Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
Respondent is Above.com Domain Privacy / Shu Lin, Shu Lin Enterprises Limited / Host Master, Transure Enterprise Ltd of Beaumaris, Victoria, Australia; Dalian, People’s Republic of China, and Road Town, Tortola, Virgin Islands (British), respectively.
The disputed domain names <cheapest-xenical.com>, <cheapestxenical.com>, <denical.com>, <discounted-xenical.com>, <discount-xenical-online.com>, <exnical.com>, <lowcostxenical.com>, <online-pharmacy-valium.com>, <overthecounterxenical.com>, <pharmacy-xenical.com>, <phentermine-xenical-diet-pill.com>, <tamiglu.com>, <tamyflu.com>, <xeenical.com>, <xeical.com>, <xeincal.com>, <xejical.com>, <xeniacl.com>, <xenicak.com>, <xenicakl.com>, <xenical-cheap.com>, <xenicalcom.com>, <xenicali.com>, <xenicap.com>, <xeniccal.com>, <xenicql.com>, <xenicsl.com>, <xeniical.com>, <xenival.com>, <xenixal.com>, <xenucal.com>, <xneical.com>, <xsnical.com>, <xxenical.com>, and <x3nical.com> are registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2010. Complainant identified Above.com Domain Privacy as the registrant of the disputed domains names and therefore named it as Respondent. On November 19, 2010, the Center transmitted to Above.com, Inc. a request for registrar verification in connection with the disputed domain names. On November 22, 2010, Above.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names. In that verification response, Above.com, Inc. identified eight of the disputed domain names as registered by Shu Lin Enterprises Ltd. and twenty-seven as registered by Transure Enterprise Ltd. These parties differed from the named Respondent and contact information in Complaint. The Center sent an email communication to the Complainant on November 24, 2010 providing the registrant and contact information disclosed by the Registrar. The Center requested that Complainant do one of the following:
1. File a separate Complaint concerning one of the above groups of domain names, and file a short amendment to drop said separately-filed domain names from the current Complaint; or,
2. Provide the Center with a brief amendment to the Complaint, adding the names of both registrar-disclosed registrants as formal Respondents and demonstrating that both registrants are, in fact, the same entity; or,
3. Provide the Center with a separate statement providing any additional information as to why Complainant believes the Complaint should not name as Respondents the Registrar disclosed underlying registrants.
In paragraph 8.1 of the Complaint, Complainant argues that Registrars who provide privacy services (whereby the identity of another party with rights or interests in a domain name is hidden from the public) should be considered as the actual registrant of each such domain name. The Center provided Complainant with an opportunity to provide additional information in support of that position. Complainant elected instead to file an amendment to the Complaint and did so on November 25, 2010. Above.com Domain Privacy and the two newly-identified parties were listed separately though identified by Complainant as a single Respondent.
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 Respondent of the Complaint, and the proceedings commenced on November 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 17, 2010.
The Center appointed Andrew Mansfield as the sole panelist in this matter on January 5, 2011. 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.
Complainant, together with its affiliated companies, is one of the largest health research and health diagnostic providers in the world. The Panel takes notice of Complainant’s statement that it has operations in more than 100 countries worldwide.
Complainant’s mark XENICAL is protected as a trademark in numerous countries around the world. Complainant submitted evidence that that it holds International Registration Nos. 612908 and 699154 in XENICAL. Priority for the mark XENICAL is August 5, 1993. The mark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep weight off. For the mark XENICAL Complainant holds registration in over one hundred countries.
Complainant’s mark TAMIFLU is protected as a trademark in many countries. Complainant cites International Registrations Nos. 713623 and 727329. Priority for the mark TAMIFLU is May 4, 1999. The mark TAMIFLU designates an antiviral pharmaceutical preparation to protect against flu. In the past several years, this mark has been referenced in the mass media many times in response to recent flu epidemics.
Complainant’s mark VALIUM is protected as a trademark in many countries. Complainant cites International Registration No. 250784. The priority date for this mark is October 20, 1961. The mark VALIUM designates a sedative. For the mark, Complainant holds over one hundred trademark registrations worldwide.
The thirty-five disputed domain names in this matter were registered between July and November of 2010.
In the original Complaint, Complainant asserted that a single proceeding for all thirty-five disputed domain names was appropriate because the WhoIs details for each domain name listed the Registrar Above.com, or its affiliated company, Above.com Domain Privacy (collectively referred to as Above.com), as the sole contact for registration, administration, technical, and billing matters. Complainant argues that Above.com should be held to be the registrant for each disputed domain name if it holds itself out as such in WhoIs and profits from the masking, for privacy reasons, of the true identity of each registrant, if there is such a registrant behind Above.com.
