complaint as Exhibit 7.
After learning of the Respondent's unauthorized registration of the domain name incorporating the mark XENICAL, on June 25, 2010, Roche, through its counsel at law firm Lathrop & Gage LLP, sent a letter by e-mail to the Respondent's address indicated in the WhoIs record for the disputed domain name. In the June 25 communication, Roche's counsel advised the Respondent that the registration of the disputed domain name infringed the trademark rights of Roche and requested that the Respondent transfer the disputed domain name to Roche. A copy of the written communication from counsel of Roche to the Respondent was attached to the Complaint as Exhibit 8.
The disputed domain name was registered on June 7, 2010.
The domain name at issue, <buyxenicalonlinepharmacy.com> contains the entire XENICAL trademark of the Complainant. In light of the Complainant's registered mark XENICAL and the domain name <xenical.com>, controlled by Roche, the Respondent's registration and use of the disputed domain name creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of the Respondent's web site associated with the disputed domain name by the Complainant.
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. 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. Thus, the descriptive language added here, namely, “buy”, “online” and “pharmacy” does not prevent the likelihood of confusion in this case. Thus, the Respondent's domain names are identical or confusingly similar to the Complainant's XENICAL trademark within the meaning of the Policy.
The Respondent has no rights or legitimate interests in the domain name <buyxenicalonlinepharmacy.com>. Xenical is not a word and has no valid use other than in connection with the Complainant’s trademark. Complainant has not authorized the Respondent to use its trademark XENICAL or to incorporate the trademark into any domain name. Furthermore, the Complainant has never granted the Respondent a license to use the XENICAL mark.
The Respondent's use of the disputed domain name indicates that the Respondent’s domain name was selected and is being used because of the goodwill created by the Complainant in its XENICAL trademark. Based upon the Respondent's web site, it is clear that neither the Respondent nor its web site has been commonly known by the domain name <buyxenicalonlinepharmacy.com> pursuant to the Policy, paragraph 4(c)(ii).
By the Respondent’s use and registration of the disputed domain name, it seeks to capitalize on the reputation associated with the Complainant's XENICAL trademark and to divert Internet users seeking the Complainant's web site located at “www.xenical.com” to a web site wholly unrelated, as is the Respondent to Roche, namely, “www.buyxenicalonlinepharmacy.com”. The operator of the unrelated web site has no affiliation or connection whatsoever with the Complainant and such uses of the Complainant's mark XENICAL are clear indications of bad faith on the part of the Respondent.
The Respondent's appropriation and use of the Complainant's well-known trademark XENICAL in its entirety in a domain name is a clear attempt to create and benefit from consumer confusion regarding the association between the Respondent's unlicensed activities and the Complainant's bona fide business. As such, it is clear that the Respondent has no rights or legitimate interests in the domain name.
The disputed domain name is being used to promote products of the Complainant’s competitors, including a prescription dosage generic “Generic Xenical (Orlistat)” sold through linked sites “www.easy.md” and “www.4rx.com”, which medication has not been approved for sale by the FDA, and is therefore illegal for sale in(to) the United States. The Respondent’s uses of the disputed domain name therefore demonstrates the Respondent’s lack of a legitimate non-commercial interest in, or fair use of, the domain name.
The Respondent is not using the domain name in dispute in connection with a bona fide offering of goods or services. The Respondent is using the disputed domain name to divert Internet users seeking the Complainant's web site associated with the domain name “xenical.com”, or the XENICAL weight loss product to an unrelated commercial web site without license or authorization of any kind.
The Respondent's use and incorporation of the Complainant's well-known trademark XENICAL in the disputed domain name is evidence of the Respondent's intent to trade upon the reputation of the Complainant's XENICAL trademark. That as the Respondent’s use intentionally trades on the fame of the Complainant’s trademark, it cannot constitute a bona fide offering of goods and services.
There is no bona fide offering of goods or services by the Respondent. The Respondent’s commercial activity undertaken through use of the domain name is neither fair use nor bona fide under the Policy. The unauthorized appropriation of another’s trademark in a domain name and the commercial use in the corresponding web site cannot confer rights or legitimate interests upon the Respondent. See, e.g.America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (“it would be unconscionable to find a bona fide offering of services in a respondent’s operation of (its) web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”), cited in Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629”. Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814.
The Respondent's use of the Complainant's trademark is infringing and the Respondent’s intention is to trade upon the reputation of the Complainant’s domain name, registered long after the Complainant’s famous trademark XENICAL, the use of which was never licensed to the Respondent in any manner. Under these circumstances, the Respondent's use of the domain name cannot be considered bona fide.
The Respondent's true purpose in registering the disputed domain name which incorporates the Complainant's mark XENICAL is to capitalize on the reputation of the Complainant's XENICAL mark by diverting Internet users seeking the Complainant's web site to the Respondent's own web site through which a third party generic form of XENICAL is sold, which sales in(to) the United States are illegal, as there is no FDA-approved generic form of prescription level XENICAL, as well as other pharmaceutical products of third party competitors, for sale via a linked site(s). Also, it is stated on the Respondent’s site that the Orlistat is being sold without a prescription, which is illegal in the United States in addition to statements on the Respondent’s site and/or the linked sale site(s) referring to consulting with your doctor before taking Orlistat and as to the proper dosage to take. This can cause harm to the public, as the drug is meant for significantly overweight persons, and is inappropriate for many consumers.
