WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. James Dargan/Wang Zheng

Case No. D2013-1992

1. The Parties

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

The Respondent is James Dargan of London, United Kingdom of Great Britain and Northern Ireland (“UK”)/ and Wang Zheng of Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <xenical-without-prescription.com> is registered with ZhuHai NaiSiNiKe Information Technology Co Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2013. On November 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 27, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 28, 2013.

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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint and the amendment to the Complaint, and the proceedings commenced on December 3, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 23, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 24, 2013.

The Center appointed Brigitte Joppich as the sole panelist in this matter on January 6, 2014. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is together with its affiliated companies 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. One of the Complainant’s products is Xenical, which designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off.

The Complainant owns rights in the trademark XENICAL in more than a hundred countries worldwide, inter alia through International Registration No. 612908 XENICAL, registered on December 14, 1993, and International Registration No. 699154 XENICAL & Design, registered on July 28, 1998 (hereinafter referred to as the “XENICAL Marks”).

The disputed domain name was registered on November 3, 2013 and is being used in connection with an English website offering the Complainant’s products as well as products from the Complainant’s competitors for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.

(1) The Complainant states that the disputed domain name is confusingly similar to the XENICAL Marks as it incorporates these marks in their entirety and as the addition of the generic term “without prescription” and the two hyphens do not sufficiently distinguish the disputed domain name from the trademarks.

(2) The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name as the Complainant has exclusive rights in the XENICAL Marks, as no license, permission, or other authorization respectively consent to use the XENICAL Marks in the disputed domain name was granted to the Respondent, as the disputed domain name clearly alludes to the Complainant, as the Respondent is using the disputed domain name to direct Internet users to websites which are offering and selling the Complainant’s products and other competitive products, and as the Respondent’s only reason for registering and using the disputed domain name is to benefit from the reputation of the trademark XENICAL and to illegitimately trade on its fame for commercial gain and profit.

(3) The Complainant finally alleges that the disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant argues that the Respondent doubtlessly knew of the XENICAL Marks when registering the disputed domain name. Furthermore, the Complainant argues that the disputed domain name is also being used in bad faith as the Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s well-known trademark 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. The Complainant further contends that the registration and use of the disputed domain name represents “opportunistic bad faith” as the XENICAL Marks are well known.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; 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.

A. Identical or Confusingly Similar

The disputed domain name fully incorporates the well-established XENICAL Marks in which the Complainant has exclusive rights.

In the view of the Panel, the mere addition of the words “without prescription” and the two hyphens following the Complainant’s trademark does not hinder a finding of similarity between the XENICAL Marks and the disputed domain name, as the word “Xenical” at the beginning of the disputed domain name is the predominant part of the disputed domain name and as the additional generic words “without prescription” are just as insufficient to prevent a finding of confusing similarity as the two hyphens (cf. F. Hoffmann-La Roche AG v. Pavlishin Mihail, WIPO Case No. D2010-0799; Aventis Inc., Sanofi-Aventis Deutschland GmbH, Sanofi-aventis v. Brad Pittersones, WIPO Case No. D2008-1076Sanofi-Aventis v. Conciergebrain.com, NAF Claim No. 0606476; F. Hoffmann-La Roche AG v. Frederic Delstanche, WIPO Case No. D2009-1081.

Furthermore, it is well-established that the generic top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).

Therefore the Panel finds that the Complainant has satisfied the requirements of the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the disputed domain name will then shift to the respondent.

The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.

The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.

Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. In particular, the Respondent’s use is no bona fide use under the Policy. The Panel acknowledges that a reseller can make a bona fide offering of goods and services and thus have a legitimate interest in a domain name if the use fits certain requirements, including the actual offering of goods, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder (cf. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Mariah Boats, Inc. v. Shoreline Marina, LLC, NAF Claim No. 094392; Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095). Given that the Respondent did not sell the Complainant’s goods only, the Respondent’s use of the disputed domain name does not meet the criteria set out in Oki Data Americas, Inc. v. ASD, Inc., supra.

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(i) circumstances indicating that the respondent has registered or 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 that 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 website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the XENICAL Marks as the Respondent itself offers the Complainant’s XENICAL products for sale. Furthermore, the fact that the disputed domain name is a combination of the Complainant’s XENICAL Marks and the generic words “without prescription”, which are commonly used when offering medication, is additional clear evidence that the Respondent was targeting the XENICAL Marks. In the Panel’s view, it is simply inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant and its rights in the XENICAL Marks.

As to bad faith use, by fully incorporating the XENICAL Marks into the disputed domain name and by using such domain name in connection with a website offering inter alia the Complainant’s competitors’ products for sale, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy. The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith.

Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 disputed domain name <xenical-without-prescription.com> be transferred to the Complainant.

Brigitte Joppich
Sole Panelist
Date: January 13, 2014