WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Pavlishin Mihail, NA

Case No. D2010-2232

1. The Parties

The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented by F. Hoffmann-La Roche AG, Switzerland.

The Respondent is Pavlishin Mihail, N/A of Stebnik, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <buyxenicalonline.biz> is registered with UK2 Group Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2010. On December 21, 2010, the Center transmitted by email to UK2 Group Ltd. a request for registrar verification in connection with the disputed domain name. On December 22, 2010, UK2 Group Ltd. 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 the Respondent of the Complaint, and the proceedings commenced on December 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 21, 2011

The Center appointed Selma Ünlü as the sole panelist in this matter on February 1, 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.

4. Factual Background

The facts stated in the Complaint are as follows:

(1) The Complainant F. Hoffmann-La Roche AG, with its affiliated companies, is one of the world’s leading research focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries.

(2) The Complainant is the owner of International Registration No. 612908 for the trademark XENICAL in connection with an oral prescription weight loss medication, with a priority date of August 5, 1993. The Complainant is also the owner of International Registration No. 699154 for the XENICAL device mark, with a priority date of April 21, 1998.

(3) XENICAL trademark is used on the oral prescription weight loss medication used to help obese people lose weight and keep this weight off.

Panel’s observation of the case file reveals the following:

(1) The disputed domain name was registered on April 13, 2010.

(2) The Respondent is an individual residing in Ukraine.

(3) The Respondent has registered similar domain names in the past, namely <buyxenical.biz>, <xenicalnoprescription.biz>, and <xenicalwithoutprescription.biz> which were previously subject of a UDRP decision, F. Hoffmann-La Roche AG v. Pavlishin Mihail, WIPO Case No. D2010-0799.

(4) Since the Respondent sells the products via the disputed domain name, it is highly improbable that the Respondent is unaware of this trademark.

5. Parties’ Contentions

A. Complainant

The Complainant requests the Panel to issue a decision transferring the disputed domain name to the Complainant on the following grounds:

(i) The disputed domain name is confusingly similar to the trademarks/service marks in which the Complainant has rights;

(ii) The 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 in bad faith.

The Complainant alleges that the disputed domain name is confusingly similar with its registered trademarks XENICAL and XENICAL device, as it incorporates the Complainant’s marks in its entirety. The Complainant further states that the addition of the generic terms “buy” and “online” does not sufficiently distinguish the disputed domain name from the Complianant’s trademark, referring to the decision; Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694, stating that “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”.

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Respondent does not have registered rights for the “xenical” term. Further, the Respondent is not a licensee of the Complainant and does not have the Complainant’s permission or authorization to use the XENICAL trademark of the Complainant. Additionally, the Complainant states that the Respondent is using the domain name to direct Internet users to sites which are offering /selling the Complainant’s products. The Complainant further states that the only reason of the Respondent in registering and using the disputed domain name is to benefit from the reputation of the trademark XENICAL and illegitimately trade on its fame for commercial gain and profit. The Complainant refers to the decision Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 which declares that “several cases have found that a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and that is being used to direct consumers to an on-line pharmacy”.

To prove that the Respondent acts in bad faith, the Complainant alleges that:

(1) The Respondent had knowledge of the XENICAL trademark at the time of the registration of the disputed domain name;

(2) The Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondents websites, by creating likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of the Respondent’s website or of the products or services posted on or linked to the Respondent’s website and refers to the above mentioned decision which clearly accepted that the bad faith is established when “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy.”;

(3) The Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them so as to attract them to other websites making them believe that the websites behind those links are associated or recommended by the Complainant and refers to the decision of F. Hoffmann-La Roche AG v. Pavlishin Mihail, Supra which grants “it is evidence of bad faith that Respondent’s website use the XENICAL mark to attract Internet users to sites where Complainant’s products are offered for sale, without Complainant’s consent”.

(4) The Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the XENICAL mark fame.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) The disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all of these elements are fulfilled.

A. Identical or Confusingly Similar

The test for identical or confusing similarity under the Policy, paragraph 4(a)(i) is limited in scope to a direct comparison between a complainant’s trademark and the textual string which comprises the disputed domain name. In this case, the Complainant has demonstrated registered trademark rights in the mark XENICAL. The disputed domain name contains the XENICAL trademark with the descriptive words “buy” and “online”. The Complainant has successfully proven its earlier rights on XENICAL trademark. The Complainant has also proven that the Respondent uses the disputed domain name for the online sale services of the Complainant’s products. In this context there is no doubt that “online” word is not a distinctive word for a domain name which provides online services. Furthermore, the “buy” word has also no distinctiveness for a web site which provides sale services.

In a similar case (F. Hoffmann-La Roche AG v. Pavlishin Mihail, supra), one of the subject domain name of which is <buyxenical.biz>, the panel decided that:

“The disputed domain names <buyxenical.biz>, […] incorporate the entirety of the XENICAL mark. “Numerous ICANN 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. Furthermore, “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.” Lilly ICOS LLC v. John Hopking/Neo net Ltd., WIPO Case No. D2005-0694. Despite Respondent’s addition of the generic words and phrases “buy,” […] to the disputed domain name(s), Internet users drawn to Respondent’s website would reasonably expect to be dealing with the owner of the XENICAL mark, or an authorized seller of products under the XENICAL mark.”

