WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Denis Zaicev
Case No. D2008-0635
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented internally.
The Respondent is Denis Zaicev, St-Petersburg, Russian Federation.
2. The Domain Names and Registrar
The disputed domain names <lk0p2-xenical.info>, <mhuak-xenical.info>, <ocbjdf-tamiflu.info> and <ui12jx-xenical.info> are registered with EstDomains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2008. On April 24, 2008, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain names at issue. On April 25, 2008, EstDomains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 29, 2008. 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 April 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2008.
The Center appointed Jane Lambert as the sole panelist in this matter on May 26, 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
The Complainant and its subsidiary companies form one of the largest pharmaceutical manufacturers in the world with interests in over 100 countries. Its products include the weight loss preparation Xenical and the anti-virus drug Tamiflu. The names of both products are registered as trademarks in a number of countries around the world. The sign XENICAL is registered with the WIPO pursuant to the Madrid Convention and Protocol under registration numbers 512908 and 699154 and TAMIFLU under registration numbers 713623 and 727329. Tamiflu is frequently in the news as a remedy against bird flu. Governments around the world have begun to stockpile the drug as a precaution against a bird flu pandemic. Nothing is known about the Respondent or his business other than his name and address and the use that he has made of the disputed domain names.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are confusingly similar to its trademarks in that each of the domain names incorporates one or other of its trademarks in its entirety. The Complainant denies that the Respondent has any rights or legitimate interests in those domain names. It says that it has never licensed, permitted, authorized or consented to the registration of those domain names. The Respondent uses the domain names as the URLs of a search engine with sponsored links which is not, in the Complainant’s submission, a bona fide offering of goods or services. The Complainant submits that the domain names were registered and are being used in bad faith. It argues that it is inconceivable that the Respondent was unaware of the Complainant’s trademarks at the time he registered the domain names. He uses the domain names to attract traffic to his site in the expectation that at least some of those visitors will click on the sponsored links for which he will receive payment. By such use he takes advantage of the Complainant’s reputation and goodwill. For all the above reasons, the Complainant seeks the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) each disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of those domain names; and
(iii) the domain names have been registered and are being used in bad faith.
The Complainant must prove that each of these three elements is present.
A. Identical or Confusingly Similar
The Complainant has annexed copies of the certificates of the registrations mentioned in paragraph 4 above to the Complaint and has thereby proved that it has rights in the word marks XENICAL and TAMIFLU.
The domain names <lk0p2-xenical.info>, <mhuak-xenical.info> and <ui12jx-xenical.info> differ from the registered trademark XENICAL only in the addition of the seemingly meaningless prefixes “lk0p2”, “mhuak” and “ui12jx” and the suffix “info”. Similarly, the domain name <ocbjdf-tamiflu.info> differs from the registered trademark TAMIFLU only in the addition of the prefix “ocbjd” and the suffix “info”. At the very least those domain names are confusingly similar. Arguably they are identical since the prefixes and suffixes can be disregarded.
Accordingly, the Complainant has proved that each of the disputed domain names is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The evidence on this element is that the Complainant has never licensed, permitted, authorized or consented to the registration of the disputed domain names.
Paragraph 4(c) of the Policy lists some other circumstances in which a respondent can show that he or she has rights or legitimate interests in a domain name. None of those circumstances applies to this case.
Based on the record and taking into consideration the use of the disputed domain names as defined below, the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a number of circumstances in which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b)(iv) further provides that one of those circumstances is using a domain name intentionally to attract for commercial gain Internet users to a web site by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site.
The Panel has already found that the disputed domain names are confusingly similar if not identical to the Complainant’s trademarks. The obvious inference to be drawn from using such domain names as URLs for the Respondent’s web site is that the Respondent intended to attract traffic to that site. Internet users would have been led to believe that those sites contained information about Xenical and Tamiflu that had been posted or at least approved by the Complainant. The purpose of attracting traffic to the site consisting of sponsored links would have been to tempt visitors to click some of those links. Each click generates a fee which constitutes a commercial gain for the Respondent.
Having found that the Respondent has used the disputed domain names intentionally to attract Internet users to his site for commercial gain by creating confusion with the Complainant’s marks, the Panel concludes that the disputed domain names were registered and are being used in bad faith.
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 names, <lk0p2-xenical.info>, <mhuak-xenical.info>, <ocbjdf-tamiflu.info> and <ui12jx-xenical.info> be transferred to the Complainant.
Dated: June 9, 2008