After Above.com informed the Center that each of the identified disputed domain names was registered to one of two companies, Complainant amended the Complaint. Those two entities are Shu Lin Enterprises Limited, of China, and Transure Enterprises Ltd., of the British Virgin Islands. Complainant argued that these two registrants are, in fact, the same entity. The basis of this allegation, according to Complainant, is that two recent panels found the companies to be identical (see Telefonaktiebolaget L M Ericsson (Ericsson) v. Above.com Domain Privacy/Transure Enterprise Ltd./ Shu Lin, Shu Lin Enterprises Limited, WIPO Case No. D2010-0566 and LEGO Juris A/S v. Shu Lin/Transure Enterprise Ltd/ Above.com Domain Privacy, WIPO Case No. D2010-1648).
Complainant then alleges that the majority of the thirty-five domain names subject to this proceeding constitute what is referred to as “typo-squatting domains.” Such domains, it is argued, are confusingly similar to Complainant’s marks XENICAL and TAMIFLU due to the fact that the only difference between each such domain name and the corresponding mark is a misspelled version of the mark. The remainder of the subject domain names, states Complainant, is confusingly similar to Complainant’s marks because each incorporates one of Complainant’s marks in whole and simply adds a generic term.
Complainant continues by allegedly demonstrating that respondent has no rights or legitimate interests in respect to any of the disputed domain names. Complainant asserts that it has exclusive rights to each mark and has not licensed or authorized any third party to use any of the marks. Complainant states, “there is no reason why the Respondent (sic) should have any right or interest in such domain names.”
Complainant argues that the disputed domain names were registered and are being used in bad faith for several reasons. First, the registration of each disputed domain name post-dates the trademark registration and use of the marks by many years. The marks are well-known and even famous. Complainant presents evidence that each of the domain names link to a directory of third-party websites. Complainant argues that the directory and the websites linked through the directory create a likelihood of confusion with Complainant’s well-known marks as to the source, affiliation, and endorsement of Respondents’ websites and the products listed and sold on each such website. Complainant alleges that it is likely Respondents are benefitting commercially from this confusion and linking system.
As a result of the above, Complainant requests that each disputed domain name be transferred to Complainant.
Respondent did not reply to 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, 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. Further, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate.”
The Panel proceeds to each of these elements below.
Before proceeding with the requisite analysis identified above, the Panel must, however, determine whether it is appropriate that this case remain consolidated as one proceeding brought against a single Respondent. The Panel is informed by the findings and discussion in the decision of the panel in Rapidshare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987) and RapidShare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev; (Protected Domain Services Customer ID: DSR-2239262), WIPO Case No. D2010-0894 (hereinafter “RapidShare”).
In RapidShare, the Panel noted that ICANN, in a March 2009 study, found that privacy services or proxy services such as Above.com now register approximately 25% of all domain names. The panel in RapidShare also issued a decision in Four Seasons Hotels Limited v. Internet bs Corporation/Private Whois Service, WIPO Case No. D2009-1657, and in that decision stated that the issues with privacy services are complex and (sometimes) controversial. This is due to the fact that there is no express provision for such services in the Registration Accreditation Agreement (“RAA”) nor were such services contemplated or in existed when the UDRP was drafted and adopted.
The panel in RapidShare noted that it is now the practice of the Center to provide relevant information on alternative or additional potential respondents obtained from a registrar to complainant. As was the case in this matter, the Center then, and appropriately, subject to any determination that may be made by the duly appointed panel with regard to the issue, apparently, invites complainant to do one of the following:
1. Submit an amendment to the complaint, adding the names of both registrar-disclosed registrants as formal respondents and demonstrating that both registrants are, in fact, the same entity; or,
2. submit a separate statement providing any additional information as to why complainant believes the complaint should not name as respondents the registrar-disclosed underlying registrants; or,
3. file a separate complaint concerning one of the above groups of domain names, and file a short amendment to drop said separately-filed domain names from the current complaint.
Where, as in this matter, Complainant opts to amend adding additional Respondents and asserting they are the same entity, the Panel must determine whether there is, in fact, sufficient evidence to find that Respondents are the same party. This is so because paragraph 3(c) of the Rules states that, “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” The panel in RapidShare found that the Policy and the Rules only require a complainant to name the Registrant as listed in WhoIs as of the date the matter becomes pending. Nevertheless, issues related to proving the elements of the Policy necessary for a transfer may require a complainant to add additionally identified parties and to argue that those parties are a single entity necessary for the matter to remain consolidated as a single matter.
