The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is MFS Holdings of Grouville, United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <uk-xenical-online.com> (“Disputed Domain Name”) is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2010. On February 26, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Disputed Domain Name. On March 1, 2010, Tucows 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 March 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 26, 2010.
The Center appointed Michael A. Albert as the sole panelist in this matter on April 6, 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, together with its affiliated companies, is one of the world's leading researchers and developers of pharmaceutical and diagnostic products, having global operations in more than 100 countries.
The Complainant holds several international trademark registrations for the XENICAL mark (“the Mark”) for an oral prescription weight loss medication. For example, on December 14, 1993, the Complainant registered the Mark under the Madrid System for the International Registration of Marks as International Registration No. 612,908, which was designated in 26 countries in 1993 and has since expanded to nearly 50. Similarly, on July 28, 1998, the Complainant obtained International Registration No. 699,154 for a stylized form of the Mark in 38 countries, including the United Kingdom.
The WhoIs record indicates that the Respondent registered the Disputed Domain Name on November 8, 2002. The Disputed Domain Name, <uk-xenical-online.com>, contains the entire XENICAL mark of the Complainant.
The Complainant contends that it holds registrations for the Mark in over one hundred countries. The Complainant further contends that its use and registration of the Mark predates the Respondent's registration of the Disputed Domain Name. The Complainant further contends that the Disputed Domain Name is confusingly similar to the Mark because it incorporates the Mark in its entirety, and that the addition of “uk” and “online” are merely descriptive, and fail to distinguish the Disputed Domain Name from the Mark.
The Complainant further contends that the Disputed Domain Name clearly alludes to the Complainant, that the Complainant never granted the Respondent permission to use the Mark, and that the Respondent has no right or interest in the Disputed Domain Name. The Complainant further contends that the Respondent's only reason for registering and using the Disputed Domain Name is to benefit from the reputation of the Mark and illegitimately trade on its fame for commercial gain and profit. The Complainant further contends that such use does not constitute a bona fide offering of goods or services.
The Complainant further contends that the Respondent surely had knowledge of the Mark at the time the Respondent registered the Disputed Domain Name in 2002 because the Xenical product launch occurred in 1998, and therefore contends that the registration was performed in bad faith.
The Complainant further contends that the Respondent is also using the Disputed Domain Name in bad faith because the website to which the Disputed Domain Name resolves reflects an intentional attempt to attract users to the Respondent's website for a commercial purpose by creating a likelihood of confusion with the Mark. Specifically, the Complainant contends that the Respondent is using the Mark's good reputation among doctors to attract online consumers to sponsored website links by confusing them as to the Complainant's sponsorship or affiliation with these websites, and by doing so generating revenues for each click-through made by online consumers. The Complainant further contends that this amounts to the Respondent illegitimately capitalizing on the fame of the XENICAL mark.
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 in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the Disputed Domain Name should be cancelled or transferred:
(i) 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;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Respondent provided no Response, and the deadline for so doing expired on March 25, 2010. Accordingly, the Respondent is in default. Given the Respondent's default, the Panel can infer that the Complainant's allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Nonetheless, the Complainant retains the burden of proving the three requisite elements of paragraph 4(a).
The Complainant has provided sufficient evidence showing that it is the owner of the XENICAL mark. The Complainant does not have a trademark registration of the phrase “uk-xenical-online”. The Disputed Domain Name and the Complainant's trademark are not identical. Therefore, the issue is whether the Disputed Domain Name and the Complainant's trademark are confusingly similar.
The Disputed Domain Name combines three elements: (1) the Complainant's XENICAL mark; (2) the prefix “uk” and the suffix “online”; and (3) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “uk-xenical-online”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.
Prior WIPO UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered mark. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758 (finding <attelephone.com> confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding <quixtarmortgage.com> legally identical to QUIXTAR).
Moreover, the addition of the terms “uk” as a prefix and “online” as a suffix to the XENICAL mark does not mitigate the confusing similarity between the Disputed Domain Name and the Complainant's Mark. First, the prefix “uk” is geographically descriptive, especially since the Mark is registered in the United Kingdom. Consequently, the addition of this prefix does not negate the confusing similarity between the Mark and the Disputed Domain Name. PepsiCo, Inc. v. Kieran McGarry, WIPO Case No. D2005-0629 (finding <pepsiusa.com> confusingly similar to PEPSI); Dell Computer Corporation .v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363 (finding <delluk.com> confusingly similar to DELL).
