WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Daniel Sundin

Case No. D2008-0094

 

1. The Parties

The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland represented by JÚr˘me Rhein, Switzerland.

The Respondent is Daniel Sundin, Engelholm, Sweden.

 

2. The Domain Name and Registrar

The disputed Domain Name <xenical-plan.com> is registered with InnerWise, Inc. d/b/a ItsYourDomain.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2008. On January 24, 2008, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourDomain.com a request for registrar verification in connection with the domain name at issue. On January 24, 2008, InnerWise, Inc. d/b/a ItsYourDomain.com 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 February 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2008.

The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on April 1, 2008. 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

Given that the following facts and circumstances were alleged and satisfactorily evidenced by the Complainant and the Respondent by its default has failed to contest them, they are being held as true by the Panel.

The Complainant is a research-focused health care company in the fields of pharmaceuticals and diagnostics and is the owner of a multitude of trademarks in over a hundred countries containing the word “xenical”. For the purpose of these proceedings the Complainant submitted copies of two exemplary trademark registrations, namely:

a. International trademark XENICAL (word), registration on December 14, 1993 (Priority date: August 5, 1993) registration No. 612 908, with extensions of protection in Algeria, Germany, Austria, Belarus, Benelux, Bulgaria, Croatia, Egypt, Spain, Russian Federation, France, Hungary, Italy, Kazakhstan, Liechtenstein, Morocco, Poland, Portugal, Czech Republic, Romania, San Marino, Slovakia, Slovenia, Ukraine, Yugoslavia;

b. International Trademark XENICAL (logo) registration on July 28, 1998 (Priority date: April 21, 1998), registration No. 699154 with extensions of protection in Germany, Austria, Benelux, Bosnia and Herzegovina, Bulgaria, China, Croatia, Cuba, Spain, Former Yugoslavian Republic Macedonia, Russian Federation, France, Hungary, Italy, Latvia, Liechtenstein, Morocco, Monaco, Poland, Portugal, Moldova, Czech Republic, Romania, San Marino, Slovakia, Ukraine, Vietnam, Yugoslavia (under the Madrid Agreement); Denmark, Finland, Island, Lithuania, Norway, United Kingdom, Sweden (under the Madrid Protocol).

The trademark XENICAL designates an oral prescription weight loss medication.

The Respondent registered the disputed Domain Name <xenical-plan.com> on September 29, 2006, at InnerWise, Inc. d/b/a ItsYourDomain.com. According to independent Internet research of the Panel (an accepted practice, see Terabeam Corp. v. Colin Goldman, WIPO Case No. D2001-0697, Pharmacia & Upjohn Co. v. Brainbow, Inc., WIPO Case No. D2000-1763, Kur- und Verkehrsverein St. Moritz v. St.Moritz, WIPO Case No. D2000-0617) the disputed Domain Name at least on April 10, 2008 directly pointed to a search engine which referred to sponsored links. It did not, as the Complainant states, redirect internet traffic to the website “http://www.cnomy.com/?dn=xenical-plan.com&pid=1PO816841&prvtof=8b2VkUqfXDCVzkFTsAFjP9z%2FNy9%2Fx9taZ9PnAg%3D%3D” containing a search engine referring to sponsored links.

The website showed a search field and displayed under the heading “related searches” the categories “weight loss” and “xenical”, which also directed the user to sponsored links related to these categories including links to buy Xenical or other pharmaceuticals from various sources. Further independent Internet research of the Panel resulted in the observation that the website is constantly changing its appearance while keeping the search field and slightly varied versions of the terms mentioned above.

 

5. Parties’ Contentions

A. Complainant

1. According to the Complainant, the disputed Domain Name is confusingly similar to the Complainant’s trademark, because it contains the trademark in its entirety.