Apart from the above mentioned decision which was issued also against the Repondent Pavlishin Mihail, there are many decisions setting forth that adding descriptive words does not remove the likelihood of confusion between a trademark and a domain name incorporating the said trademark;

Sanofi-Aventis v. Gideon Kimbrell,WIPO Case No. D2010-1559: “In relation to the incorporation in the disputed domain name of a generic word “buy”, the Panel finds that the inclusion of a generic element together with a trademark cannot contribute to distinguishing the disputed domain name from a registered trademark where such domain name incorporates a distinctive trademark. The Panel finds that the addition of the merely generic and descriptive element “buy” in the disputed domain name does not avoid a finding of confusing similarity in this case. Indeed, the inclusion of such terms in the disputed domain name may increase the risk of confusion for the Internet users taking into account that the Respondent is using the disputed domain name to link to websites that are offering medicines, including generic ones and those of the Complainant’s competitors.” ;

Hoffmann-La Roche Inc. v. Oleksandr Mandryk, Alex /Protected Domain Services - Customer ID: NCR-934539,WIPO Case No. D2010-1060: “The domain names <buyaccutane.biz> and <buytamiflu.biz> contain the ACCUTANE and TAMIFLU trademarks, thereby creating a similarity to these trademarks. The domain names of the Respondent consists of the trademarks of the Complainant ACCUTANE and TAMIFLU with the addition of the word “buy”. The word “buy” is a generic word merely describing the act of purchasing the goods sold by the Complainant under the trademark ACCUTANE and TAMIFLU. The mere addition of common terms such as “buy”, to a mark, does not change the overall impression of the designations as being domain names connected to the mark.”;

Turkcell Iletisim Hizmetleri A.S. v. Vural Kavak,WIPO Case No. D2010-0010: “The Panel finds that the addition of the generic word “mobile” does not distinguish the Respondent’s domain name from Complainant’s trademark (...). Furthermore the generic term, “mobile” is directly related to Complainant’s business and the addition of generic word is especially confusing where the generic words bear an obvious relationship to Complainant’s business. ”

Doğan Gazetecilik Anonim Şirketi v. Jason Statham, WIPO Case No. D2010-0164: “The disputed domain name comprises the word “posta” which is identical to the distinctive part of the Complainant’s trademarks. The additional word “gazetesi” used in the disputed domain name is, in the Turkish language, only a generic term and means “newspaper”. The Panel finds that simply adding a generic term like “gazetesi” does not ameliorate the likelihood of confusion and does not make the disputed domain name distinctive as compared to the Complainant’s trademarks. The Panel is even of the opinion that by using the additional word “gazetesi” in the disputed domain name, the likelihood of confusion with the Complainant’s trademarks is increased as the word “gazetesi” clearly refers to the goods and services protected by the Complainant’s trademarks.”

In the light of the above mentioned decisions the Panel concludes that although the disputed domain name includes additional words to the Complainant’s mark, the additional words are not sufficient to distinguish the domain name from the Complainant’s mark. On the contrary, the additional words enhance the finding of confusing similarity since the phrases describe the service provided by the Respondent.

The Panel therefore finds the Complainant has fulfilled the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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.”

The burden of proof rests with the Complainant who must demonstrate a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, then the Respondent may, by,inter alia, showing one of the above elements, prove rights or legitimate interests in the disputed domain name.

The Panel finds that the Complainant has proved rights in the XENICAL mark, the earliest of which dates back to 1993, and also sufficiently demonstrated the fact that the Respondent does not have rights or legitimate interests in the disputed domain name for the purpose of the Policy. The Complainant has not granted the Respondent any right or license to use the XENICAL marks.

The Panel also finds that the Respondent has not provided evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Thus, the Panel finds that the Respondent has failed to furnish evidence to show that it has rights or legitimate interests in the disputed domain name.

In this sense, based on the content of the case file, the Panel holds that the use of the XENICAL mark has not been authorized or licensed to the Respondent, the disputed domain name does not obviously correspond to the Respondent’s name or a trade name by which it has become commonly known and the Respondent cannot be regarded as using the disputed domain name in connection with a bona fide offering of goods or services.

Hence, as the rights or legitimate interests of the Respondent have not been duly proven inter alia under paragraph 4(c) of the Policy, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.

As mentioned above, in the case F. Hoffmann-La Roche AG v. Pavlishin Mihailsupra, the Respondent was also Pavlishin Mihail. The subject domain names of the said dispute were <buyxenical.biz>, <xenicalnoprescription.biz>, and <xenicalwithoutprescription.biz>. In the said dispute, the panel concluded that the domain names are confusingly similar to the complainant’s trademark, the respondent has no rights or legitimate interests to use the disputed domain names and the respondent acted in bad faith and finally decided to the transfer of the domain names to the complainant.

In light of the evidence submitted and the decision given by the panel of case F. Hoffmann-La Roche AG v. Pavlishin Mihail supra, the Panel is also of the opinion that the Respondent intentionally attempted to attract Internet users to its websites for commercial gain by benefitting from the Complainant’s reputation.

The Panel is therefore convinced that the disputed domain name has been registered and is being used in bad faith and that the Complainant has fulfilled the third element under paragraph 4(a)(iii) of the Policy.

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, <buyxenicalonline.biz> be transferred to the Complainant.

Selma Ünlü
Sole Panelist
Dated: February 10, 2011