The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented by an internal representative.
The Respondent is Transure Enterprise Ltd of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland and Above.com Domain Privacy of Beaumaris, Australia.
The disputed domain name <phentermine-xenical-4you.com> is registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2009. On December 17, 2009, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 18, 2009, Above.com, Inc. transmitted by email to the Center its verification response disclosing 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 December 22, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 22, 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 December 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 15, 2010.
The Center appointed Marie-Emmanuelle Haas as the sole Panelist in this matter on January 26, 2010. 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 the registered owner of various international trademarks for the word XENICAL, such as notably International Registration Nos. 612 908 and 699 154, which have been registered respectively since December 14, 1993 and July 28, 1998 for products under international class 5 (namely “pharmaceutical, veterinary and sanitary preparations”) and enjoys protection in a multitude of countries. The Complainant uses its mark XENICAL to designate an oral prescription weight loss medication. The Complainant claims it holds numerous registrations for the mark XENICAL in more than a hundred countries worldwide.
The domain name <phentermine-xenical-4you.com> has been registered on November 21, 2009. According to the contact details, the Registrant is Above.com Domain Privacy, which appears to be a privacy service operated by the Registrar. The Center requested the Registrar to confirm that this is the current registrant. The registrant had used privacy registration services and the Registrar disclosed that the current registrant is in fact Transure Enterprise Ltd.
The Complainant contends that the domain name <phentermine-xenical-4you.com> is confusingly similar to the mark of the Complainant. The Respondent's domain name incorporates the Complainant's trademark in its entirety. The Complainant's trademark differs from the Respondent's domain name <phentermine-xenical-4you.com> only through the addition of the terms “phentermine”, which is a contraction of “phenyl-tertiary- butylamine” (an appetite suppressant to help reduce weight in obese patients) and “4you” and hyphens, which do not sufficiently distinguish the disputed domain name from the trademark.
The Complainant's use and registration of the mark XENICAL predates the Respondent's registration of the domain name <phentermine-xenical-4you.com>.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has exclusive rights for XENICAL and no licence, permission, authorization or consent was granted to use XENICAL in the disputed domain name. The Respondent's website is a search engine composed of sponsored links and does not appear to be used in connection with a bona fide offering of goods or services and therefore is not legitimate (See: Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085). The Respondent's reason for registering and using the domain name <phentermine-xenical-4you.com> is to benefit from the reputation of the mark XENICAL and illegitimately trade on its fame for commercial gain and profit.
The disputed domain name has been registered and used in bad faith. The Respondent must have been aware of the trademark and product XENICAL when registering the domain name <phentermine-xenical-4you.com> on November 21, 2009. The disputed domain name is being used in bad faith since the Respondent is intentionally attempting to attract Internet users to the disputed domain name by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent's website or the products or services posted on or linked to the Respondent's website and as to the Respondent's relationship to the Complainant's mark, which enjoys good reputation among doctors (see: Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085). The Respondent may generate unjustified revenues and is illegitimately capitalizing on the XENICAL trademark.
The Complainant requests the domain name <phentermine-xenical-4you.com> to be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
In view of the Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(1) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
The Complainant has clearly established rights in the mark XENICAL by appending evidence of two International Registrations enjoying protection in numerous countries all over the world. The Complainant claims its use of the mark XENICAL predates the registration of the disputed domain name. The mark XENICAL is registered for products in international class 5 (namely “pharmaceutical, veterinary and sanitary preparations”). The Complainant declares that the trademark XENICAL is used to designate an oral prescription weight loss medication without providing evidences of this use. In the absence of any Response, however, the Panel will accept as true all allegations and inferences as set forth by the Complainant.
The disputed domain name incorporates the Complainant's mark XENICAL in its entirety and merely adds the descriptive terms “phentermine” and “4you”. As stated earlier, “phentermine” is an abbreviation of the molecular formula of the Complainant's appetite suppressant. It does not affect the likelihood of confusion (see: Sanofi-Aventis, Aventis Pharma S.A., Merrell Pharmaceuticals Inc. v. George Breboeuf, WIPO Case No. D2005-1345, holding that the domain name <allegra-fexofenadine.info>, which adds to the trademark ALLEGRA the word “fexofenadine”, which is the active ingredient of the drug marked ALLEGRA, is confusingly similar to this trademark). The added term “4you” does not alter the likelihood of confusion since it is clearly a fashionable and commercial way to address the Internet user. The use of hyphens also does not affect the similarity. Hyphens are used in domain names for website referencing purposes, in order to distinguish each term in the domain name. In the present case, it will highlight the trademark XENICAL.
Additionally, in the Panel's view, the risk of confusion should be considered with even greater care since the products designated by the Complainant's mark are pharmaceuticals. Therefore, the likelihood of confusion could lead to the sale of harmful or inappropriate products.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark. The condition of paragraph 4(a)(i) of the Policy has been satisfied.
The Respondent did not submit a Response in this proceeding. Since the Respondent has not provided any evidence showing that it has rights or legitimate interests in the disputed domain name, the Panel will accept as true the allegations and inferences as set forth by the Complainant in the Complaint.
There is no evidence that the Respondent makes noncommercial or fair use of the disputed domain name without intention to divert consumers, as addressed under paragraph 4(c) of the Policy. To the opposite, the Respondent appears to make commercial gain since the disputed domain name is used for domain parking that generates pay per click revenue. Furthermore, there is no evidence that the Respondent has any connection or affiliation with the Complainant, and the latter asserts it has not consented to the Respondent's use of the trademark in the disputed domain name.
Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.
After considering all the evidence, the Panel finds that the Respondent was more than likely aware of the Complainant's rights in the prior trademark XENICAL. Its choice of the descriptive term “phentermine” – an appetite suppressant – whereas the Complainant's trademark is used to designate an oral prescription to loose weight, proves that it registered the disputed domain name with the intent to use it in relation with such drugs.
The Complainant's evidence shows that the disputed domain name resolves to a website containing advertising listings and links. These links are targeted to drugs and pharmaceuticals. The disputed domain name is not used to provide goods or services, but for domain parking that generates pay per click revenue. Therefore, it appears that the Respondent is intentionally using the disputed domain name to misleadingly divert customers for commercial gain. Thus it also creates confusion for Internet users as to the source, sponsorship, affiliation, or endorsement of the Respondent's website as addressed within the meaning of paragraph 4(b)(iv) of the Policy.
This constitutes bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(a)(i)(ii)(iii) and with Paragraph 4(b)(iv) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <phentermine-xenical-4you.com> be transferred to the Complainant.
Dated: February 9, 2010