2. The Complainant further alleges that it has the exclusive rights to use the trademark XENICAL and that no license, permission or authorization was granted to the respondent and no consent expressed regarding the use of the Complainant’s trademark in the disputed Domain Name. The Respondent’s use of the Domain Name does not constitute a bona fide offering of goods or services because it redirects users to a search engine referring to sponsored links and the Respondent uses the disputed Domain Name solely to benefit from the reputation of the Complainant’s trademark XENICAL for commercial profit.

3. Finally, the Complainant contends that the disputed Domain Name was registered in bad faith because the Respondent had knowledge of the Complainant’s product and trademark XENICAL at the time of the registration. According to the Complainant, the Respondent’s bad faith use results from the fact that Respondent is attempting to attract Internet users to Respondent’s website with intent and for commercial profit by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or of the products and services posted on or linked to Respondent’s website. By generating revenues for each click-through of the sponsored links by Internet users the Respondent is illegitimately gaining profit from Complainant’s trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

As stated in Keesing Capital International N.V. Locatech NV-SA, WIPO Case No. D2005-0575, Tarjeta Naranja S.A. v. MrDominio.com and Alejandro San Jorge, WIPO Case No. D2001-0295 and in Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A. and Ermenegildo Zegna Espa˝a S.A v. Ocxon Media S.A., WIPO Case No. D2001-0128, according to the Rules, in case of failure of the respondent to provide a response to the allegations of the complainant, the panel is directed to decide the administrative proceeding on the basis of the complaint (Paragraph 14(a)), and “shall draw such inferences therefrom as it considers appropriate” (Paragraph 14(b)). Nonetheless the default of the respondent does not exempt the complainant of its burden of proof (Paragraph 4(a)), see Brooke Bollea, a.k.a. Brooke Hogan v. Robert Mc Gowan, WIPO Case No. D2004-0383, Berlitz Investement Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, regarding each of the following elements: the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (A.), the Respondent has no rights or legitimate Interests in respect of the Domain Name (B.) and the Domain Name has been registered and is being used in bad faith (C.).

A. Identical or Confusingly Similar to Trademarks in which the Complainant has rights

1. The disputed Domain Name <xenical-plan.com> contains the Complainant’s trademark XENICAL in toto and the suffix “-plan”. As recognized in a multitude of prior panel decisions, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered trademark, see AT&T Corp. v. William Gormall, WIPO Case No. D2005-0758; Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; Magnum Piering, Inc. v. Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253. The mere addition of the generic term “plan” to the arbitrary and therefore distinctive trademark of the Complainant “xenical” does not distinguish the disputed Domain Name from the Complainant’s trademark in a way that would prevent consumer confusion, see Lily ICOS LLC v. Sachin Tailor, WIPO Case No. D2005-0580; PepsiCo, Inc. v. Pepsi, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696; Dr. Ing. H.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888; Institut Straumann AG v. Core-Vent Corporation, WIPO Case No. D2000-0404. On the contrary, the generic part “plan” in combination with the Complainant’s trademark even contributes to the Internet user confusion, see Dr. Ing. H.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888; Margadarsi Marketing Private Ltd. v. BitraNet India, WIPO Case No. D2000-1209. The Complainant’s trademark is registered for a weight loss medication product and the term “plan” in this context is often used in combination with a product or an organization as a specific concept of loosing weight (e.g. “weight watchers plan”). In particular, according to independent Internet research of the Panel, the official websites of “alli” a weight loss medication product containing the same active ingredient as “xenical”, refers to an “alliplan” and a website operated by the Complainant addresses people enrolled in the “xenical-plan”. The disputed Domain Name is thus suggestive of the goods the Complainant’s trademark is registered for.

Therefore, the Panel considers the Respondent’s Domain Name <xenical-plan.com> as confusingly similar to the Complainant’s trademark.

2. The Complainant has shown through the submission of copies of trademark registration certificates that it is at least the owner of two trademarks registered by the World Intellectual Property Organization (one consisting of the word “xenical” and one of the logo “xenical”) with extensions of protection in numerous countries worldwide. Being the owner of a registered trademark satisfies the threshold requirements of having trademark rights, see Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661, Uniroyal Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358, Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503.

