WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. sysadmin admin, balata.com ltd
Case No. D2007-0785
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internal representative.
The Respondent is sysadmin admin, balata.com ltd, Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name <buy-xenical-online-x.biz> is registered with Gal Communications (CommuniGal) Ltd. d/b/a Galcomm.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2007. On June 1, 2007, the Center transmitted by email to Gal Communications (CommuniGal) Ltd. d/b/a Galcomm a request for registrar verification in connection with the domain name at issue. On June 15, 2007, Gal Communications (CommuniGal) Ltd. d/b/a Galcomm transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 June 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2007.
The Center appointed Ana María Pacón as the sole panelist in this matter on July 23, 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, together with its affiliate companies one of the world’s leading pharmaceutical company with operation in more than 100 countries. It has several trademark registrations for the trademark and product XENICAL, an oral prescription weight loss medication. As an example, reference is made to international registration No. 612908 & 699154, with priority August 5, 1993, for pharmaceutical products in class 5 of the International classification, covering over 30 countries (as evidenced by copies of the international registration certificate).
The contested domain name was registered on May 28, 2007.
5. Parties’ Contentions
The Complainant submits that the trademark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off.
The Complainant considers that the domain name <buy-xenical-online-x.biz> is confusingly similar to the XENICAL trademark. The addition of the descriptive words “buy” and “online” do not sufficiently distinguished the domain name from the Complainant’s trademark. In the Complainant’s view these words may suggest that the Respondent’s website is a location where a consumer may buy XENICAL products.
The Complainant asserts that it has no affiliation with the Respondent and has not authorized or licensed the Respondent to use the XENICAL trademark in connection with the sale of its product.
The Complainant alleges that the contested domain name was registered in bad faith since at the time of the registration of the disputed domain name, the Respondent had knowledge of the Complainant’s product and trademark XENICAL. The Complainant further alleges that the domain name <buy-xenical-online-x.biz> is being used in bad faith, due the use of the domain name linking to websites promoting and/or offering products and services of third parties. In addition, the Respondent is intentionally misleading consumers making them believe that the websites behind those links are associated or sponsored by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
A Complainant must establish two elements under paragraph 4(a)(i) of the Policy: i) the Complainant has rights in a trademark or a service mark, and ii) the disputed domain name is identical or confusingly similar to the mark in which the Complainant has rights.
The Complainant has provided sufficient evidence of its rights in the trademark XENICAL in several countries worldwide.
Generally, a user of a trademark may not avoid likely confusion by appropriating an other’s entire trademark and adding descriptive or non distinctive words to it. This will particularly be the case where the trademark is inherently distinctive and widely-known. (Lilly ICOS LLC v. John Hopking/Neo net Ltd., WIPO Case No. D2005-0694).
In the present case, the contested domain name <buy-xenical-online-x.biz> contain the trademark XENICAL in its entirety preceded by the term “buy” and succeeded by the descriptive term “online”. The term “buy” is insufficient to distinguish the Complainant’s trademark from the disputed domain name. Users will understand the addition “online” to the Complainant’s trademark in the sense that the Xenical product is offered online at the Respondent’s website.
The addition of the generic top level domain name “.biz” may be disregarded for the purpose of this comparison, as it merely makes reference to the fact that the use of the domain name is commercial.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark XENICAL.
B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name.
The Complainant does not appear to have licensed or otherwise authorized the Respondent to use its trademark or any domain name incorporating the trademark.
The Complainant has argued that the Respondent has no rights or legitimate interests to the domain name in accordance with paragraph 4(c) of the Policy, making out a prima facie case that the Respondent lacks such rights.
Paragraph 4(c) sets out certain circumstances, in particular but without limitation, which if found by the Panel to be proved on its evaluation of all the evidence presented, shall demonstrate rights or a legitimate interests on the part of the Respondent. The Respondent has not submitted a response and has failed to invoke any circumstances that would demonstrate any rights or legitimate interests in the domain name.
Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests, within the meaning of paragraph 4(a)(ii) and (c)(i) to (iii) of the Policy in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Even if the Respondent has not responded to the Complaint, the Complainant has to prove under the Policy that the Respondent has registered and is using the domain name in bad faith.
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Respondent registered and used the disputed domain names in bad faith. The language of paragraph 4(a)(iii) of the Policy requires that both bad faith registration and bad faith use be established.
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of bad faith.
In the present case, the Respondent’s bad faith may registration and use be established by the following:
- There are several facts indicating that the Respondent must have been aware of the Complainant’s trademark at the time of the registration of the domain name at issue, most notably, the fact that the Complainant’s trademark is widely-known in the specific business.
- As already established, the contested domain name is confusingly similar to the registered trademarks of the Complainant. The domain name was registered after the Complainant registered its trademarks.
- The Complainant and the Respondent appear to be acting in the same specific business. It is common to know the trademarks of others in the same business sector.
- Since the Respondent is using a domain name which is virtually identical to the Complainant’s trademark, Internet users may become confused as to the Complainant’s sponsorship or affiliation with the website with the disputed domain name.
- The Respondent is using the domain name for a link to another website. Thus, it directs visitors to this website. By such use the Respondent intentionally attempts to attract Internet users expecting to arrive at a website of the Complainant to another online location, creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of that location.
- In the absence of any submission by the Respondent it appears likely that the Respondent used the disputed domain name for his own commercial gain by taking advantage of the goodwill of the Complainant’s trademark.
The combination of the above factors makes it inconceivable to the Panel that the Respondent was not aware of the Complainant and its trademark when it registered the contested domain name. Thus, the Panel concludes that the disputed domain name was registered and being used in bad faith, and that accordingly, the Complainant has established paragraph 4(a)(iii) 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 <buy-xenical-online-x.biz> be transferred to the Complainant.
Dr. Ana María Pacón
Dated: August 7, 2007