The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by Jérôme Rhein internally.
The Respondent is Nikolay Fedotov, Moskva, Russian Federation.
The disputed domain name <xenicalstore.com> (“Domain Name”) is registered with Center of Ukrainian Internet Names (UKRNAMES).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2011. On September 27, 2011, the Center transmitted by email to Center of Ukrainian Internet Names (UKRNAMES) a request for registrar verification in connection with the Domain Name. On October 3, 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 October 12, 2011 the Center notified the Complainant that as the language of the registration agreement for the 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 October 12, 2011 the Complainant confirmed that a request had already been submitted for English to be the language of the proceedings in the Complaint (pages 4 & 5; Clause 8.1 of the Complaint) 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 both in Russian and in English the Respondent of the Complaint, and the proceedings commenced on October 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2011.
The Center appointed Olga Zalomiy as the sole panelist in this matter on November 28, 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.
The Complainant is a pharmaceutical company domiciled in Switzerland.
The Respondent is the registrant of the Domain Name <xenicalstore.com>, registered on August 18, 2011. The Registrar is Center of Ukrainian Internet Names (UKRNAMES) that maintains its website in the Russian language. The language of the registration agreement is Russian.
The Domain Name <xenicalstore.com> had been used to direct users to an online pharmacy that sold XENICAL and other drugs. The content of the website was entirely in English. On August 26, 2011, the Complainant sent a cease and desist letter to the Respondent asking him to transfer the Domain Name to the Complainant. Shortly thereafter, the Respondent deactivated the website and currently, the Domain Name resolves to a website with an error message.
1. The Complainant contends that the Domain Name is confusingly similar to its trademark. In support of its claim, the Complainant submits that it is one of the world’s leading research-focused health care companies, and has operations in more than 100 countries. The Complainant states that its XENICAL mark is protected in many countries, and cites to the International registrations Nos. 612908 and 699154, with a priority date of August 5, 1993. The Complainant maintains that the XENICAL mark designates an oral prescription weight loss medication. The Complainant argues that the Domain Name is confusingly similar to the Complainant’s mark, because it incorporates the mark it its entirety, and because the addition of the generic term “store” does not sufficiently distinguish the Domain Name from the Complainant’s mark. Finally, the Complainant states that its use and registration of the XENICAL mark predates the date of the Domain Name registration.
2. The Complainant submits that the Respondent has no rights or legitimate interest in the Domain Name. The Complainant argues that it has exclusive rights in the XENICAL mark, and that there has never been any relationship between the Complainant and the Respondent that would give rise to a license, permission or consent to the Respondent’s use of XENICAL in the Domain Name. The Complainant further contends that the Respondent has used the Domain Name for commercial gain, and for the purpose of capitalizing on the fame of the Complainant’s mark. The Complainant maintains that the Domain Name alludes to the Complainant. Finally, the Complainant states that the Domain Name had been used to direct users to an online pharmacy, but that the Domain Name was deactivated and amended after the Complainant sent a cease and desist letter to the Respondent.
3. The Complainant argues that the Domain Name was registered and used in bad faith. The Complainant argues that the Domain name was registered in bad faith because, on the date of the registration of the Domain Name on August 18, 2011, the Respondent had knowledge of the Complainant’s well-known product /mark XENICAL. The Complainant submits that the Domain Name was used in bad faith because, by viewing the website to which the Domain Name used to direct, one realizes that the Respondent had intentionally attempted to attract views to the Respondent’s website by creating likelihood of confusion with the Complainant’s mark. The Complainant contends there is likelihood of confusion that the Complainant endorses the Respondent’s website, products or services. The Complainant submits that the bad faith is established because the Respondent used the Domain Name as a forwarding address to a for-profit online pharmacy. In the Complainant’s view, the fact that the website is now deactivated does not affect a finding of bad faith use of the Domain Name. Finally, the Complainant submits that by using the Domain Name, the Respondent intentionally misled consumers, and confused consumers by making them believe that Respondent’s website is associated with or recommended by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
The Panel finds English to be an appropriate language for this proceeding based on the Respondent’s apparent ability to understand the English language, and on the absence of any objection to English as the language of the proceeding.
Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. In adopting a language other than that of the registration agreement, the Panel must exercise discretion in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.1 In this case, the language of the registration agreement is Russian. There is no agreement between the parties as to the use of a different language in this proceeding. Under these circumstances, the language of the proceeding would typically be Russian. However, the Complainant submitted its complaint in English and requested that English be the language of the proceeding. The Respondent did not object to, or comment on, that request. The Panel, therefore, now must determine the appropriate language for this proceeding.
