WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. sysadmin admin, balata.com ltd.
Case No. D2008-0954
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Grenzacherstrasse, Basel, Switzerland, represented by Jérôme Rhein, Switzerland.
The Respondent is sysadmin admin, balata.com ltd., Central, Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed Domain Names <buy-xenical-000.biz> and <order-xenical-a.biz> are registered with Communigal Communications Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2008. On June 24, 2008, the Center transmitted by email to Communigal Communications Ltd. a request for registrar verification in connection with the disputed Domain Names. On June 30, 2008, Communigal Communications Ltd. 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 July 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on July 25, 2008.
The Center appointed Fleur Hinton as the sole panelist in this matter on July 31, 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 is an internationally known pharmaceutical company. It is the owner of the trademark XENICAL in many countries and has registered this trademark in many countries around the world. The Complainant refers primarily to its international registrations 612908 and 699154 for XENICAL as a word mark and with a logo respectively. The priority date for the XENICAL trade mark comes from the basic Swiss registration and is August 5, 1993 covering goods in international class 5 being “pharmaceutical, veterinary and sanitary products”. The trademark is used in respect of a weight loss medication.
The Complainant holds registrations for the trademark XENICAL (“the Trademark”) in more than a hundred countries around the world.
5. Parties' Contentions
The Complainant contends that the Domain Names are identical to the Trademark in that they encompass the totality of the Trademark and that the addition of the words, “buy” and “order” to the Domain Names does not suffice to distinguish them from the Trademark. That is because they would be seen by consumers as being invitations to purchase goods bearing the Trademark. In addition, the Trademark pre-dates the Respondent's registration of the Domain Names. The Complainant says also that the mere adding of a descriptive word does not avoid the confusion caused by the adaptation of the whole of another party's trademark.
The Complainant has the exclusive right to license the Trademark and has not licensed it to the Respondent. Further, a visit to the websites to which the Domain Names lead indicate that there is no use of the Trademark other than as an address. The websites reached by the Domain Names merely provide links to other websites having nothing to do with the Complainant or, indeed, the Trademark. Such use, the Complainant contends, does not demonstrate any rights or legitimate interests in the Domain Names.
The Complainant shows that the Domain Names were registered on February 1, 2008 and February 7, 2008 respectively. It alleges that the purpose of the registration of the Domain Names was clearly to attract consumers who are aware of the Complainant's Trademark to the websites at those addresses in order to display links to other websites offering a variety of goods and services. This conduct, says the Complainant, shows registration of the Domain Names in bad faith and continued use of the Domain Names in bad faith.
The Respondent did not file a Response or otherwise reply to the Complainant's contentions.
6. Discussion and Findings
In order to reach a decision it is necessary to consider whether the evidence provided and arguments made by the Complainant satisfy the criteria of section 4(a) of the URDP Policy which requires that the Complainant show:
i. that the Domain Names registered by the Respondent are identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
ii. that the Respondent has no rights or legitimate interests in respect of the Domain Names; and
iii. that the Domain Names have been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Trademark is wholly encompassed within each of the Domain Names although each of them also contains extraneous non-distinctive i.e. descriptive material. However, it is now well-established that the adoption of a trademark in its entirety as a domain name together with other descriptive material does not generally suffice to enable a respondent to overcome an allegation that the domain name is distinguishable from the Trademark in question. The Complainant has supported this statement with a citation from Lilly ICOS LLC v. John Hopking/Neo net Ltd, WIPO Case No. D2005-0694 , in which the panel said that, “generally, a user of a mark may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”.
The Panel finds that the Domain Names are confusingly similar to the Complainant's Trademark.
B. Rights or Legitimate Interests
The Complainant must demonstrate by an unrebutted prima facie case that the Respondent has no rights or legitimate interests in the Domain Names. In this case, the Respondent has neglected to take the opportunity offered of providing argument and evidence itself to rebut the Complainant 's showing. This has been established in many UDRP decisions including Credit Suisse Group v. Milanes-Espinach, Fernando and Milanes-Espinach, SA, WIPO Case No. D2000-1376.
In that case the domain name was <creditswiss.net> and the complainant, the Swiss bank, Credit Suisse. The complainant had not lodged evidence in respect of the respondent's rights or legitimate interests but relied primarily on its international reputation in the trademark CREDIT SUISSE, the fact that it had not authorized the use of <creditswiss.net> by the respondent and the fact that the respondent had no connection with Switzerland. The panel found that that was sufficient to establish a prima facie case under paragraph 4 of the Policy.
The Trademark is an invented word and one in which the Complainant enjoys a substantial reputation. The Complainant has not licensed its use to the Respondent and the Respondent does not appear from the evidence to be making a legitimate noncommercial or fair use of the Domain Names, but rather appears to be attempting to misleadingly divert consumers for commercial gain. In this case the Panel finds that the Complainant, in the absence of any Response from the Respondent, has established that the Respondent has no rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
It is relevant under this head that the Trademark is an invented word which has been used by the Complainant extensively and has a substantial reputation. A search of Google entering the Trademark as a keyword reveals a large number of entries including the Trademark and the Complainant.
The websites bearing the Domain Names do not use the Domain Names for anything other than a means of enticing consumers to the websites. Once there, the consumer is directed to a range of goods and services unrelated to the Complainant.
The Complainant has referred the Panel to L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623, in which the panel discussed the use of well-known trademarks to entice consumers to an unrelated website and said, “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 as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions”; such is the case here.
The Panel finds that the 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, <buy-xenical-000.biz> and <order-xenical-a.biz> be transferred to the Complainant.
Dated: August 14, 2008