WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. WhoisGuard/ Oursafeonlinepharmacy, John O'Sullivan
Case No. D2010-1023
1. The Parties
The Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented by Lathrop & Gage LLP, United States of America.
The Respondent is WhoisGuard/ Oursafeonlinepharmacy, John O'Sullivan of Mississauga, California, United States of America.
2. The Domain Name And Registrar
The disputed domain name <orlistatxenical.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2010. On June 22, 2010, the Center transmitted by email to eNom, Inc a request for registrar verification in connection with the disputed domain name. On June 23, 2010, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named the Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 6, 2010 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 July 8, 2010. 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 July 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2010.
The Center appointed Amund Grimstad as the sole panelist in this matter on August 17, 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.
4. Factual Background
The Complainant, together with its affiliated companies is one of the leaders in research and development of pharmaceutical and diagnostic products in the world.
The XENICAL® mark is protected as a trademark for a pharmaceutical preparation for weight reduction and long-term management of weight in a multitude of countries worldwide. For example, XENICAL is registered to Complainant in the United States Patent and Trademark Office ("U.S.P.T.O.") under Reg. No. 1,906,281, having a registration date of July 18, 1995, and a first use date of March 18, 1994. Complainant also owns the registration XENICAL ORLISTAT 120 MG CAPSULES registered on January 19, 2010 under Reg. No. 3,739,382.
The mark XENICAL designates a pharmaceutical preparation, namely, a pharmaceutical product indicated for weight reduction and long-term management of weight. The Complainant's mark XENICAL was extensively promoted for many years and the Complainant has used its pharmaceutical preparation bearing the XENICAL mark since March, 1994 in the United States. Sales of the XENICAL pharmaceutical preparation are in the hundreds of millions of dollars in the United States alone.
As a result of such sales and advertising, and its fair dealings with customers, the XENICAL mark of Roche has become well-known in the United States and throughout the world.
F. Hoffmann-La Roche AG, the Swiss parent of the Complainant, owns and has registered the domain name <xenical.com>.
The disputed domain name <orlistatxenical.com> has been registered on April 30, 2010.
5. Parties’ Contentions
The Respondent’s domain name <orlistatxenical.com> is confusingly similar to the XENICAL and XENICAL ORLISTAL 120 MG CAPSULES trademarks.
The Respondent’s domain name consists of the Complainant’s trademark XENICAL with the addition of the word “orlistat” and the gTLD “.com”. “Orlistat” is the genric name of the medication sold under the trademark XENICAL. The additions are not sufficient to avoid the finding of similarity.
The Complainant further states that the Respondent should be considered as having no rights or legitimate interests in respect of the domain name <orlistatxenical.com>. The Complainant has rights in the trademark XENICAL, which precede the Respondent’s registration of the domain name.
The Complainant argues that the Respondent has failed to show any legitimate interest in the use of the disputed domain name and that the Respondent is not using the domain name for a bona fide offering of goods or services.
The Complainant has not authorized the Respondent to use the Complainant’s trademarks XENICAL in a domain name or otherwise.
The Complainant argues that the disputed domain name has been registered in bad faith. The Complainant requests as remedy the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion And Findings
In order for the Complainant to prevail and have the disputed domain name <orlistatxenical.com> transferred to it, the Complainant must prove the following (the Policy, paragraph 4(a)(i-iii)):
- The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
In order for the Complainant to successfully argue that the domain name should be transferred to the Complainant, the domain name must be identical or confusingly similar to a trademark or service mark in which the Complainant has rights. (Policy, paragraph 4(a)(i)).
The domain name <orlistatxenical.com> contains the XENICAL trademark, thereby creating a similarity to this trademark.
The domain name of the Respondent consists of the trademark of the Complainant XENICAL and the addition of the word “orlistat”. Orlistat is the generic term of the medication in question. The mere addition of the term “orlistat”, to the mark, does not change the overall impression of the designations as being domain names connected to the mark, see for example America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004.
The gTLD “.com” is not relevant in assessing whether the domain name is confusingly similar to the Complainant’s trademark.
The use of the trademark in the domain name is likely to create confusion amongst Internet users as to whether the web site to which the domain name resolves is endorsed by or affiliated in some way with the Complainant.
The first requirement of the Policy has therefore been fulfilled.
B. Rights or Legitimate Interests
Secondly, the Complainant must show that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)).
There is no evidence that the Respondent has used the domain for a bona fide offering of goods or services. However, in the present case the Respondents domain is used to link to a site selling products in competition with the Complainants product.
The Complainant has not authorized the Respondent to use the Complainant’s trademark XENICAL in a domain name or otherwise.
Based on the record and in the absence of submissions from the Respondent, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Finally, the Complainant must show that the domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
The Complainant’s product and trademark are famous. It is likely that the Respondent was aware of the Complainant’s reputation in the pharmaceutical industry, and its products and trademarks, when the Respondent registered the domain name.
The Panel agrees with the decision rendered in Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co,. WIPO Case No. D2000-0163, in which it was established that bad faith may be present where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”.
The use of the trademark XENICAL, with the addition of the generic word “orlistat” in addition to the fact that the site is linked to a site selling generics suggests that the Respondent is deliberately trying to free ride on the goodwill of the Complainant. This leads the Panel to conclude that the domain name was registered and is being used in bad faith.
The third requirement of the Policy has therefore been fulfilled.
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,<orlistatxenical.com> be transferred to the Complainant.
Dated: August 31, 2010