Complainant is Hoffmann-La Roche Inc of South San Francisco, California, United States of America represented by Lathrop & Gage LLP, United States of America.
Respondent is Rodrigo Castillo of Ventura, California,United States of America.
The disputed domain name <xenical-weightloss.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2010. On November 18, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 19, 2010, 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 Respondent of the Complaint, and the proceedings commenced on November 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 10, 2010.
The Center appointed Andrew S. Mansfield as the sole panelist in this matter on December 17, 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.
The Panel finds the following facts to be uncontested.
- The Complainant, together with its affiliated companies, is one of the largest companies researching, producing, and selling pharmaceutical and diagnostic products in the world.
- XENICAL is registered to 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 mark XENICAL designates a pharmaceutical preparation, namely, a pharmaceutical product indicated for weight reduction and long-term management of weight.
- Complainant also owns the registration XENICAL ORLISTAT 120 MG CAPSULES registered on January 19, 2010 under Reg. No. 3,739,382.
- Additionally, the parent of Complainant, F. Hoffmann-La Roche AG, also owns International registration for XENICAL Logo, Reg. No. 699,154.
- F. Hoffmann-La Roche AG, the Swiss parent of Complainant, owns and has registered the domain name <xenical.com>.
Complainant alleges that Complainant’s mark XENICAL was extensively promoted for many years and Complainant has used its pharmaceutical preparation bearing the XENICAL mark since March of 1994 in the United States. Complainant states that sales of the XENICAL pharmaceutical preparation are in the hundreds of millions of dollars in the United States alone. Complainant alleges that the XENICAL mark is widely known in the United States and in other countries as a result of advertising and sales.
Complainant alleges that individuals’ use information at its parent company’s website, “www.xenical.com”, to obtain information about XENICAL.
Complainant further argues that the disputed domain name, <xenical-weightloss.com>, contains the entire XENICAL trademark of Complainant. In light of Complainant’s XENICAL trademark and its parent corporation’s website at “www.xenical.com”, the inclusion of Complainant’s mark in the disputed domain name, creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of the Respondent’s website in relation to Complainant’s product, XENICAL trademark, and “www.xenical.com” website.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name <xenical-weightloss.com>. This is so, argues Complainant, because “Xenical” is not a word in English or other languages, and Complainant has not authorized Respondent to use the trademark XENICAL in any fashion. Respondent, to Complainant’s knowledge, has never been known by a name including “Xenical”.
Further, Complainant alleges that Respondent selected a domain name including the trademark XENICAL to trade off of the notoriety and distinctiveness of XENICAL. This is supported, says Complainant, by the fact that the disputed domain name <xenical-weightloss.com> diverts Internet users who land on that web page to a website that promotes weight loss preparations (apparently non-pharmaceutical). The disputed domain name <xenical-weightloss.com> is, according to Complainant, being used to promote products of Complainant’s competitors.
Complainant alleges that the Respondent is not using the disputed domain name <xenical-weightloss.com> in connection with a bona fide offering of goods or services. Complainant argues that Respondent is using the disputed domain name to divert Internet users seeking Complainant’s website associated with the domain name <xenical.com>, or the Xenical weight loss product, to an unrelated commercial website without license or authorization of any kind, whose sales through multiple linked sales sites include weight loss products competitive with Complainant’s well-known mark XENICAL. Complainant states that Respondent has no legitimate interest in the disputed domain name <xenical.com> containing Complainant's trademark XENICAL, is in no way connected with Complainant, and is trading on Complainant’s trademark XENICAL for commercial gain, all to the confusion of the purchasing public.
Finally, Complainant alleges that there is no evidence Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Such a use is obviated by the use described above which results in commercial gain.
All of these factors, according to Complainant, show that Respondent registered and is using the domain name in bad faith. The only reasonable conclusion, states Complainant, is that Respondent was aware of the XENICAL trademark and uses it in the disputed domain name for the purposes of confusing the public as to the relationship between Complainant (and Complainant’s products) and Respondent. Complainant alleges that Respondent has intentionally attempted to attract for financial gain Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark XENICAL as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or the goods sold on or through Respondent’s website.
For all of these reasons, Complainant asks that the disputed domain name <xenical-weightloss.com> be transferred to Complainant.
The Respondent did not reply to the Complainant’s contentions.
Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
i. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
ii. 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 by Respondent in bad faith.
Even when a respondent defaults, as is the case here, the Complainant must establish and carry the burden of proof on each of the three elements identified above. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383.
The Panel proceeds to each of these elements below.
XENICAL is a registered trademark of Complainant in the United States, where the Respondent is located. It is also registered internationally and in many foreign jurisdictions by Complainant’s parent company, F. Hoffman-La Roche AG, and that parent company has registered and uses the domain name <xenical.com> to internationally promote the Xenical pharmaceutical.
Complainant is correct in stating that numerous UDRP decisions have held that the addition of a word to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998); see alsoTime Warner Entertainment Company L.P. v. HarperStephens, WIPO Case No. D2000-1254, concerning over one hundred domain names that combined a mark with a generic term. Another panel found that it is a well-established principle that descriptive or generic additions to a trademark, and particularly those that designate the goods or services with which the mark is used, do not avoid confusing similarity of domain names and trademarks, eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307.
The Panel finds that the disputed domain name is confusingly similar to a trademark or service mark XENICAL in which Complainant has rights.
The Panel is satisfied that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating a right or legitimate interest in a disputed domain name. By matter of default, Respondent has failed to do so, and the Panel finds, also in light of the Panel’s findings below, Complainant to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith. If found, any one of these elements, though non-exclusive, may be found to be evidence of the registration and use of the domain name in bad faith.
“i. Circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
ii. The Respondent has 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 website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.”
The Panel finds that Respondent is using the disputed domain name <xenical-weightloss.com>, which includes entirely the trademark XENICAL to attract online consumers interested in Complainant’s product Xenical who would plausibly assume that Respondent’s website belongs to or is endorsed by Complainant. Respondent is misleading consumers and confusing them so as to lead them to Respondent’s website where competing products, though non-pharmaceutical, are sold. Respondent is improperly benefiting from the XENICAL trademark. This indicates Respondent’s bad faith in the registration and use of the disputed domain name <xenical-weighloss.com>. See e.g., Philip Morris Incorporated v. r9.net, WIPO Case No. D2003-0004; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556. Diverting Internet users to a website selling or linking to competing products by using a domain name confusingly similar to Complainant’s trademark is evidence of bad faith under paragraph 4(b)(iv) of the Policy. See e.g., Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319; Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774; National City Corporation v. MH Networks LLC, WIPO Case No. D2004-0128; AT&T Corp. v. Azim Hemani, WIPO Case No. D2003-0634.
The Panel finds that Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website at the disputed domain name <xenical-weightloss.com>. This creates a likelihood of confusion with Complainant’s trademark XENICAL as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or of the products or services posted on or linked to Respondent’s websites.
The Panel considers, based on all the above elements, that Complainant has established the bad faith of Respondent in registering and using the disputed Domain Names in accordance with paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <xenical-weightloss.com> be transferred to the Complainant.
Dated: December 30, 2010
Stay updated! Get new cases and decisions by daily email.