WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-LaRoche AG v. Martyn Witt
Case No. D2006-0139
1. The Parties
1.1 The Complainant is F. Hoffmann-LaRoche AG, Basel, Switzerland.
1.2 The Respondent is Martyn Witt, First Mortgage Trust, Bath, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
2.1 The disputed domain name <xenical-diet-combat.com> is registered with Schlund + Partner.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2006. On February 2, 2006, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain name at issue. On February 3, 2006, Schlund + Partner transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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”).
3.2 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 February 9, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2006.
3.3 The Center appointed Jay Simon as the sole Panelist in this matter on March 15, 2006. 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
4.1 Complainant is one of the world’s largest pharmaceutical companies active in the research, development and marketing of new drugs and diagnostic tools. Together with its affiliated companies (not parties to these proceedings) Complainant operates internationally in over 100 countries.
4.2 Complainant has registered the trademark XENICAL in many countries, exemplary of which is International Registrations No. 612908 and 699154, alleging a priority use date of December 14, 1993. The mark covers a weight loss medication for counteracting obesity.
4.3 The disputed domain name was registered January 9, 2005.
4.4 The disputed domain name resolves to an on-line pharmacy website offering a variety of medications.
4.5 Respondent elected not to respond to the Complaint and was notified of its default on March 6, 2006.
5. The Parties Contentions
5.1 Complainant contends that the disputed domain name is confusingly similar to the mark in which Complainant has rights, the disputed domain name incorporating the entirety of the mark. Complainant further contends that the words “diet” and “combat” are not sufficient to distinguish the disputed domain name from Complainant’s mark.
5.2 Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name and that Complainant has neither licensed, permitted, authorized, or consented to Respondent’s use of the registered mark.
5.3 Complainant further contends that the on-line pharmacy site to which the disputed domain name resolves offers various other drugs that compete with Complainant’s XENICAL product.
5.4 Complainant further contends that a reseller does not have the right to incorporate the trademark of the resold goods into the domain name of the reseller, that no legitimate interest can be found for a domain name that is similar to a pharmaceutical manufacturer’s mark that is being used to direct consumer’s to an on-line pharmacy, and that good faith cannot be assumed when the disputed domain name is confusingly similar to Complainant’s mark and is being used to promote and sell competing products.
5.5 Complainant contends that registration and use of the disputed domain name is in bad faith, the Respondent having had knowledge of Complainant’s mark. Complainant further contends that the disputed domain name is being used in a manner that satisfies paragraph 4(b)(iv) of the Policy.
5.6 Complainant requests that the disputed domain name be transferred to Complainant.
5.7 Respondent has not responded to the Complaint, is in default, and has not otherwise entirely participated in these proceedings.
6. Discussion and Findings
6.1 The Policy, as affected by the Rules and the Supplemental Rules, provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (Complainant) proves each of the following elements:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(b) the registrant (Respondent) has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
6.2 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element in paragraph 6.1.
6.3 Respondent, having failed to respond in these proceedings, is in default, and in accordance with paragraphs 14(b) of the Rules, “the panel shall draw such inferences…as it considers appropriate”.
A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)
6.4 The disputed domain name differs from Complainant’s trademark by the addition of the words “diet” and “combat”, as well as having the “.com” suffix. The additional words are common terms and do not act to distinguish the disputed domain name from Complainant’s mark. See F. Hoffmann-LaRoche AG v. Pintree Development, Ltd., WIPO Case No. D2006-0049. Further, the disputed domain name incorporates the entirety of Complainant’s trademark leading to the presumption that the disputed domain name is confusingly similar to Complainant’s mark. See EAuto LLC v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Thus, this Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)
6.5 Paragraph 4(c) of the Policy lists three, non-exclusive methods for determining whether a respondent has rights or legitimate interests in a disputed domain.
6.6 In respect of demonstrating a respondent’s lack of rights or legitimate interests in a disputed domain name, the burden of proof rests with Complainant. However, where Complainant having made the necessary assertions and providing evidence, it is incumbent upon Respondent to come forward with evidence of its rights or legitimate interests in the disputed domain name, Respondent being uniquely possessed of this evidence, if such evidence exists. Respondent has failed to present any evidence of its rights or legitimate interests in the disputed domain name, and such failure is tantamount to admitting the truth of Complainant’s assertions. See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.
6.7 Of the factors listed in paragraph 4(c) of the Policy, Respondent having failed to respond to the Complaint, there is no evidence that Respondent was commonly known by the disputed domain name. Indeed, Respondent’s registration of the disputed domain name is well after Complainant’s registration of its trademark.
6.8 Nor is there any evidence of fair use or non-commercial use of the disputed domain name. To the contrary, Respondent is clearly profiting from the use of the disputed domain name by directing internet users to its site under the false impression that the site is in some way authorized by Complainant.
6.9 Respondent is a reseller of Complainant’s products, and it is well-settled that, except for specific circumstances not present in these proceedings, resellers do not have the right to incorporate Complainant’s mark into a domain name nor does the reseller acquire rights by doing so. See F. Hoffmann-LaRoche Inc. v. #1 Viagra Propecia Xenical & More On-Line Pharmacy, WIPO Case No. D2003-0793. Thus, this Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy)
6.10 Paragraph 4(b) of the Policy indicates several, non-exclusive methods for showing bad faith registration and use of a disputed domain name.
6.11 The disputed domain name resolves to an on-line pharmacy where various pharmaceuticals are sold – some of which compete with Complainant’s XENICAL product. Complainant has not authorized, in any way, Respondent’s use of Complainant’s mark. Therefore, it is inescapable that Respondent is using the confusingly similar domain name in an attempt to attract, for Respondent’s commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s well- known mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Thus, paragraph 4(b)(iv) of the Policy is satisfied, and Respondent registered and is using the disputed domain name in bad faith. In essence this case is identical to the proceedings in F. Hoffmann-LaRoche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049 and the same result is dictated.
7.1 For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, this Panel orders that the domain name <xenical-diet-combat.com>be transferred to Complainant.
Dated: April 3, 2006