Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
Respondent is Old Navy ltd, Mihail Gordenco of Odessa,Ukraine.
The disputed domain name <cheap-xenical.net> is registered with Web Commerce Communications Limited dba WebNic.cc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2009. On March 23, 2009, the Center transmitted by email to Web Commerce Communications Limited dba WebNic.cc a request for registrar verification in connection with the disputed domain name. On March 24, 2009, Web Commerce Communications Limited dba WebNic.cc transmitted by email to the Center its verification response confirming that 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 March 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 13, 2009. Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on April 14, 2009.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on April 20, 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.
Complainant, together with its affiliated companies, is one of the world's leading manufacturers of pharmaceutical and diagnostic products.
Complainant's XENICAL trademark is protected for pharmaceutical products under International Registration No. 612908, with a priority date of August 5, 1993.
The disputed domain name was created on February 12, 2009. The disputed domain name currently routes to a parking page displaying links to weight-loss, pharmaceutical and other products. Other pages of Respondent's website, to which Respondent's parking page routes users, display sponsored advertising links of third parties. Some of the links on Respondent's page list products that are marketed by Complainant's competitors (for example, Adipex).1
Complainant avers that the mark XENICAL designates an oral prescription weight-loss medication and that Complainant holds registrations for the mark XENICAL in over a hundred countries.
Complainant seeks transfer of the disputed domain name on the grounds described below.
Complainant alleges that the disputed domain name is confusingly similar to Complainant's XENICAL mark because (1) it incorporates the entire mark, and (2) the addition of the word “cheap” is not sufficient to distinguish the disputed domain name from the mark.
Complainant alleges that Respondent has no right or legitimate interest in the domain name, since: (1) Respondent has no license, permission or authorization to use the XENICAL mark; (2) Respondent uses the domain name for commercial gain with the purpose of capitalizing on the fame of the mark; and (3) Respondent's website includes sponsored links, therefore Respondent's use of the disputed domain name is not bona fide.
Complainant contends that Respondent registered the disputed domain name in bad faith because Respondent undoubtedly knew of Complainant's well-known product and mark when it registered the disputed domain name.
Finally, Complainant contends that Respondent's use of the domain name is in bad faith since Respondent is “intentionally attempting (for commercial purpose) to attract Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's well-known mark as to the source, affiliation and endorsement of Respondent's website or of the products or services posted on or linked to Respondent's website.” Complainant also notes that links posted on Respondent's website route to third parties in the field of Complainant's business, pharmaceuticals. As a result, Complainant alleges, Respondent is earning click-through revenues by illegally capitalizing on the fame of Complainant's marks.
Respondent did not reply to Complainant's contentions.
The Policy is intended to resolve disputes concerning allegations of abusive domain name registration in an efficient manner. Fundamental due process requirements must nonetheless be met. The requirement that a respondent have notice of proceedings that may substantially affect its rights is such a fundamental requirement. The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center sent notification of the Complaint to Respondent via courier and email to the addresses in Ukraine that were listed in the WhoIs record.2 According to courier tracking records, the notification was undeliverable based on the address details provided. The emails returned fatal error notices.
Based on the methods employed to provide Respondent with notice of the Complaint and Respondent's obligations to maintain accurate and current contact information under its registration agreement, the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings. The Panel finds that the Center has exercised care and has fulfilled its responsibility under paragraph 2 of the Rules and that the failure of Respondent to furnish a Response to the Complaint is not due to any omission by the Center.
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if the respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a response, the panel may also accept as true the factual allegations in the Complaint. See, e.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
The Panel agrees with Complainant that Respondent's domain name <cheap-xenical.com> is confusingly similar to Complainant's trademarks.
Panels disregard the “.com” suffix in evaluating confusing similarity. See, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-13l5.
The Panel concludes that the addition of the descriptive term “cheap” does not negate the confusing similarity created by Respondent's complete inclusion of the XENICAL trademark in the disputed domain name. See, e..g., Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; F. Hoffmann-La Roche AG v. ActiveIdeas.com, Jason Peterson, WIPO Case No. D2007-1567.
The Panel finds that the disputed domain name is confusingly similar to the registered XENICAL trademarks of Complainant and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
The Panel also concludes that Respondent has no rights or legitimate interests in the domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (i) using the domain name in connection with a bona fide offering of goods and services; (ii) being commonly known by the domain name; or (iii) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the Respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no Response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
In the absence of a response, the Panel accepts as true Complainant's allegations that Respondent has no authorization to use Complainant's marks in its domain name and that Respondent is seeking to attract Internet users through the XENICAL mark for Respondent's own commercial purposes.
The Panel infers that Respondent receives revenues when it diverts traffic to third party advertisements through the links appearing on Respondent's website. See, e. g. The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya lLtd, WIPO Case No. D2006-1079.
Screens from Respondent's website online show that Respondent uses the disputed domain name to promote products of Complainant's competitors, as well as links to other businesses unrelated to the Xenical product. The Panel therefore finds that Respondent's use of the disputed domain name demonstrates Respondent's lack of a legitimate non-commercial interest in, or fair use of, the domain name. See, e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784.
There is no indication on the record that Respondent is commonly known by the disputed domain name. The Panel also finds there is no bona fide offering of goods or services by Respondent.
Filing no response, Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including a respondent's concealment of identity, a lack of conceivable good faith uses for the domain name, or failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel infers that Respondent was aware of Complainant's trademark and product name, which was registered in the early 1990s, many years before Respondent's registration. The Panel further infers that Respondent registered the disputed domain name intending to trade on the value of Complainant's trademark. The Panel finds that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant's mark. The Panel concludes, therefore, that Respondent registered the domain name in bad faith.
The Panel also concludes that the circumstances demonstrate bad faith use of the domain name by Respondent, as elaborated below.
Currently available online screens from Respondent's website show that Respondent uses the domain name to promote sales of the products of other pharmaceutical companies, and unrelated products. Respondent has not only declined to submit a Response to these proceedings, but it apparently provided false or inaccurate contact details in violation of the requirements of his registration agreement with the domain name registrar.
With the addition of the word “cheap” to Complainant's XENICAL trademark, the Panel finds that there is no conceivable good faith use for the domain name <cheap-xenical.com> by Respondent. See Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814.
In these circumstances, the Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith under paragraph 4(b)(iv) of the Policy. Pfizer Inc. v. jg a/k/a Josh Green, supra (citing Google, Inc v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088).
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, <cheap-xenical.net> be transferred to Complainant.
Dated: May 4, 2009
1 The Panel has undertaken limited factual research by visiting the website to which the disputed domain name routes. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions. Complainant also annexed prints of the some of the pages from Respondent's website to the Complaint.
2 Respondent did not list a fax number with the Registrar.