The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented internally.
The Respondents are Value Domain/VALUE-DOMAIN COM, Osaka, Japan; Digirock Inc., Osaka, Japan (“Respondent”).
The disputed domain name <order-xenical-i.biz> is registered with eNom, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2009. On February 5, 2009 and on February 9, 2009, the Center transmitted by email to eNom requests for registrar verification in connection with the disputed domain name. On February 5, 2009 and on February 9, 2009, eNom transmitted by email to the Center its verification responses providing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 10, 2009 providing the registrant and contact information provided by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 10, 2009. 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” 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 February 12, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 5, 2009.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on March 13, 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 is one of the world's leading research-focused healthcare groups in the field of pharmaceuticals and diagnostics.
The Complainant's trademark XENICAL is registered in many countries, designating oral prescription weight loss medication used to help obese people lose weight and keep their weight off. The Complaint's Annex 3 shows trademark registrations since 1993.
The Respondent registered the domain name <order-xenical-i.biz> on January 22, 2009. The Respondent uses the disputed domain name in connection with a pay-per-click (“PPC”) parking page.
When the Panel accessed the website at the disputed domain name after receipt of the case file, it showed a list of links for medicines, shopping, fitness and others.
The Complainant makes the following contentions:
The Respondent's domain name is confusingly similar to the Complainant's mark seeing that it incorporates this mark in its entirety. The addition of the descriptive word “order” and letter “i” does not sufficiently distinguish the domain name from the Complainant's mark: it may suggest that the Respondent's website is a location where a consumer may buy the product Xenical.
Furthermore, the Complainant's use and registration of the mark XENICAL predate the Respondent's registration of the domain name.
The Complainant has exclusive rights for the trademark XENICAL and no license, permission or authorization was granted to the Respondent to use XENICAL in the domain name.
The Respondent's only reason in registering and using the contested domain name is to benefit from the reputation of the trademark XENICAL and illegitimately trade on its fame for commercial gain and profit.
The domain name was registered in bad faith since at the time of the registration the
Respondent had knowledge of the Complainant's product/mark XENICAL.
The domain name is also being used in bad faith since the Respondent is intentionally attempting (for commercial purpose) to attract Internet users to its website, by creating a likelihood of confusion with the Complainant's mark, which has a good reputation among doctors, as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of the products or services posted on or linked to the Respondent's website.
Furthermore, the use of the domain name in question seems also to be advertising links to websites promoting and/or offering products directly competing with those of the Complainant. As a result, the Respondent may generate unjustified revenues for each click through by on-line consumers of the sponsored links. The Respondent is therefore illegitimately capitalizing on the XENlCAL trademark fame.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) the 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 the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Regardless of the fact the Respondent failed to submit a formal reply, the Panel shall consider whether the requirements of the Policy have been met.
The Complaint's Annex 3 proves that the Complainant has rights in the XENICAL trademark at least since 1993.
The trademark is wholly encompassed within the disputed domain name. Although the disputed domain name also contains descriptive words and symbols, such as “order” or “i”, this is not sufficient to refute the confusingly similar requirement under Paragraph 4(a)(1).
In a previous UDRP case, concerning the domain names <buy-xenical-000.biz> and <order-xenical-a.biz>, the panel stressed that “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” (F. Hoffmann-La Roche AG v. sysadmin admin, balata.com ltd., WIPO Case No. D2008-0954).
The same conclusion was reached in Hoffmann-La Roche Inc. v. UrProxy Domains, WIPO Case No. D2008-0237, concerning the domain name <order-xenical.net>: “Use of the Complainant's XENICAL trademark with a non-distinctive term such as “order” is confusingly similar to the XENICAL mark. Further, Internet users are likely to believe that the Domain Name is affiliated with the Complainant”. See also Lilly ICOS LLC v. John Hopking/Neo net Ltd, WIPO Case No. D2005-0694.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the Complainant's trademark.
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent's default and on the prima facia evidence in the Complaint, it is presumed that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed the trademark to the Respondent. The Respondent is not commonly known by the domain name. The use of the domain name can not be understood to be noncommercial or fair. Consequently, the Panel is satisfied that Complainant has proven the second element of the Policy.
Paragraph 4(b) of the Policy states that the following circumstances in particular but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Panel has had little difficulty in concluding that the circumstances referred on Paragraph 4(b)(iv) have occurred in the present case.
The disputed domain name encompasses the Complainant's trademark XENICAL (together with the word “order” and the letter “i”) and is being used as a pay-per-click landing page, displaying sponsored links for third party websites that offer competing products. Therefore, in doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainant's trademark, causing Internet users searching for information on the Complainant's product to mistakenly believe that the Respondent is authorized to sell the product named Xenical;
(ii) obtains click-trough revenue from this practice; and
(iii) deprives the Complainant from selling its product to someone who is clearly looking for it and, at the same time, promotes products offered by competitors.
For reference on the subject see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Accordingly, the Panel finds that the Complainant has proved that the Respondent registered and used the disputed domain name in bad faith, satisfying the third element of the Policy.
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 <order-xenical-i.biz> be transferred to the Complainant.
Dated: March 27, 2009