WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche v. Register in hostingfreeweb.com
Case No. D2007-0391
1. The Parties
The Complainant is F. Hoffmann-La Roche, Basel, Switzerland, represented by F. Hoffmann-La Roche AG, Switzerland.
The Respondent is Register in hostingfreeweb.com, China.
2. The Domain Name and Registrar
The disputed domain name <it-xenical.info> is registered with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2007. On March 21, 2007, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name at issue. On March 22, 2007, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com 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”).
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 March 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 16, 2007.
The Center appointed Michael J. Spence as the sole panelist in this matter on April 20, 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 is the registered proprietor of the trademark XENICAL in more than one hundred countries. These registrations pre-date the Complainant’s use and registration of the disputed name. The mark is registered for use in relation to a weight loss medication. The Respondent’s website using the disputed name is a search engine with sponsored links.
5. Parties’ Contentions
The Complainant argues that the disputed name is confusingly similar to its mark as it contains the mark in its entirety. Moreover, it claims that the Respondent has no rights or legitimate interests in respect of the disputed name and that use of the name in relation to the Respondent’s search engine does not give rise to a legitimate interest and is in bad faith. This is because their use of the name appears to be for the purpose of advertising links to websites promoting the products and services of third parties, presumably for profit.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
There is no doubt that the disputed name is confusingly similar to the Complainant’s trademark, which it incorporates in its entirety. The addition of the word ‘it’ does nothing to distinguish the name from the trademark in this case, particularly because of the fanciful nature of the mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is for the Complainant to establish, at least prima facie that the Respondent has no rights or legitimate interests in the disputed names (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Moreover, the Respondent has been making use of the disputed domain name, which use may be argued to give rise to some legitimate interest.
Nevertheless, in this case the Complainant owns a widely known and fanciful trademark. It is not apparent that the Respondent has rights or legitimate interests in a domain name that incorporates this distinctive trademark. The Complainant rightly points to the Panel decision in Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo, WIPO Case No. D2004-0990, to establish that “the sole diversion of Internet traffic by Respondent to other, unrelated websites, does not represent a use of the Domain Name in connection with a bona fide offering of goods and services.” On this basis the Respondent’s use of the disputed domain name does not give rise to a legitimate interest.
The Panel therefore finds that the Complainant has, on balance, established the second element of paragraph 4(a) of the Policy in relation to the disputed domain name.
C. Registered and Used in Bad Faith
Finally, the Panel accepts the Complainant’s contention that the apparent purpose of the Respondent’s use of the disputed name is to divert traffic to its search engine and, though that engine, to the third party sites to which it is linked. Complainant rightly points to the Panel decision in L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi Inc., WIPO Case No. D2005-0623 to establish that “such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith.” Given the reputation and distinctiveness of the Complainant’s trademark, and noting also that the Respondent has made no apparent attempt to contact the Complainant or answer the Complaint, it is difficult to interpret the Complainant’s use of the disputed name other than as an attempt to profit by the deliberate diversion of Internet users.
The Panel therefore finds that the Complainant has, on balance, established the third element of paragraph 4(a) of the Policy in relation to the disputed domain name.
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, <it-xenical.info> be transferred to the Complainant.
Michael J. Spence
Dated: May 4, 2007