WIPO Arbitration and Mediation Center
Hoffmann-La Roche Inc. v. Whois Privacy Protection Service Inc.
Case No. D2006-1030
1. The Parties
The Complainant is Hoffmann-La Roche Inc., New Jersey, United States of America, represented by Lathrop & Gage L.C., United States of America.
The Respondent is Whois Privacy Protection Service Inc., Bellevue, Washington , United States of America.
2. The Domain Name and Registrar
The disputed domain name <1-xenical.com> is registered with Gr8t Names.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2006. On August 15, 2006, the Center transmitted by email to Gr8t Names a request for registrar verification in connection with the domain name at issue. On August 22, 2006, Gr8t Names transmitted by email to the Center its verification response confirming that 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 14, 2006.
The Center appointed Steven Fox as the sole panelist in this matter on October 4, 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
Complainant is a corporation organized under the laws of the State of New Jersey.
Complainant filed for registration of XENICAL as a US trademark for a pharmaceutical preparation for weight reduction and long-term management of weight on August 2, 1993; and the application was granted on July 18, 1995 (Registration No. 1,906,281). Complainant began selling pharmaceutical products under the XENICAL mark on March 18, 1994. Complainant has obtained additional trademark registrations for XENICAL and terms incorporating “xenical”.
Complainant has had extensive sales of pharmaceutical preparations under the XENICAL mark; and, has widely advertised and marketed its XENICAL brand. Complainant’s corporate parent owns the domain name <xenical.com>, through which consumers may obtain information about XENICAL weight loss products.
5. Parties’ Contentions
Trademark / Service Mark
Complainant contends that its rights in the “xenical term” matured into trademark rights at least as early as August 2, 1993, the date it filed an application for registration on the Principal Register of the United States Patent and Trademark Office. That application was granted on July 18, 1995 (Registration No. 1,906,281). Complainant has used the mark in commerce continuously since.
Identical or Confusingly Similar
Complainant argues that the domain name is confusingly similar to its XENICAL mark because the disputed domain name incorporates all of Complainant’s mark.
Rights or Legitimate Interests
Complainant contends that Respondent is using the XENICAL mark in the domain name to divert consumers to Respondent’s website in order to generate sales on behalf of its affiliated online pharmacies which offer the XENICAL drug for sale. Complainant contends that it has not given Respondent permission, authorization, consent or license to use the mark.
Registered and Used in Bad Faith
Complainant argues that since XENICAL is well-known, Respondent’s intent in adopting the domain name must have been to trade upon Complainant’s reputation.
Complainant argues also that Respondent’s use of the disputed domain name to divert Internet users seeking Complainant’s web site “www.xenical.com” is further evidence of bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules states: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Since all parties are domiciled in the United States, the Panel will look to the principles of the law of the United States.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following elements: “(i) [the] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and, (ii) [respondent has] no rights or legitimate interests in respect of the domain name; and (iii) [the] domain name has been registered and is being used in bad faith.”
A. Identical or Confusingly Similar
Complainant has satisfied the Panel that it owns trademark rights in the term “xenical”. The disputed domain name obviously contains the mark. Adding descriptive terms or other symbols does not alleviate confusion. This type of confusion is exactly the type that paragraph 4(a)(i) of the Policy is intended to prevent. Therefore, the domain name is confusingly similar to Complainant’s mark.
B. Rights or Legitimate Interests
Complainant’s mark is fanciful and widely known. Respondent must have been aware of Complainant’s mark when it registered the disputed domain name. Respondent has no prior business association with Complainant and yet has used Complainant’s mark in the disputed name to attract Internet users to Respondent’s website where it offers products competitive of Complainant’s trademarked product. Such use of the disputed domain name is not a fair use of Complainant’s mark. Respondent has offered no reasons why it believes it has a right to use, or interests in, the domain name. Respondent has offered no evidence that it has been commonly known by the disputed domain name.
Therefore, Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
The Panel finds that Respondent has used the disputed domain name for commercial gain by directing Internet users to a commercial website where Respondent offers goods that compete with Complainant. The Panel also finds that Internet users may mistakenly believe that the websites are affiliated with Complainant. Such use is in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
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 <1-xenical.com> be transferred to Complainant.
Dated: October 18, 2006