The Panel notes that at least one disputed domain name registered to Transure Enterprises Ltd. and one disputed domain name registered to Shu Lin Enterprises Limited resolved to identical IP addresses as of November 25, 2010. It is also informative that in Telefonaktiebolaget L M Ericsson (Ericsson) v. Above.com Domain Privacy / Transure Enterprises Ltd./ Shu Lin, Shu Lin Enterprises Limited, WIPO Case No. D2010-0566 that Shu Lin Enterprises Limited and Transure Enterprises Ltd. were found to be the same entity. Finally, the disputed domain names in this matter registered to Shu Lin Enterprises Limited and those registered to Transure Enterprises Ltd. all link to similar directory websites.
The Panel finds that Shu Lin Enterprises Limited and Transure Enterprises Ltd. are the same entity under common control sufficient for this matter to proceed as a single proceeding.
The Panel finds that twenty five of the domain names in this matter do indeed constitute what is referred to as “typo-squatting.” The panel in Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043, stated the widely accepted view of this practice.
The practice of “typosquatting” has been consistently regarded in previous UDRP decisions as creating domain names confusingly similar to the relevant mark. ACCOR v. Brigit Klostermann, WIPO Case No. D2005-0627 (finding that “typosquatting”, the practice of misspelling an element of the mark, has consistently been regarded as creating domain names confusingly similar to the relevant mark); Sharman License Holdings, Limited v. IcedIt.com, WIPO Decision No. D2004-0713 (finding the circumstances of “typosquatting” to constitute confusing similarity); Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994 (finding that disputed domain names are confusingly similar to the marks which they misspell).
The domain names that are slight misspellings of Complainant’s marks are:
The Panel finds that each of the above identified disputed domain names is confusing similar to one of Complainant’s marks.
The other ten disputed domain names incorporate one of Complainant’s marks in its entirety and then add a generic term to that mark. The panel in Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923, stated the accepted principal that the addition of a generic term to a mark does not avoid confusing similarity between the mark and the domain name. The panel listed a long line of authority.
“Numerous [UDRP] Panel decisions have established that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain names are 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.’ J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998). See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004 (citing Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F. 3d 489, 497-98 (2d. Cir. 2000)). The addition of a generic word to a trademark will not generally avoid a determination that the contested domain name is confusingly similar. ‘The fact that a domain name wholly incorporates a complainant's trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks.’ Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Here the addition of a generic term does not serve to distinguish the domain name from the trademark, but may reinforce the association of the [c]omplainant’s trademark with the domain name. Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet Ltd.,WIPO Case No. D2000-0275; Société Air France v. RBlue, WIPO Case No. D2005-0290.”
The domain names in this matter that consist of one of Complainant’s marks and a generic term or terms are:
The Panel finds that each of the above identified disputed domain names is confusing similar to one of Complainant’s marks.
Complainant has satisfied paragraph 4(a)(i) of the Policy.
The Panel is satisfied that Complainant has made out a prima facie case that Respondents lack rights or legitimate interests in the disputed domain names. Once such a prima facie case is made, Respondents carry the burden of demonstrating a right or legitimate interest in a disputed domain name. By matter of default, Respondents have failed to do so, and Complainant is deemed 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 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 respondent’s documented out of pocket costs directly related to the domain name; or
ii. 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 respondent has engaged in a pattern of such conduct; or
iii. Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. By using the domain name, 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 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 the registration of each disputed domain name post-dates the trademark registrations of the corresponding Complainant trademark by many years. There is no doubt that Respondents knew of and intentionally registered existing marks as misspelled domain names or domain names with generic words added. The Panel finds that Respondents are using the disputed domain names to attract online consumers interested in Complainant’s products to a directory and further websites and that such online consumers would plausibly assume that Respondents’ website or websites belongs to or is endorsed by Complainant. Respondents are misleading consumers and confusing them so as to lead them to Respondents’ website or websites where competing products may be sold. Respondent is improperly benefiting from Complainant’s marks. This indicates Respondents’ bad faith in the registration and use of the disputed domain names. 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 trademarks are evidence of bad faith under paragraph 4(b)(iv) of the Policy. See e.g. Edmunds.com 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 websites. This creates a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of Respondents’ websites or of the products or services posted on or linked to Respondents’ websites.
The Panel considers, based on all the above elements, that Complainant has established the bad faith of Respondents 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 names (as listed in paragraph 2 above) be transferred to Complainant.
Dated: January 19, 2011
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