The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internal representative.
The Respondent is Domain Admin/xcite, Monster, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <xenical.cc> is registered with EstDomains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2007. On July 12, 2007, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain name at issue. On July 17, 2007, EstDomains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. EstDomain, Inc. further specified in its response that the domain name holder did not submit in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for adjudication of disputes concerning or arising from the use of the domain name. As a consequence, on July 19, 2007, the Center notified the Complainant of the need to submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts at the location of the domain name holder’s address, as specified in Rules, paragraph 1 and 3 (b)(xiii). On July 24, 2007, the Complainant amended the Complaint in order to reflect the change of the applicable jurisdiction. 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”), 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 July 25, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2007.
The Center appointed Angelica Lodigiani as the sole panelist in this matter on August 24, 2007. 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, along 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. The Complainant’s mark XENICAL is registered in a multitude of countries worldwide. Among these are international registrations No. 612 908 and No. 699 154 (Annex 3), claiming a priority date of August 5, 1993.
XENICAL is used to designate an oral prescription weight loss medication helping obese people to lose weight and keep this weight off.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the domain name <xenical.cc> is identical to the Complainant’s trademark XENICAL, which is earlier than the domain name registration and is registered in over a hundred countries on a worldwide basis.
The Complainant further contends that the Respondent has no rights or legitimate interests in the <xenical.cc> domain name because:
– The Complainant has exclusive rights over the XENICAL trademark, as mentioned above and no licence/permission/authorization respectively was ever granted to use XENICAL in the disputed domain name. Therefore the domain name in question clearly alludes to the Complainant;
– The Respondent’s website is a pharmacy on-line offering XENICAL. 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”. Moreover, according to Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy,
WIPO Case No. D2003-0793, “a reseller does not have the right to incorporate the trademark of the resold goods into the domain name of the reseller”.
Due to the above, there is no reason why the Respondent should have any right or legitimate interests in the <xenical.cc> domain name.
Finally, the Complainant contends that the domain name <xenical.cc> was registered and is being used in bad faith because:
– At the time of the registration, i.e., on June 22, 2007, the Respondent had, no doubt, knowledge of the Complainant’s product/mark XENICAL. When viewing the Respondent’s website one realizes that the Respondent is intentionally attempting (for commercial gain) to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark, which has a good reputation among doctors, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products or services posted on or linked to the Respondent’s website. According to the above-mentioned Pfizer Inc. v. jg a/k/a Josh Green,
WIPO Case No. D2004-0784, bad faith is established when “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy”.
According to the Complainant, the domain name <xenical.cc> misleadingly includes the Complainant’s mark in spite of no authorization being granted to the Respondent. The use of the disputed domain name, especially by using the same logo as on the Complainant’s official xenical website (“www.xenical.com”), is potentially harmful to the health of Internet users, who purchase XENICAL products under the mistaken impression that they are dealing with the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements in order to succeed in a UDRP proceeding: (i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the domain name <xenical.cc> is identical to the Complainant’s trademark XENICAL. Only the second level domain name “xenical” is to be taken into account in the comparison with the Complainant’s trademark XENICAL. The top level domain name “.cc” does not bear any relevance as it is a compulsory element of each domain name and does not have any source-indicating significance (Hoffmann-La Roche Inc. v. UrProxy Domains,
WIPO Case No. D2007-0456).
Therefore the Panel concludes that the first element under paragraph 4(a)(i) of the Policy is satisfied by the Complainant.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Proving a negative fact is a difficult task which is why previous panels have recognized that once a Complainant has made a prima facie showing that a Respondent lacks rights or legitimate interests, the onus of proof passes to the Respondent to rebut that case. The Policy, under paragraph 4(c), indicates a series of circumstances, which, if proved, demonstrate that the Respondent has rights or legitimate interests in the challenged domain names. The Respondent did not file any Response in this case. Accordingly, the Panel will consider whether the Complainant’s arguments are prima facie sufficient to show the Respondent’s lack of rights and legitimate interests in the disputed domain name.
The disputed domain name incorporates the Complainant’s XENICAL trademark in its entirety without any attempt at differentiation.
