WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. hoppla, Peder jarnbergh / WhoisGuard
Case No. D2010-1243
1. The Parties
Complainant is Hoffmann-La Roche Inc. of Nutley, New Jersey, United States of America, represented by Lathrop & Gage LLP, United States of America (“U.S.A”).
Respondent is hoppla, Peder jarnbergh of Eskilstuna, Sweden and WhoisGuard of Westchester, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <xenicalgenerisk.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2010. On July 28, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On July 28, 2010, eNom. 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 Complainant on August 2, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 5, 2010.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on August 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 6, 2010.
The Center appointed Lone Prehn as the sole panelist in this matter on September 29, 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 following facts have been alleged by Complainant and not refuted by Respondent:
Complainant is a leading manufacturer of pharmaceutical and diagnostic products. Complainant owns the XENICAL mark and XENICAL ORLISTAT mark for a pharmaceutical preparation for weight reduction and long-term management of weight in a multitude of countries worldwide.
Complainant’s parent company, F. Hoffmann-La Roche AG inter alia owns International Registration 699154 XENICAL and device which designates Sweden, with priority from July 28,1998.
Complainant has promoted the XENICAL mark extensively since at least 1994. Sales of the Xenical products have exceeded USD 100 million in the U.S.A. As a result, the XENICAL mark of Complainant has become well known in the U.S.A. and throughout the world.
Complainant's Swiss parent company owns and has registered the domain name <xenical.com>, through which Complainant's customers can obtain information on XENICAL products.
Complainant has not authorized Respondent to use its trademark XENICAL or XENICAL ORLISTAT or to incorporate the trademark XENICAL into any domain name.
The disputed domain name <xenicalgenerisk.com> resolves to a web site written in the Swedish language which offers a generic form of Xenical Orlistat for sale while depicting Complainant's registered XENICAL logo. In addition, competitive and other pharmaceutical products of third party competitors are for sale through the linked site “www.potensmedicin.com” without any permission from Complainant.
After learning of Respondent's registration of the Domain Name, Complainant on May 19, 2010, sent a letter by Certified Mail, return receipt requested, facsimile and by e-mail to Respondent's address indicated in the WhoIs record for the disputed domain name. In that communication Complainant advised Respondent that the registration of the Domain Name infringed its trademark rights and requested that Respondent transfer the Domain Name to Complainant. The letter transmitted by certified mail was returned to Complainant’s attorneys as “Return to sender – Not deliverable as addressed – Unable to forward/refused”. The facsimile and email appear to have been delivered to Respondent.
5. Parties’ Contentions
(a) The Domain Name is identical and confusingly similar to a trademark or service mark in which Complainant has rights;
(b) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(c) The Domain Name was registered and is being used by Respondent in bad faith.
The Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following: (i) that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and, (ii) that Respondent has no rights or legitimate interests in respect of the domain name; and, (iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides that for the purposes of paragraph 4(a)(iii) the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that Respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) registration of a domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) registration of a domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) use of the domain name, with the intention to attract, for commercial gain, Internet users to the web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location.
A. Identical or Confusingly Similar
The disputed domain name contains Complainant's entire XENICAL trademark. Complainant is the owner of numerous XENICAL trademark registrations, including registrations with validity in Sweden.
As such the Panel finds, that the disputed domain name “is identical or confusingly similar to a trademark or service mark in which the complainant has rights”. The fact that the word “generisk” (which means “generic” in Swedish) has been added to Complainant's mark to form the Domain Name is in this case not sufficient to alter that conclusion.
The addition of the suffix “generisk,” equivalent to the English word “generic,” would not avoid confusion and does not create any distinctiveness that helps eliminate the possibility of confusion. In similar cases, the addition of the prefix “generic” was considered insufficient to avoid confusion between a disputed domain name and a trademark. See Eli Lilly Company v. Ron Stopchycki, WIPO Case No. D2007-1885, regarding the domain name <genericzyprexa.com>, stating that “it has been well-established by panels in previous WIPO UDRP decisions that the mere addition of a common or descriptive word, such as ‘generic', to a trademark is not sufficient to avoid a finding of confusing similarity with that trademark”. See also Merrell Pharmaceuticals Inc., Aventis Pharma SA v. Filips Kostins, WIPO Case No. D2004-0943.
Numerous UDRP panel decisions concerning Complainant’s trademark XENICAL have established that the addition of generic terms to Complainant’s trademark in a domain name does not alter the fact that the domain name is confusingly similar to the mark, see e.g. F. Hoffmann-La Roche AG v. Ritu Rathore, WIPO Case No. D2006-1354 <xenicalsplendor.com>; F. Hoffmann-La Roche AG v. Brave, WIPO Case No. D2006-1603 <buyxenical.net>; Hoffmann-La Roche Inc. v. UrProxy Domains, WIPO Case No. D2007-0456, <xenical-online.info> and <xenical-prescription.org> (et al); F. Hoffmann-La Roche AG v. Alexey Matveychuk, WIPO Case No. D2007-0899 <buyxenicalhere.info> and F. Hoffmann-La Roche AG v. Anna Valdieri, WIPO Case No. D2007-0956 <xenicaldiet.com>.
Based upon the foregoing, the Panel finds that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
“Xenical” is not a dictionary word and has common use other than in connection with Complainant's trademark. Complainant has not authorized Respondent to use its trademark XENICAL or to incorporate the trademark into any domain name.
Once Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, the responsibility shifts to Respondent to show that it has rights or legitimate interests in respect to the disputed domain name.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name and Respondent has failed to assert any such rights.
The Panel finds Complainant has established such prima facie case inter alia due to the fact that Complainant has not licensed or otherwise permitted Respondent to use the XENICAL trademark or a variation thereof. Respondent has not submitted a Response and has not provided any evidence to show he has any rights or legitimate interests in the disputed domain name.
In addition, several panel decisions have found that a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical company's mark and that is being used to direct consumers to an on-line pharmacy selling competing goods, see Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Complainant must show that Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)).
Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
It is suggestive of Respondent's bad faith that the trademark of Complainant was registered long before the registration of the disputed domain name. Complainant submitted evidence, which shows that Complainant's trademark XENICAL is registered and is known in the healthcare and pharmaceutical industry and that its trademark would be recognized publicly.
A review of the web site operating under the disputed domain name shows that the content refers directly to the Xenical drug and provides information about it and about Complainant, which is clear evidence that Respondent registered the disputed domain name with knowledge of Complainant and the XENICAL trademark and product with the intent of operating a web site offering said information and links to online pharmacies and increasing the likelihood that Internet users would be confused and identify Respondent as either the source of the goods or as being associated with Complainant.
The Panel notes that Respondent’s use of the disputed domain name for advertising the Xenical medication and directing consumers to an on-line pharmacy also amounts to bad faith use of the disputed domain name. See Herbalife International, Inc v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith”.
As noted, the disputed domain name is being used by Respondent in connection with the offering of information regarding the Xenical drug, and directs consumers to on-line sales of Xenical and other drugs. Internet users are likely to be confused as to the source of the information on the web site and associate the web site and links available therein with Complainant. Such use is in bad faith.
It is therefore the finding of the Panel that Respondent registered and is using the disputed domain name in bad faith.
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 <xenicalgenerisk.com> be transferred to Complainant.
Dated: October 13, 2010