The Complainant has shown that the disputed Domain Name <xenical-plan.com> is confusingly similar to its XENICAL-trademarks and that it has rights in them.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent does not have any rights to use the Complainant’s trademark in the disputed Domain Name, because it did not grant any license, permission or authorization, nor did it express its consent to the use of the trademark in the disputed Domain Name.

Furthermore, the Complainant alleges that the Respondent does not have any legitimate interests in the Domain Name because the disputed Domain Name redirects users to a website containing a search engine referring to sponsored links, which constitutes, as stated in Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085, a misleading of users and cannot be qualified as bona fide use. According to the Complainant the Respondent’s sole purpose of using the Complainant’s trademark in the disputed Domain Name was to benefit from the Complainant’s trademark’s reputation and gain commercial profit from it, thus the Complainant alleged that the Respondent’s use of the Domain Name did not constitute noncommercial fair use. The Panel finds that although the Complainant did not explicitly state in its Complaint that the Respondent is not commonly known by the disputed Domain Name, this conclusion can be inferred from the Complainant’s statement that the Complainant has registered trademarks consisting of the word “xenical” in a multitude of countries and two such trademarks registered by the World Intellectual Property Organization eight to twelve years ago. The Complainant has shown a long and widespread registration of the XENICAL trademarks. There is nothing before the Panel to establish that the Respondent is commonly known by the disputed Domain Name. The above is deemed to be sufficient for a prima facie showing that the Respondent was not commonly known by the disputed Domain Name.

Therefore, the Complainant has made a prima facie showing that the Respondent has no rights to or legitimate interests in the disputed Domain Names. Once a Complainant makes a prima facie showing, the burden of proof in this specific factor shifts to the Respondent, see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. 2003-0455; Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. The Respondent by its default has failed to rebut the showing by evidence. Thus, the Respondent does not have rights or legitimate interests in the Domain Names.

C. Registered and Used in Bad Faith

The Complainant has shown that the registration of the disputed Domain Name occurred 12 years after the registration of the Complainant’s word-trademark XENICAL and eight years after the registration of the Complainant’s logo-trademark XENICAL.

The disputed Domain Name creates a likelihood of confusion for the Internet users, who seek to find more information about the Complainant’s trademarked product XENICAL and how to loose weight with it. Internet users are likely to be confused as to the source, sponsorship, affiliation or endorsement of the website the disputed Domain Name points to. First, because of the disputed Domain Name itself, and second, because it displays under “related searches” two categories (“xenical”, “weight loss”) one identical to and one strongly associated with the Complainant’s trademarked product. Considering that the disputed Domain Name directs users to a search engine composed of sponsored links, the commercial purpose of the website can be assumed, see Axel Springer AG v. AUTOBILD.COM, WIPO Case No. D2005-0554. The commercial use of the disputed Domain Name to increase Internet traffic directed at a search engine may be evidence of bad faith, see Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1805. In this context, it is irrelevant whether the disputed Domain Name directly points to a website containing a search engine or redirects Internet traffic to another website containing a search engine, as the Complainant stated, because in any event the Respondent uses the disputed Domain Name to increase Internet traffic directed at a search engine. Given that the Complainant’s trademarks were registered for a long period of eight to twelve years and the Respondent’s website displays two references identical to or strongly associated with the Complainant’s trademarks, the Respondent’s conduct cannot be regarded as a mere coincidence but as an intentional attraction of the Internet users seeking to find information about the Complainant’s trademarked product to the Respondent’s website.

Therefore, the Panel finds the disputed Domain Name was registered and is being used in bad faith.

 

7. Decision

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-plan.com> be transferred to the Complainant.


Andrea Jaeger-Lenz
Sole Panelist

Dated: April 15, 2008