The Complainant is F. Hoffmann-La Roche AG, of Switzerland, represented internally.
The Respondent is Alexander Kravtsov, Alex Properties, Russian Federation.
The disputed domain name <genericxenical.org> is registered with Todaynic.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2008. On December 15, 2008, the Center transmitted by email to Todaynic.com, Inc. a request for registrar verification in connection with the domain name at issue. On January 6, 2009, Todaynic.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. 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 the Respondent of the Complaint, and the proceedings commenced on January 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 28, 2009.
The Center appointed Jonathan Agmon as the sole panelist in this matter on February 2, 2009. 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 Complainant together with its affiliated companies is one of the world's leading research-focusing healthcare groups in the field of pharmaceuticals and diagnostics with global operations in more than 100 countries.
The Complainant owns rights in the XENICAL trademark. For example, the Complainant owns Switzerland trademark registration number 612908 for the XENICAL trademark with a filing date of August 5, 1993. The XENICAL trademark is registered in multitude countries worldwide.
The XENICAL trademark is being used in conjunction with a prescription medication for weight loss used to help obese people lose weight and keep their weight off.
The Respondent registered the disputed domain name <genericxenical.org> on December 2, 2008. The disputed domain name is being used in connection with a website that offers information regarding the drug – xenical, and directs consumers to on-line pharmacies and also offers special offers for purchase of Xenical and other medication – see “www.onlinepharmacydrug.com” or “www.trustedpharmacyworld.com”.
The Complainant argues that the disputed domain name is confusingly similar to the trademark owned by the Complainant, seeing that it incorporates the XENICAL trademark in its entirety. The Complainant further argues that the addition of the word “generic” is not sufficient to avoid confusion between the disputed domain name and the trademark owned by the Complainant.
The Complainant further argues that it has exclusive rights to the XENICAL mark and that it has not provided the Respondent with a license, permission or authorization to use or otherwise dispose of the XENICAL mark or to the disputed domain name.
The Complainant further argues that the Respondent's website is being used to intentionally direct Internet users to online pharmacies and that such use creates confusion as to the source of the XENICAL trademark.
The Complainant further argues that the late registration date of the disputed domain name indicates that the Respondent had knowledge of the Complainant's trademark registrations. And, that the Respondent use of the disputed domain name is in bad faith since it is attracting Internet users by creating likelihood of confusion between the Complainant's trademark and the Respondent's web site.
For all of the above reasons, the Complainant requests transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademarks over the XENICAL mark in various jurisdictions. For example, the Complainant owns Switzerland trademark registration number 612908 for the XENICAL trademark with a filing date of August 5, 1993; US Trademark registration number 74419821 for the XENICAL trademark in class 5 with a filing date of August 2, 1993 and a registration date of July 18, 1995.
The only difference between the Complainant's trademark XENICAL and the disputed domain name is that the disputed domain name is comprised of the word “generic” and the Complainant's trademark XENICAL with the suffix “.org”.
The addition of the prefix “generic” would not avoid confusion and does not create any distinctiveness that helps eliminate the possibility of confusion. In similar cases, the addition of the prefix “generic” was considered insufficient to avoid confusion between a disputed domain name and a trademark. See Eli Lilly Company v. Ron Stopchycki, WIPO Case No. D2007-1885, considering the domain name <genericzyprexa.com> stating that “[i]t has been well-established by panels in previous WIPO UDRP decisions that the mere addition of a common or descriptive word, such as ‘generic', to a trademark is not sufficient to avoid a finding of confusing similarity with that trademark”. See also Merrell Pharmaceuticals Inc., Aventis Pharma SA v. Filips Kostins, WIPO Case No. D2004-0943.
The generic top level domain, here “.org” must be excluded from consideration as being a generic or functional component of the domain name, see Belo Corp v. George Latimer, WIPO Case No. D2002-0329, where the panel held that: “it is well established that the generic top level domain, in this case ‘.com' must be excluded from consideration as being a generic or functional component of the Domain Name.”
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name
In the present case the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent has failed to assert any such rights.
The Panel finds the Complainant has established such prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the XENICAL trademark or a variation thereof. The Respondent has not submitted a Response and has not provided any evidence to show he has any rights or legitimate interests in the disputed domain name.
In addition, “several cases have found that a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer's mark and that is being used to direct consumers to an on-line pharmacy” see Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
It is suggestive of the Respondent's bad faith that the trademark of the Complainant was registered long before the registration of the disputed domain name. The Complainant submitted evidence, which shows that the Complainant's trademark XENICAL is registered and is known in the healthcare and pharmaceutical industry and that its trademark would be recognized publicly.
A review of the website operating under the disputed domain name referring directly to the Xenical drug and providing information about it and about the Complainant is clear evidence that the Respondent registered the disputed domain name with knowledge of the Complainant and the XENICAL trademark and product with the intent of operating a web site offering said information and links to online pharmacies and increasing the likelihood that Internet users would be confused and identify the Respondent as either the source or associated with the Complainant.
The Panel notes that the Respondent use of the disputed domain name for advertising the Xenical medication and directing consumers to on-line pharmacy also amounts to bad faith use of the disputed domain name. See Herbalife International, Inc v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith”.
As noted, the disputed domain name is being used by the Respondent in connection with the offering of information regarding the Xenical drug, and directs consumers to on-line pharmacies and offers the Xenical and other drugs manufactured. Internet users are likely to be confused as to the source of the information on the website and associate the web site and links available therein with the Complainant. Such use is in bad faith. See Pfizer Inc. v. Juan Gonzales, WIPO Case No. D2004-0589 stating that: “Furthermore, the printout of the relevant pages of Respondent's website ‘generic-viagra-online.com' shows that Respondent has been using the Domain Name to promote and sell, for commercial gain, sildenafil citrate pharmaceutical products as ‘generic Viagra', which directly compete with Complainant's genuine Viagra. This is further evidence of Respondent's bad faith registration and use of the Domain Name under paragraph 4 (c) (iii) of the Policy.”
It is therefore the finding of the Panel that the Respondent registered and is using the disputed 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 disputed domain name, <genericxenical.org> be transferred to the Complainant.
Dated: February 11, 2009