It is a consensus view of the WIPO panelists that “where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object and has not done so), and the complainant would be unfairly disadvantaged by being forced to translate,” the WIPO Center may accept the language of the complaint that is different from the language of the registration agreement subject to subsequent panel determination of the appropriate language of the proceeding.2 The Panel finds that none of the parties will be unfairly disadvantaged if the proceeding is conducted in English based on the Respondent’s apparent ability to understand the English language, and on the absence of any objection to English as the language of the proceeding.
The Complainant argues that there is evidence showing that the Respondent and the Registrar are both capable of corresponding in English because the Respondent’s website hosted under the Domain Name had been displayed in the English language. The Panel finds that the Complainant presented sufficient evidence to conclude that the Respondent will not be prejudiced if this proceeding is conducted in English. First, it appears that the Respondent understands English. The content of the Respondent’s website containing the online pharmacy was in English. Further, the Respondent deactivated his website shortly after receipt of the Complainant’s cease and desist letter which was also written in English. The Complainant submitted a printout from the Respondent’s website dated September 26, 2011 featuring a picture of a man wearing what appears to be a Russian military uniform who is holding his hand in a threatening gesture. The picture also contains the following wording: “Hi, Mr. Rhein.” Since the picture was published on the Respondent’s “www. xenicalstore.com” website after the Complainant’s attorney sent the cease and desist letter, and because it contains the name of the Complainant’s attorney, the picture appears to be Respondent’s response to the Complainant’s cease and desist letter. Moreover, the Center notified the Respondent about the Complaint and communicated all other case-related matters to the Respondent in both languages. Therefore, even if the Respondent was not proficient in English, he had a fair chance to learn about his right to object to the language of the proceeding, but failed to do so.
Taking into account the circumstances of this case and the objective of the UDRP to provide for a cost-effective mechanism, the Panel determines that English is an appropriate language for the proceeding.
According to Paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” In case of a respondent’s default, “the respondent’s default does not automatically result in a decision in favor of the complainant.”3 The complainant must establish “each of the three elements required by paragraph 4(a) of the UDRP.”4 Thus, to succeed on its claim, the Complainant must prove that: (1) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no "rights or legitimate interests in respect of the Domain Name"; and (3) the Domain Name “has been registered and is being used in bad faith.”5
“Although a panel may draw appropriate inferences from a respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.”6
To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark, in which a complainant has rights. Under paragraph 1.1 of the WIPO Overview, 2.0, if the complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights. Here, the Complainant has provided as evidence, a copy of an international trademark registration in the XENICAL mark showing that the Complainant has had rights in the XENICAL mark since December 14, 1993 (Registration Nos. 699154, and 612908 ). The Panel, therefore, finds that the Complainant has established its rights in the XENICAL mark.
The test for confusing similarity should be a comparison between the mark and the domain name, which involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.7 The Panel finds the XENICAL mark and the Domain Name to be confusingly similar because the Domain Name incorporates the Complainant’s trademark in its entirety.8 It is a consensus view among UDRP panelists that the addition of merely generic or descriptive wording to a complainant’s trademark, where the mark constitutes the dominant part of the domain name, is insufficient to avoid a finding of confusing similarity.9 In this case, the addition of the generic word “store” to the Complainant’s mark does not create a new or different mark, and is insufficient to avoid a finding of confusing similarity. It is also well established that the addition of the top-level domain suffix “.com” or its equivalent should be disregarded under the confusing similarity test, as it is a technical requirement of registration.10
Therefore, the Panel finds that the Complainant has proven that the Domain Name is confusingly similar to the XENICAL mark in which the Complainant,has rights and the first element of paragraph 4(a) of the UDRP has been satisfied.
To establish second element required by paragraph 4(a) of the UDRP, the “Complainant must show that the Respondent has no rights or legitimate interests in the Domain Name.11 “Panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent.”12 Therefore, to satisfy this requirement, the Complainant may make out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.13 If such prima facie case is not rebutted by the Respondent, the Complainant will be deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy provides an open list of circumstances which demonstrate rights or legitimate interests of a respondent in a domain name. The Complainant alleges that none of such circumstances exist here. The Panel finds that the Complainant presented a prima facie showing that the Respondent lacks any rights or legitimate interest in the Domain Names for three reasons. First, the Respondent did not use the Domain Name in connection with a bona fide offering of goods. Second, the Respondent used the Domain Name for commercial gain and to misleadingly divert consumers to its website. Third, it appears that the Respondent has not been commonly known by the Domain Name.
