WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Nikolaj Brakoveckij

Case No. D2011-0791

1. The Parties

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

The Respondent is Nikolaj Brakoveckij, Kharkov, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <axenicalbuy.com> is registered with Center of Ukrainian Internet Names (UKRNAMES).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2011. On May 5, 2011, the Center transmitted by email to May 5, 2011 a request for registrar verification in connection with the disputed domain name. On May 10, 2011, Center of Ukrainian Internet Names (UKRNAMES). transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On May 17, 2011, the Center notified the Complainant that as the language of the registration agreement for the disputed domain name was Russian (as per information provided by the Registrar), the Complainant would need to either provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; submit the Complaint translated into Russian; or submit a request for English to be the language of the administrative proceedings. On May 17, 2011 the Complainant confirmed that a request had already been submitted for English to be the language of the proceedings in the Complaint (page 5, paragraph 8.1) providing the reasons for such request. The Respondent did not provide any comments in this regard.

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 May 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2011.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on July 13, 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 Complainant, together with its affiliated companies, is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and has global operations in more than 100 countries. The Complainant’s XENICAL trademark is registered in a multitude of countries worldwide. For example this includes international XENICAL trademark registrations nos. 612908 (dated December 14, 1993) and 699154 (dated July 28, 1998). Priority date for XENICAL trademark is August 5, 1993.

XENICAL trademark designates an oral prescription weight loss medication used to help people lose weight and keep the weight off. The Complainant holds XENICAL trademark registrations in over one hundred countries on a world-wide basis.

The disputed domain name <axenicalbuy.com> was created on March 30, 2011.

5. Parties’ Contentions

A. Complainant

(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights:

- The disputed domain name is confusingly similar to the Complainant’s XENICAL trademark as it incorporates the mark in its entirety. The addition of the letter “a” and of the generic term “buy” does not sufficiently distinguish the disputed domain name from the trademark of the Complainant.

- The Complainant’s use and registration of the XENICAL trademark predates the Respondent’s registration of the disputed domain name.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name:

- The Complainant has exclusive rights to XENICAL trademark and has not granted any license, permission or authorization to the Respondent. Furthermore it is obvious that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s XENICAL trademark.

- Internet users are directed to an online pharmacy from the disputed domain name and according to Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, “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”.

- The disputed domain name also clearly alludes to the Complainant. So there is no reason why the Respondent should have and rights or legitimate interest in such domain name.

(c) The disputed domain name was registered and is being used in bad faith:

- The disputed domain name was registered in bad faith since the Respondent upon registration (March 30, 2011) undoubtedly knew of the Complainant’s well-known product and/or XENICAL trademark.

- The disputed domain name is being used in bad faith, which is obvious since when viewing the website associated with the disputed domain name one can realize that the Respondent has attempted to attract Internet users to the Respondent’s websites by creating likelihood of confusion with the Complainant’s well-known XENICAL trademark as to the source, affiliation and endorsement of the Respondent’s websites or of the products or services offered or linked to on the Respondent’s website. According to Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, bad faith is established when the “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy”.

- Furthermore, similar to F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049, “the website resolving to the domain name at issue has been used to provide an online pharmacy which offers (…) as well as various other drugs which directly compete with the Complainant. The use of the disputed domain name thus appears to be an attempt to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark. This is evidence of bad faith registration and use pursuant to the Policy, paragraph 4(b)”.

- The Respondent by using the disputed domain name is intentionally misleading the consumers and confusing them by making them believe that the websites behind the disputed domain name are associated or recommended by the Complainant. As a result the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the XENICAL trademark of the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceedings

The language of the registration agreement associated with the disputed domain name is Russian. The Complainant has provided a request for the administrative proceedings to be conducted in English. The Respondent has not responded in any way to the Complaint.

In the Complaint the Complainant requests for English to be the language of the administrative proceedings. This is based on the fact that the website associated with the disputed domain name is completely in English and that the Respondent involved is capable of communicating in English.

The Panel notes the request for English to be the language of the administrative proceedings in the Complaint. The Panel further notes that the Respondent has not filed any Response to the Complaint although duly notified in both languages.

The Panel finds that English should be the language of the administrative proceedings. The Panel finds that the Respondent being properly notified about the proceedings was given an opportunity to present his position on the matter of the language of the administrative proceedings; however, the Respondent has not communicated any response. Taking into account that the Respondent did not file any Response, that the Complaint was originally submitted in English, requesting for English to be the language of the administrative proceedings, and that there is evidence that the website associated with the disputed domain name is in English, the Panel finds it appropriate to conduct these proceedings in English in order to minimize any possible costs associated with the proceedings and to ensure that the proceedings are conducted in an efficient and timely manner.

