The Complainant is Hoffmann-La Roche Inc., of New Jersey, United States of America, represented by Lathrop & Gage L.C, United States of America.
The Respondent is WhoisGuard, WhoisGuard Protected, of California, United States of America.
The disputed domain name <xenical-prices.com> (the “Domain Name”) is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2008. On October 13, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On October 13, 2008, eNom 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” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on October 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 7, 2008
The Center appointed Thomas D. Halket as the sole panelist in this matter on November 14, 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 following facts have been alleged by Complainant and not refuted by Respondent. Complainant is a leading manufacturer of pharmaceutical and diagnostic products. Complainant owns the XENICAL mark for a pharmaceutical preparation for weight reduction and long-term management of weight in a multitude of countries worldwide including the United States of America (“United States”). Complainant has promoted the XENICAL mark extensively since at least 1994. Sales of the XENICAL products have exceeded 100 million dollars in the United States.
Complainant's Swiss parent owns and has registered the domain name <xenical.com>, through which Complainant's customers can obtain information on XENICAL products.
Complainant has not authorized Respondent to use its trademark XENICAL or to incorporate the trademark into any domain name or as a part of a copyright notice in the manner of a company name.
Internet users who go to the Domain Name are directed for purchase to various websites including the site “www.aprixe.com”, which sells pharmaceutical products of third party competitors of Complainant and uses the term “Generic Xenical” in the offer for sale of a medication while depicting Complainant's registered XENICAL logo. There is no FDA-approved generic for prescription XENICAL and sales of such a generic in or into the United States are illegal.
After learning of Respondent's registration of the Domain Name, Complainant on August 12, 2008, sent a letter via e-mail to the Respondent's address indicated in the WHOIS record for the Domain Name and a letter by certified mail, return receipt requested to the physical address indicated in that WHOIS record. In that communication Complainant advised Respondent that the registration of the Domain Name infringed its trademark rights and requested that Respondent transfer the Domain Name to Complainant. The letter transmitted by certified mail was apparently received by Respondent although the email letter bounced back.
(a) The Domain Name is identical and confusingly similar to a trademark or service mark in which Complainant has rights;
(b) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(c) The Domain Name was registered and is being used by Respondent in bad faith.
Respondent did not reply to Complainant's contentions.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following: (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 in respect of the domain name; and, (iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides that for the purposes of paragraph 4(a)(iii) the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that you [Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Domain Name contains Complainant's entire XENICAL trademark. As such there is at the very least a strong presumption, if not an irrefutable conclusion, that the Domain Name “is identical or confusingly similar to a trademark or service mark in which the complainant has rights”. The fact that the word “prices” has been added to Complainant's mark to form the Domain Name is in this case not sufficient to alter that conclusion.
“Numerous [UDRP] Panel decisions have established that the addition of words, letters or numbers to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. 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” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition. 23:50 (4th ed. 1998).
Based upon the foregoing, the Panel finds that the Domain Name is identical or confusingly similar to a mark in which Complainant has rights.
XENICAL is not a dictionary word and has no valid use other than in connection with Complainant's trademark. Complainant has not authorized the Respondent to use its trademark XENICAL or to incorporate the trademark into any domain name or as a part of a copyright notice in the manner of a company name.
Nor has Respondent been known by the name or used the Domain Name in a bone fide offering of goods on the available record. Respondent's use of the Domain Name appears to be solely to redirect visitors to various websites at least one of which sells competitor pharmaceutical products in a manner that trades off of Complainant's mark and which may even be illegal under United States food and drug laws. It is also to be noted that Respondent has not submitted any evidence to refute any of these findings.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Based on the unrefuted evidence provided by Complainant, it must be concluded that Respondent's purpose in registering the Domain Name was to capitalize on the reputation of Complainant's XENICAL mark to divert Internet users seeking Complainant's web site to Respondent's own web site, or a related site, a site on which customers could purchase, among other things, a competing product. And that competing product may, in fact, be an illegal generic version of the XENICAL drug.
This conclusion, as well as the conclusion that Respondent has registered and is using the Domain Name in bad faith, is supported by the following:
(a) “xenical-prices” is not a word, but merely essentially copies Complainant's XENICAL mark which is an invented and coined word and adds the word “-.prices”
(b) Under these circumstances, Respondent must have been was aware of the XENICAL trademark when it registered the Domain Name.
Thus, the unrefuted evidence clearly establishes that Respondent violated paragraph 4(b) of the Policy in that Respondent “by using the [D]omain [N]ame, [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the [C]omplainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [Respondent's] web site or location”. Accordingly, Respondent has registered and is using the Domain Name 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 name, <xenical-prices.com> be transferred to the Complainant.
Thomas D. Halket
Dated: November 28, 2008