Second, the term “online” exploits the trademark signification of XENICAL by leading customers to understand the Disputed Domain Name to offer for sale the Complainant's product. Indeed, adding the suffix “online” to the Mark does not prevent and likely encourages Internet users to believe there is a connection between the Respondent's website and the XENICAL trademark. Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0565. Therefore, the “online” suffix actually increases the risk of confusion. Credit Lyonnais v. Jehovah Technologies Pte LTD, WIPO Case No. D2000-1425 (finding <creditlyonnaisonline.com> confusingly similar to CREDIT LYONNAIS); Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406 (finding <dixons-online.com> confusingly similar to DIXONS).
For the all of the foregoing reasons, this Panel finds that the Disputed Domain Name <uk-xenical-online.com> is confusingly similar to the Complainant's XENICAL mark, in which the Complainant has established rights. Therefore, the Panel finds that the Complainant has proven the first element of the Policy.
Under the Policy, paragraph 4(c), rights or legitimate interests in domain names may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
The Complainant contends that the Respondent has no rights to use the XENICAL mark. The Complainant has alleged, and the Respondent has not denied, that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, is not commonly known by the domain name, and is misleading customers for commercial gain.
Indeed, prior WIPO UDRP panels have found no bona fide offer of goods or services where a trademark is used in connection with a “parking” website, that is, where a trademark is used to attract Internet traffic to a website containing sponsored links which generate click-through revenue for the respondent. Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462 (finding no bona fide offer where trademark was used to generate revenue through “parking” website); Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267 (same); Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258 (same). Therefore, the Respondent's use cannot constitute a bona fide offering of goods or services.
For all of the foregoing reasons, this Panel finds that the Complainant has proven that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Therefore, the Panel is convinced that the Complainant has proven the second element of the Policy.
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy Paragraph 4(b)(iv), occurs when the Respondent attempts to attract, for commercial gain, Internet users to the Respondent'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 Respondent's website or of a product or service on the Respondent's website.
The Panel finds compelling circumstantial evidence that the Respondent likely knew of the Complainant's Mark when it registered the Disputed Domain Name. The XENICAL mark appears to have been used in dozens of countries for about four years prior to the Respondent's registration of the Disputed Domain Name. Because the term “xenical” is not descriptive of anything and has been used in connection with the Complainant's Mark, it is very unlikely that the Respondent would have registered a domain name incorporating the Mark without knowledge of the Mark. Based on the foregoing circumstantial evidence, the Panel finds that the Respondent registered the Disputed Domain Name in bad faith. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (“It defies common sense to believe that Respondent coincidentally selected these precise domain names without any knowledge of Complainant and its PROFORCE Trademarks.”).
The Panel also finds that the Respondent used the Disputed Domain Name in bad faith. In similar circumstances, prior WIPO UDRP panels have found the use of a parking page to derive a financial benefit from web traffic diverted through the Disputed Domain Name to linked websites on the parking page evidences bad faith. Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857 (finding use of trademark to generate revenue through “parking” website constitutes bad faith use). Such use can support a finding of bad faith even where the sponsored links are do not necessarily contain offers for competing products or services. Bayerische Motoren Werke AG v. bmwrider llc, WIPO Case No. D2008-0610 (finding bad faith use based on “existence of links per se”, regardless of the advertising content on parking page links).
Here, the Respondent appears to be deriving a financial benefit from web traffic diverted through the Disputed Domain Name to linked websites on the “parking” page. Even though most of the Respondent's links do not appear to offer competing goods or services, this does not preclude a finding of bad faith. Thus, the Panel accepts that the Respondent has intentionally attracted Internet users to its websites or other online locations for commercial gain through confusion as to the source, affiliation or endorsement of the website or location. This amounts to evidence of bad faith use under paragraph 4(b)(iv) of the Policy.
For all of the foregoing reasons, this Panel finds that the Complainant has proven that the Respondent registered and is using the Disputed Domain Name in bad faith. Therefore, the Panel is convinced that the Complainant has proven the third and final 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 Disputed Domain Name, <uk-xenical-online.com>, be transferred to the Complainant.
Michael A. Albert
Dated: April 22, 2010