B. Identical or Confusingly Similar

The Complainant has registered the XENICAL trademark in a number of jurisdictions. The Complainant submits that the disputed domain name is confusingly similar to their trademark as the disputed domain name incorporates the XENICAL trademark in its entirety. As the word “xenical” has no meaning in the English language, the Panel finds the Complainant’s XENICAL trademark to be highly distinctive.

In relation to the incorporation in the disputed domain name of generic words “a” and “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 elements “a” and “buy” in the disputed domain name does not avoid a finding of confusing similarity in this case. Indeed, the inclusion of the term “buy” 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 a website that is offering the ability to purchase drugs, including XENICAL amongst others.

It is clear in the Panel’s view that in the mind of an Internet user, the disputed domain name could be directly associated with the Complainant’s trademark, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (see AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327).

In any event the Panel finds that due to incorporation of a merely generic and descriptive words “a” and “buy” the disputed domain name <axenicalbuy.com> to be confusingly similar to the Complainant’s trademark XENICAL.

The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.

Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant’s assertions, the Panel will need to consider whether the Respondent’s use of the disputed domain name would indicate the Respondent’s rights or legitimate interests in the domain name.

According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:

(i) respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) 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 complainant’s marks.

A respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy.

By not responding to the Complainant’s contentions, the Respondent in these proceedings has not attempted to demonstrate its rights and legitimate interests.

The Panel further notes that, there is no evidence that before any notice of the dispute with the Complainant, the Respondent was using the disputed domain name for a bona fide offering of goods and services.

According to the documents submitted by the Complainant the disputed domain name links to a website that is in the business of offering for sale various medicines, including those that are sold under the XENICAL trademark. It is unclear to the Panel whether the Complainant duly authorized these products for sale in such fashion or whether they are counterfeit and/or imitations of the Complainant’s product sold under the XENICAL trademark, however this is beyond the scope of deliberations of the Panel.

The current use of the dispute domain name, in the Panel’s view, cannot constitute a bona fide offering of goods and services in the circumstances of this case, so there is no evidence that the Respondent is able to show rights or legitimate interests in respect of the disputed domain name under paragraph 4(c)(i) of the Policy.

As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain name.

The Panel recalls that the Respondent registered the disputed domain name on March 30, 2011. The Complainant asserts that the product under the XENICAL trademark has been registered and in use since 1993 and that the product is widely known by the XENICAL trademark, which is recognized across the world and is registered in various jurisdictions.

Therefore as the disputed domain name has been registered more than 8 years after the registration of the Complainant’s XENICAL trademark, it is highly unlikely that the Respondent has been commonly known by the disputed domain name as provided in paragraph 4(c)(ii) of the Policy.

It is the Panel’s view, on the present facts, that the Respondent most likely registered the disputed domain name with full awareness of the Complainant’s trademark as well as the goodwill associated with it.

There is further evidence that the Respondent is possibly making commercial use from the disputed domain name (by linking another website that offer medicines for sale). The Respondent is using the disputed domain name to further misleadingly divert customers to other websites that are not associated with the Complainant. Therefore paragraph 4(c)(iii) of the Policy does not apply.

The Panel finds the Complainant has carried out its burden of proof to show that the Respondent has no rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a 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 the Complainants who is the owner of the trademark or service mark or to a competitor of the Complainants, for valuable consideration in excess of its 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 Complainants’ mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.

The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain name is used in connection with selling of other medicines via a website, including those that are direct competitors to the product of the Complainant associated with the XENICAL trademark, XENICAL products, as well as the other medical products. The Complainant further contends that the disputed domain name was registered and used primarily for the purpose of confusing and misleading the public as to the affiliation of the disputed domain name as well as associated websites with the trademark of the Complainant.

The Panel finds that the Respondent's use of the disputed domain name has created a risk of confusion with the Complainant’s product and trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name and websites associated with it.

The Panel finds that the Complainant has presented evidence that the Respondent was and is in violation of the provisions of paragraph 4(b)(iv) of the Policy in respect of the disputed domain name.

The Panel holds that the Respondent has registered the disputed domain name in bad faith. In the circumstances, the Respondent must have known about the Complainant’s products and should have been aware of the trademark of the Complainant. The Panel is not aware of the Respondent conducting any legitimate business activity using the disputed domain name. These findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain name, lead the Panel to conclude that the disputed domain name was registered by the Respondent in bad faith.

The Panel also draws inferences of bad faith from the lack of any response from the Respondent to the Complaint.

The Panel finds the Complainant has shown that the Respondent registered and used the disputed domain name in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <axenicalbuy.com> be transferred to the Complainant.

Irina V. Savelieva
Sole Panelist
Dated: July 26, 2011