The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented internally.
The Respondent is Shahab Shapourifar Vancouver, British Columbia, Canada.
The disputed domain name <officialxenical.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2009. On December 21, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 21, 2010, GoDaddy.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 for the disputed domain name. 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 December 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 21, 2010.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on February 23, 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, F. Hoffman-La Roche AG is a company duly organized under the laws of Switzerland.
The Complainant is an internationally known pharmaceutical company. It is the owner in numerous countries of registrations for the trademark XENICAL since August 5, 1993.
The mark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off.
The Complainant argues that the Company is one of the world's leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics. The Complainant registered the trademark XENICAL in a multitude of countries, with priority date of August 5, 1993. The domain name in dispute is confusingly similar to the trademark because it incorporates the mark in its entirety. In addition, the descriptive term “official” does not sufficiently distinguish the domain name from the Complainant's trademark. The Complainant contends that the registration of the mark XENICAL is previous to the registration of the domain name.
Complainant argues that it has exclusive rights for XENICAL and no license/permission/authorization or consent was granted to use XENICAL in the domain name. Respondent's website is a search engine composed of sponsored links and benefits from the reputation of the Complainant's trademark.
The domain name was registered and is being used in bad faith since at the time of the registration in November 24, 2009, the Respondent had knowledge of the trademark XENICAL. Additionally, the Complainant says that the Respondent's intentions are to attract Internet users to the Respondents website by creating a likelihood of confusion and making them believe that the websites behind the links are associated or recommended by the Complainant.
There was no Response filed by the Respondent.
It is open for the Panel to infer from the Respondent's failure to file a Response that the Respondent does not dispute the Complainant's contentions and otherwise to make such inferences from this as the Panel may see fit.
According to Paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
ii) that 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.
The disputed domain name is confusingly similar to trademark XENICAL in which the Complainant has rights. The Complainant made an International Registration of the trademark XENICAL with a priority date August 5, 1993.
The domain name incorporates the Complainant´s mark in its entirety and is “confusingly similar” to a mark in which Complainant has rights. The addition of the word “official” is generic, and does not reduce the confusing similarity between the disputed domain name and the Complainant's mark (See LEGO Juris A/S v. APF Media, WIPO Case No. D2009-1095; The Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd., WIPO Case No. D2009-0331; Sanofi-Aventis v. Debra Cook, WIPO Case No. D2007-0060; National Association for Stock Car Auto Racing, Inc. v. Imaging Solutions, WIPO Case No. D2001-0777; LANCOME PARFUMS ET BEAUTE & CIE, L'OREAL v. 10 Selling, WIPO Case No. D2008-0226).
The Panel notes additionally that 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 eventually lead to the sale of harmful or inappropriate products (See F. Hoffmann-La Roche AG v. PrivacyProtect.org/Catch4 Technologies, WIPO Case No. D2009-1721).
Accordingly, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 or service mark at issue.
The Complainant has exclusive rights for XENICAL and no license, permission or authorization was granted to use XENICAL in the domain name. The Respondent has not provided any evidence of rights or legitimate interest in the domain name. The Respondent is using the confusingly similar domain name to mislead consumers, so what Respondent is doing cannot be viewed as bona fide. Furthermore, nothing indicates that the Respondent is making a legitimate non-commercial or fair use of the domain name.
The Complainant has prior rights in the trademarks which precede the Respondent's registration of the domain name by several years. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 2.1; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trademark rights in respect of the domain name or that the domain name is used in connection with a bona fide offering of goods or services.
Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
For the purpose of paragraph 4(a)(iii) of the Policy, if the following circumstances, in particular but without limitation, are found by the Panel to be present, it shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from using the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on the holder's website or location.
The Complainant must establish that the domain name was registered in bad faith and is being used in bad faith (See Sanofi-aventis, Avnetis Pharmaceutical Holdings, Inc. v. Babak Azizzadeh, WIPO Case No. D2007-1727). Again, the Respondent has provided no explanation as to why the contested domain name was chosen. The Respondent is clearly aware of the XENICAL mark.
With the addition of the word “official” to the Complainant's XENICAL trademark, the Panel finds that there is no conceivable good faith use of the domain name <officialxenical.com> by the Respondent (See Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814 and Hoffmann-La Roche AG v. Old Navy ltd, Mihail Gordenco, WIPO Case No. D2009-0350).
Even though the Respondent's website is merely “parked”, the disputed Domain Name is in use within the meaning of paragraph 4(a)(iii) of the Policy (See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451). At present, it is parked at GoDadday free parking service with links to sites of other companies and organizations, including the Complainant's competitors. See Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537 (“the Panel is persuaded that Respondent's registration and use of the Disputed Domain Name for redirecting Internet users, particularly customers and potential customers of Complainants, from Complainant's website to the website of [Respondent], a company which directly competes with Complainants, constitutes bad faith and use”). Prior WIPO decisions support this conclusion. See also Edmunds.com, Inc. v. Ult Search, Inc., WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”).
In this case, the Complainant alleges that bad faith exists because, inter alia, the Respondent's website is using the disputed domain name to “promote pharmaceutical products of competitors,” evidencing bad faith under paragraph 4(b)(iv) of the Policy. The Panel agrees. There is bad faith because “[t]he only apparent reason to use [the complainant's trademark] as part of a domain name is to benefit from the goodwill associated with the mark” (See Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345; Hoffmann-La Roche Inc. v. UrProxy Domains, WIPO Case No. D2007-0456).
Further, in light of the strength of the XENICAL trademark – based upon its arbitrariness, and long-term and widespread usage – the Respondent's registration and use of the Disputed Domain Name represents “opportunistic bad faith” under the Policy (See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
For these reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith for the purposes of paragraph 4(a)(iii).
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, <officialxenical.com> be transferred to the Complainant.
Pablo A. Palazzi
Dated: March 9, 2010