According to the Complainant, the Respondent is not a Complainant’s licensee, nor the Complainant ever authorized the Respondent to use the trademark XENICAL in the disputed domain name.
As it appears from Annex 6 to the Complaint, the Respondent is using the domain name at issue to lead Internet users to a website consisting of an on-line pharmacy. Within the powers granted to the Panel under the Policy, the Panel has ascertained that the disputed domain name still lead to the aforementioned website
The Panel agrees with the contents of the decisions cited in the Complaint, according to which “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” (Pfizer Inc. v. jg a/k/a Josh Green,
WIPO Case No. D2004-0784), and “a reseller does not have the right to incorporate the trademark of the resold goods into the domain name of the reseller” (Hoffmann-La Roche Inc.v.#1 Viagra Propecia Xenical & More Online Pharmacy,
WIPO Case No. D2003-0793).
In the light of the foregoing and absent any Respondent’s contrary argument, the Panel concludes that of itself the Respondent’s use of the disputed domain name does not result in the Respondent having a right or legitimate interest in the disputed domain name, nor does it answer the Complainant’s prima facie showing that the Respondent lacks same.
For all the reasons mentioned above, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name <xenical.cc>.
In consideration of the foregoing, the Panel is satisfied that the element under paragraph 4(a)(ii) of the Policy is met by the Complainant.
C. Registered and Used in Bad Faith
The last element that the Policy requires is provided under paragraph 4(a)(iii): i.e., that the domain name <xenical.cc> has been registered and is being used in bad faith.
In the Panel’s view, the Complainant satisfactorily proved that the domain name <xenical.cc> was registered and is being used in bad faith.
As far as registration in bad faith is concerned, absent any Respondent’s contrary statement, the Panel takes the view that the Respondent knew or must have known the trademark XENICAL and the Complainant’s activity at the time of the registration of the disputed domain name. The Respondent’s apparent unauthorized use of the disputed domain name in connection with an on-line offering for sale of the XENICAL product, is also an indication of the Respondent’s knowledge of the Complainant’s product and trademark.
Therefore, the Panel concludes in the circumstances that the Respondent registered the domain name <xenical.cc> in bad faith.
As far as use in bad faith is concerned, the Respondent is using <xenical.cc> to lead to a website apparently selling XENICAL goods. According to the Complainant, the Respondent is not a Complainant’s licensee or authorized dealer. Nor did the Complainant ever authorized the Respondent to use the Complainant’s trademark as part of a domain name. The Respondent did not rebut said allegations as it did not file a Response. Therefore, the Panel takes the view that the Complainant’s statements are correct.
Unauthorized use of a third party’s trademark as part of a domain name leading to a website offering for sale the goods identified by said trademark should in appropriate circumstances be considered a use in bad faith (See also Pfizer Inc. v. jg a/k/a Josh Green,
WIPO Case No. D2004-0784).
According to the Complainant, “the use of the domain, especially by using the same logo as on the official XENICAL website owned by the Complainant, is potentially harmful to the health of Internet users, who purchase XENICAL products under the mistaken impression that they are dealing with the Complainant”. Absent any further clarification, the Panel does not understand why the use of the domain name as described above should be “potentially harmful to the health of the Internet users” as the Complainant states. Nevertheless, according to the Panel, the reproduction of the Complainant’s trademark and logo on the website to which the disputed domain name conducts, increases the likelihood that Internet users would tend to believe that the Respondent’s website is sponsored, endorsed or in any other way linked to the Complainant.
In the Panel’s view, the use of the domain name <xenical.cc> as described above constitutes evidence of the fact that the Respondent at the least registered and used the domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website, 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 of a product or service on the Respondent’s website.
Due to the above considerations, the Panel concludes that the domain name <xenical.cc> is being used in bad faith. In the absence of any argument from the Respondent, the fact that following the challenge of the domain name registration the Respondent may have ceased any further use of the domain name, which no longer appears to lead to an active website, is a further element of the Respondent’s bad faith in the use of the domain name.
Therefore, the Panel finds that the Complainant satisfactorily proved also 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 <xenical.cc> be transferred to the Complainant.
Angelica Lodigiani
Sole Panelist
Dated: September 3, 2007
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