The bad faith of the Respondent is clearly evident from the fact that: (a) “XENICAL” is not a word; (b) the Complainant’s mark XENICAL is an invented and coined mark that has a strong worldwide reputation; (c) There exists no relationship between the Respondent and the Complainant, and the Complainant has not given the Respondent permission to use its well-known mark XENICAL in a domain name, or to use its mark in any manner on the Respondent's web site.
The Respondent did not reply to the Complainant’s contentions.
The Panel considers that the Respondent, by registering the disputed domain name with the Registrar (an Internet Corporation for Assigned Names and Numbers’ –ICANN– accredited domain name registrar), agreed to be bound by all terms and conditions of the Registration Agreement, and any pertinent rule or policy, and particularly agreed to be bound by the Policy (incorporated and made a part of the Registrar’s Agreement by reference), which requests that proceedings be conducted according to the Rules and the selected administrative-dispute-resolution service provider’s supplemental rules, in the present case being the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. Therefore, the dispute subject matter of this proceeding is within the scope of the above mentioned agreements and Policy, and this Panel has jurisdiction to decide this dispute.
Furthermore, the Panel considers that in the same manner, by entering into the above mentioned Registrar Agreement, the Respondent agreed and warranted that neither the registration of its domain name nor the manner in which it intended to use such domain name would directly or indirectly infringe the legal rights of a third party, and that as a resule of a dispute under the Policy, the Respondent’s domain name registration services might be suspended, cancelled or transferred.
The Panel also particularly considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met.
Such requirements include that the Parties and particularly the Respondent in this case be given adequate notice of the proceedings; that the Parties may have a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases; that the composition of this Panel be properly made and the Parties be notified accordingly; and that both Parties be treated with equality in these administrative proceedings.
In this case, the Panel is satisfied that these proceedings have been carried out by complying with such elemental due diligence requirements, and particularly contemplating the notification of the filing of the Complaint and the initiation of these proceedings giving the Respondent a right to respond.
Paragraph 4(a) of the Policy directs that the Complainant must prove the presence of each of the following elements: (i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith.
This Panel finds that the Respondent’s domain name <buyxenicalonlinepharmacy.com> is confusingly similar to the Complainant’s widely known XENICAL trademark. The Complainant’s trademark was registered significantly earlier than the date of registration of the Respondent’s domain name <buyxenicalonlinepharmacy.com>.
In addition, the domain name <buyxenicalonlinepharmacy.com> wholly comprises the Complainant’s XENICAL trademark, with the addition of the words “buy", "on line" and "pharmacy”. That although such words are generic, its composition with the Complainant’s trademark makes the domain name <buyxenicalonlinepharmacy> confusingly similar to the Complainant’s XENICAL trademark.
Furthermore, the addition of the generic top level domain “.com”, is not a distinctive element, it is just a necessary element required for the registration of a first level domain name.
This Panel finds, in general, from the information and facts that were analyzed and from the lack of evidence to the contrary, that there is no indication that the Respondent has any rights or legitimate interests in connection with Complainant’s XENICAL trademark nor with the domain name under dispute; that the Respondent has not used nor prepared to use the <buyxenicalonlinepharmacy.com> domain name in connection with any good faith offering of goods or services as contemplated under paragraph 4(c)(i) of the Policy; nor that the Respondent is commonly known by the domain name as contemplated under paragraph 4(c)(ii) of the Policy; nor that 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 or service mark at issue as contemplated under paragraph 4(c)(iii) of the Policy. The Complainant has demonstrated that the Respondent has no rights or legitimate interests in respect of the domain name under paragraph 3(b)(ix)(2) of the Rules.
The Panel finds, from the information and facts that were analyzed, and from the lack of evidence to the contrary, that the registration and use of the domain name <buyxenicalonlinepharmacy.com> by the Respondent is in bad faith, pursuant to paragraph 4(b)(iv) of the Policy, in particular but without limitation, in view of the fact that 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 trademark XENICAL, as to the source, sponsorship, affiliation, or endorsement of the web site “www.buyxenicalonlinepharmacy.com”, and therefore has made a bad faith use of the domain name. The Complainant has demonstrated that the domain name has been registered and being used in bad faith by the Respondent under paragraph 3(b)(ix)(3) of the Rules. Indeed, at the time the Complaint was filed, the disputed domain name directed Internet users to what may be considered online pharmacy, offering the Complainant’s and its competitors products for sale. This is evidence of registration and use in bad faith of the disputed domain name. See, F. Hoffmann-La Roche AG v. Sergery Popov,WIPO Case No. D2009-0983.
Therefore, and in consideration of the Complaint’s compliance with the formal requirements for this domain name dispute proceeding, to the factual evidence and legal contentions that were submitted, to the conclusive confirmation of the presence of each of the elements contemplated in paragraph 4(a)(i), (ii) and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15 (a) of the Rules, this Panel orders that the domain name <buyxenicalonlinepharmacy.com> be transferred to the Complainant.
Pedro W. Buchanan Smith
Dated: September 24, 2010
Stay updated! Get new cases and decisions by daily email.