The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented internally.
The Respondent is Australian Internet Investments Pty Ltd, New South Wales, Australia.
The disputed domain name is <xenicalaustralia.com>.
The Registrar is GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2008. On September 18, 2008, the Center transmitted by email to GoDaddy.com Inc a request for registrar verification in connection with the domain name at issue. On September 18, 2008, GoDaddy.com Inc transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. 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 September 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 17, 2008.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on October 22, 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.
The language of the proceedings is English.
The Complainant, together with its affiliates, is a research-focused healthcare group in the field of pharmaceuticals and diagnostics with global operations in more than 100 countries.
The mark XENICAL designates an oral prescription weight loss medication.
The Complainant owns trade mark registrations for the XENICAL trade mark in over one hundred countries and has submitted documentary evidence of its ownership of International Registration numbers 612908 and 699154 for the word XENICAL.
International Registration number 612908 for the XENICAL word mark has a priority date of August 5, 1993. The Respondent registered the contested domain name <xenicalaustralia.com> on June 1, 2008. The registration and use of the mark XENICAL pre-dates the Respondent's registration of the contested domain name.
The Complainant submits that the contested domain name <xenicalaustralia.com> is confusingly similar to its trade mark as it contains the trade mark in its entirety.
The Complainant submits that the only difference between the contested domain name and the trade mark is the addition of “australia”. The Complainant submits that this variation does not make the disputed domain name distinctive and therefore does not avoid the likelihood of confusion with the XENICAL trade mark.
The Complainant submits that no licence, permission or authorization has been granted to the Respondent to use the XENICAL mark.
Further, the Complainant submits that the contested domain name directs to a search engine composed of sponsored links. The Complainant submits that the Respondent's reason for registering the contested domain name is therefore to benefit from the reputation of its trade mark for commercial gain and profit by generating revenues from advertising pay-per-click products and this does not constitute a bona fide offering of goods and services.
The Complainant therefore submits that the Respondent does not have any right or interest in the disputed domain name.
The Complainant submits that at the time of registration of the contested domain name, the Respondent no doubt had knowledge of its XENICAL product and mark and that registration must therefore necessarily have been made in bad faith.
The Complainant submits that it has a good reputation in its mark and that the Respondent is intentionally attempting to attract consumers to its website by creating a likelihood of confusion as to the source, affiliation or endorsement of the Respondent's website by use of that mark.
The Complainant contends that the Respondent is intentionally misleading consumers and confusing them to the fact that the websites to which the contested domain name is linked are associated with or recommended by the Complainant and is generating unjustified revenues for ‘click-through' to these websites by consumers.
The Respondent did not reply to the Complainant's contentions.
For the Complainant to prevail it must establish each of the following elements of paragraph 4(a) of the Policy:
(i) The Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Respondent's domain name has been registered and is being used in bad faith.
The Complainant has established that it is the registered proprietor of various trade marks for the word XENICAL.
The Respondent's domain name <xenicalaustralia.com> contains the whole of the Complainant's mark and differs only in the addition of the word “australia”.
As noted in DHL Operations B.V. v. Serkan Dikmen, WIPO Case No. D2006-1426 “several WIPO decisions have held that the addition of a geographical qualifier does not grant distinctiveness to a domain name”.
The addition of the geographic qualifier in this case is clearly an unsuccessful attempt to generate distinctiveness for the disputed domain name.
The Panel thus finds that the Respondent's domain name is confusingly similar to the Complainant's marks for the purposes of paragraph 4(a)(i) of the Policy.
The Complainant has established a prima facie case that the Respondent does not have a legitimate interest in the disputed domain name as follows:
(1) the Complainant is the proprietor of various trade marks for the word XENICAL;
(2) the Respondent has no licence, permission or authorization to use the Complainant's mark; and
(3) the Respondent registered the disputed domain name after the priority date of the Complainant's registered marks and domain name.
The Respondent has failed to make any submissions to the contrary and accordingly the Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy.
The evidence supplied by the Complainant shows that it had rights in the XENICAL trade marks some 15 years before the Respondent registered the contested domain name. The Panel finds persuasive the Complainant's submission that the Respondent must have had knowledge of the Complainant's rights in the mark when it registered the disputed domain name.
The disputed domain name directs to a search engine composed of sponsored links from which the Respondent may be generating revenue from ‘click-through' links and may thus be benefitting from the good reputation of the Complainant's mark.
The L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623 indicated that “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”.
The Panel is therefore satisfied that there is evidence that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or location of a product or service on that website or location.
For these reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith for the purposes of paragraph 4(a)(iii).
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 <xenicalaustralia.com> be transferred to the Complainant.
Dated: November 7, 2008