WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Comdot internet services private limited/ PrivacyProtect.org
Case No. D2007-1637
1. The Parties
Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented internally.
Respondent is Comdot internet services private limited, Mumbai, India; PrivacyProtect.org.
2. The Domain Name and Registrar
The disputed domain name <xenical-al.com> (the “Domain Name”) is registered with Lead Networks Domains Pvt. Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2007. On November 7, 2007, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the domain name at issue. On November 21, 2007, the Registrar transmitted by email to the Center its verification response disclosing underlying registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 22, 2007, providing the underlying registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complaint filed an amendment to the Complaint on November 23, 2007. 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 November 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2007. Respondent did not submit any timely response. Accordingly, the Center notified the Respondent’s default on December 17, 2007. However, Respondent filed a late response on December 19, 2007.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on December 21, 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
Complainant, a company incorporated under the laws of Switzerland, holds trademark registrations on a world-wide basis for the trademark XENICAL. As an example, Complainant refers to the international registration No. 612908 and 699154. The trademark XENICAL designates an oral prescription for weight loss medication and helps obese people to lose weight and keep this weight off.
The Domain Name <xenical-al.com> was first created on October 27, 2004. Respondent is using the Domain Name for a landing page that includes advertisements for third party websites offering products similar or identical to those offered by Complainant. Among the advertisement links available on Respondent’s website are those of third parties, all of which appear to compete with Complainant’s products.
5. Parties’ Contentions
Complainant states that it uses the trademark XENICAL to promote weight loss and weight control.
Complainant alleges that the Domain Name is confusingly similar to its trademark XENICAL. Complainant asserts that the Domain Name incorporates its trademark in its entirety.
Complainant further alleges that Respondent was granted no license, permission or authorization to use the trademark XENICAL in the Domain Name, that the Domain Name clearly alludes to Complainant, and that Respondent’s only reason to register and use the Domain Name is to benefit from the reputation of the trademark XENICAL and to illegitimately trade on its fame for commercial gain and profit.
Finally, Complainant alleges that Respondent has registered and is using the Domain Name in bad faith for two reasons. First, Complainant states that Respondent must have known Complainant’s product and trademark XENICAL. Second, Complainant alleges that Respondent is intentionally attempting (for commercial purposes) to attract Internet users to Respondent’s website, by creating a likelihood of confusion with the trademark XENICAL, which has a good reputation among doctors, and by advertising links to websites promoting and/or offering products and services. Complainant argues that Respondent is intentionally misleading the consumers and confusing them so as to attract them to other websites making them believe that the websites behind those links are associated or recommended by Complainant. As a result, Respondent may generate unjustified revenues for each click-through by on-line consumers of the sponsored links.
Although the Complaint was properly notified to Respondent, as required by the Rules, Respondent did not file a timely Response. In the absence of a timely Response, it is appropriate to accept as true all factual supported allegations of the Complaint. See, e.g., Ticketmaster Corporation v. Bill Hicks, WIPO Case No. D2004-0400; Elan Pharmaceuticals, Inc. v. Randy Haag, WIPO Case No. D2001-0755.
The Panel notes however that the Respondent filed a late Response. Paragraph 14(a) of the Rules states as follows: “(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.”
Even though the Response was filed late and the Panel need not consider it, the Panel has – so that the Respondent is given a fair opportunity to present its case – reviewed the Response, but has found no arguments or evidence that would affect the outcome of this case.
6. Discussion and Findings
The burden that Complainant must meet under paragraph 4(a) of the Policy is to prove:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, and
(ii) that Respondent has no rights or legitimate interests with respect to the Domain Name, and
(iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant demonstrated that it has trademark rights in the trademark XENICAL.
The Panel refers to the Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Decision Overview”), at §1.1: “If the complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights. The location of the registered trademark and the goods and/or services it is registered for are irrelevant when finding rights in a mark.”1 The only remaining question, then, is whether the Domain Name is identical or confusingly similar to Complainant’s trademark.
The Panel finds that Domain Name is confusingly similar to Complainant’s trademark because the addition of a dash and the letters “al” to the trademark XENICAL does not change the fact that the Domain Name looks and reads like Complainant’s XENICAL trademark.
The Panel thus finds that the Domain Name is confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
The Panel has reviewed the record and the website to which the Domain Name resolves and finds that there is no indication of any right or legitimate interest by Respondent in the Domain Name.
Respondent registered the Domain Name several years after Complainant began offering products and offers a landing page that advertises competitive services. It thus appears that Respondent is seeking to confuse Internet users so that those searching for Complainant’s product could mistakenly reach Respondent’s website and be diverted to the websites of Complainant’s competitors. This is not a legitimate use under the Policy, nor is it a bona fide offering of goods or services. The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340 (landing page is not a legitimate interest).
C. Registered and Used in Bad Faith
The same facts that support the finding that Respondent lacks rights or legitimate interests in the Domain Name also support the conclusion that Respondent is using the Domain Name in bad faith. These facts show that Respondent has intentionally sought to attract Internet users to its website by creating a likelihood of confusion with Complainant’s trademarks and domain name for commercial gain. Only one sign and two letters distinguish the Domain Name from Complainant’s trademark. Respondent is clearly specifically targeting Complainant’s trademark and attempting to divert Internet users searching for Complainant’s product to Respondent’s website. Respondent is presumably profiting from this conduct in the form of click-through revenues. These facts all support a finding of bad faith registration and use under paragraph 4(b)(iv) of the Policy. The Knot, Inc., supra; Airbus Deutschland Gmbh v. DOMAIN-NAME-4-SALE, WIPO Case No. D2005-0092.
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-al.com> be transferred to Complainant.
Flip Jan Claude Petillion
Dated: January 4, 2008
1 Although the WIPO Decision Overview is not binding precedent, it embodies a consensus of positions set forth in the opinions of several WIPO UDRP panelists during the first five years of the administration of the UDRP. See, Fresh Intellectual Properties, Inc. v. 800Network.com, Inc., WIPO Case No. D2005-0061. It is prudent for panelists to follow such a consensus in order to promote consistency among UDRP decisions. See, Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014. See also, Last Minute Network Limited v. Web Domain Names, WIPO Case No. D2007-1161.