The evidence submitted by the Complainant shows that the Respondent used the Domain Name in connection with an online pharmacy, which sold XENICAL and other drugs. The submitted printouts of the Respondent’s website reveal no disclaimers concerning the relationship between the parties. The Respondent, however, neither is a licensee of the Complainant, nor has he obtained any authorization to use the Complainant’s trademarks or sell Complainant’s goods. Furthermore, the Respondent deactivated his website after Complainant sent him a cease and desist letter regarding his unlawful use of the Domain Name on August 26, 2011. The Respondent’s threatening graphic posted on “www.xenicalstore.com” in response to the Complainant’s cease and desist letter, confirms that the Respondent had no legitimate interests or rights in the Domain Name.
Therefore, the Panel finds that the Complainant established a prima facie case. Without contrary evidence from the Respondent, this Panel finds that the second element of the UDRP has been established.
The third element of paragraph 4(a) of the UDRP requires “a positive finding that both the registration and use were in bad faith.”14 Paragraph 4(b) of the UDRP provides an open list of the circumstances that “shall be evidence of the registration and use of a domain name in bad faith.” The Panel finds that circumstances present in this case correspond to those described in paragraph 4(b)(iv) of the UDRP. More specifically, the Panel finds that by using the Domain Name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's mark “as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel finds it is likely that the Respondent knew about the Complainant’s XENICAL mark and registered the <xenicalstore.com> Domain Name in bad faith. The Domain Name was registered eighteen years after the Complainant registered its XENICAL mark. During this time, the XENICAL mark apparently became widely known, because it is an object of so many bad faith domain name registrations.15 The fact that the Domain Name contains the Complainant’s mark and a generic word describing the nature of the Respondent’s activity are indicative of the Respondent’s knowledge of, and desire to, capitalize on the goodwill and reputation of the XENICAL drug. It is likely that an Internet user seeking to purchase the XENICAL drug would perceive words “xenical” and “store” in the Domain Name as an indication that the website used in connection with the Domain Name is affiliated with, or endorsed by, the Complainant. Therefore, the Panel finds that the Respondent registered the Domain Name in bad faith.
A submitted printout of the Respondent’s website dated November 28, 2011, shows that the Respondent is no longer using the Domain Name to attract users to the online pharmacy. The Respondent deactivated the website that he used under the Domain Name page. At the time of this decision, the Domain Name resolves to a page with an error message. However, pursuant to paragraph 3.2 of the WIPO Overview, 2.0, the lack of active use of a domain name does not as such prevent a finding of bad faith use. “Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding its registration.”16 Examples of such circumstances include “complainant having a well-known mark, no response to the complaint having being filed.”17
The Panel finds the same examples of bad-faith use in this case. First, the Complainant’s trademark has a strong reputation and is widely known. Second, the Respondent failed to respond to the Complaint. Third, the Respondent registered the Domain Name in bad faith. Fourth, the Respondent used to use the Domain Name in connection with an online pharmacy, which shows an attempt to attract, for commercial gain, Internet users to his website. Further, the Respondent’s threatening graphical response to the Complainant’s cease and desist letter is further evidence of the Respondent’s bad faith. Finally, it is possible that the Respondent may resurrect the online pharmacy at any time, if he has a chance. Therefore, the Panel finds a bad faith use of the Domain Name in this case.
Accordingly, the Panel concludes that the Domain Name was registered and is being used in bad faith, and that the Complainant has therefore established the third element of paragraph 4(a) of the UDRP.
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 <xenicalstore.com> be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Dated: December 7, 2011
1See, paragraphs 10(a) and 10(b) of the Rules; Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004. See also, Biotechnology and Biological Sciences Research Council v. Kim Jung Hak, WIPO Case No. D2009-1583.
2 See paragraph 4.3. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview, 2.0”).
3 See, Paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
4 Id.
5- SeeParagraph 4(a) of the UDRP.
6 See Paragraph 4.6 of WIPO Overview, 2.0.
7 See Paragraph 1.2 of WIPO Overview 2.0.
8 See,Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105.
9See, Paragraph 1.9 of the WIPO Overview, 2.0.
10See, Paragraph 1.2 of the WIPO Overview, 2.0.
11 Paragraph 4(a)(ii) of the Policy.
12Paragraph 2.1 of the WIPO Overview, 2.0.
13See, Paragraph 2.1 of the WIPO Overview, 2.0.
14 See Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
15 Currently, the database of WIPO panel decisions contains approximately 158 cases involving the XENICAL mark.
16 See Paragraph 3.2. of the WIPO Overview, 2.0.
17 Id.
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