WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Domain Admin, PrivacyProtect.org / Sergey Mishin
Case No. D2010-1256
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Domain Admin, PrivacyProtect.org / Sergey Mishin of Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <buy-xenical.org> (the “Domain Name”) is registered with DomainContext, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2010. On July 29, 2010, the Center transmitted by email to DomainContext, Inc. a request for registrar verification in connection with the Domain Name. On July 29, 2010, DomainContext, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the 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. The Complainant filed an amendment to the Complaint on August 3, 2010. 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 August 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2010. The Respondent did not submit any response.1 Accordingly, the Center notified the Respondent’s default on August 24, 2010.
The Center appointed Craig Edward Stein as the sole panelist in this matter on September 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.
4. Factual Background
The Complainant is a company duly organized under the laws of Switzerland. Together with its affiliated companies, the Complainant is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and has global operations in more than 100 countries. The Complainant’s mark XENICAL is protected as a trademark in a multitude of countries. As an example, the Complainant attached its International Registration Nos. 612908 and 699154 certificates to the Complaint. The priority date for the mark XENICAL is 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. For the mark XENICAL the Complainant holds registrations in over hundred countries.
The Domain Name was registered on July 19, 2010. Because the Respondent did not respond to the Complaint, no other information concerning the Domain Name or the Respondent appears in the case file.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s mark seeing that it incorporates this mark in its entirety. The addition of the generic term “buy” and a “hyphen” does not sufficiently distinguish the Domain Name from the trademark. See, Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694 (“generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”). Furthermore, the Complainant’s use and registration of the mark XENICAL predates the Respondent’s registration of the Domain Name.
In addition, the Complainant contends that it has the exclusive rights for XENICAL and that it has not granted a license, permission or in any other manner authorized the Respondent to use XENICAL in the Domain Name. Moreover, the website to which the Domain Name resolves consists of a search engine that contains sponsored links. Here, as in Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085, “using the [d]omain [n]ame to mislead users by diverting them to a search engine (…) does not appear to be use in connection with a bona fide offering of goods or services and therefore legitimate”. According to the Complainant, the Respondent’s only reason in registering and using the Domain Name is to benefit from the reputation of the trademark XENICAL and illegitimately trade on its fame for commercial gain and profit.
So too, the Complainant maintains that the Domain Name was registered in bad faith. First, the Complainant asserts that the Domain Name was not registered until July 19, 2010, many years after the Complainant secured trademark status for XENICAL.
Similarly, the Complainant argues that the Domain Name is being used in bad faith. The Complainant bases this contention on the content of the website to which the Domain Name resolves. Besides a basic search engine, there appear several sponsored links from which it is inferred that the Domain Name registrant derives income for each click-through that occurs. According to the Complainant, the Respondent is intentionally attempting, for commercial purpose, to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark, which has a good reputation among doctors, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products or services posted on or linked to the Respondent’s website. Again, relying on the matter of Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085, the Complainant alleges that “the [r]espondent’s commercial use of the [d]omain [n]ame to increase Internet traffic at a search engine is evidence of bad faith under Policy, para. 4(b)(iv) and the use of the [d]omain [n]ame is likely to result in consumer confusion as to the [c]omplainant’s supposed affiliation with the search engine and its operators.” Thus, the Complainant contends that the Respondent, by using the Domain Name, is intentionally misleading and confusing consumers so as to attract them to other websites by making them believe that the websites behind the sponsored links are associated or recommended by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Standards and Burden of Proof
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
i) the domain name in issue is identical or confusingly similar to the Complainant’s trademark or service mark; and
ii) 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.
Paragraph 4(b) of the Policy sets out four illustrative, non-exclusive circumstances, which, if demonstrated by the complainant, for the purposes of paragraph 4(a)(iii) shall be deemed evidence of a respondent’s bad faith registration and use of a domain name.
Paragraph 4(c) of the Policy sets out three descriptive, non-exclusive situations, any one of which, if proved by a respondent, shall be considered as evidence of the respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii).
In light of the Respondent’s default, the Panel accepts as true all of the reasonable factual allegations contained in the Complaint. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the XENICAL mark and that the protected mark, in its entirety is contained within the Domain Name. The only question that remains is whether the addition of the word “buy” and a hyphen preceding the mark in any manner affect whether the Domain Name is either identical or confusingly similar.
Manifestly, as UDRP decisions demonstrate, the addition of a generic or descriptive word does not alter the confusion engendered by the inclusion of a trademark in its entirety. Indeed, here, the word “buy” could connote some endorsement on the part of the trademark holder. For this reason, other UDRP decisions that have considered combination of words in challenged Domain Names that included both the trademark XENICAL and the word “buy”, have uniformly found confusing similarity. See, F. Hoffman-La Roche AG v. eLogix, WIPO Case No. D2010-1103 (<buyxenical-online.org>); F. Hoffman-La Roche AG v. Pavlishin Mihail, WIPO Case No. D2010-0799 (<buyxenical.biz>); F. Hoffman-La Roche AG v. Andrei Kosko, WIPO Case No. D2010-0762 (<buygenericxenical.net>); F. Hoffman-La Roche AG v. Alexei Golubev, Alex S&A, WIPO Case No. D2009-0451 (<buy-xenical.biz>); F. Hoffman-La Roche AG v. sysadmin admin, balata.com ltd., WIPO Case No. D2008-0954 (<buy-xenical-000.biz>); F. Hoffman-La Roche AG v. Digi Real Estate Foundation, WIPO Case No. D2007-0946 (<buyxenical.com>); F. Hoffman-La Roche AG v. Brave, WIPO Case No. D2006-1603 (<buyxenical.net>); F. Hoffman-La Roche AG v. Drug Sale, WIPO Case No. D2006-0066 (<buy-cheap-xenical.com>).
Accordingly, the Complainant has established the first prong of the tri-partite test to justify transfer of the Domain Name.
B. Rights or Legitimate Interests
The Panel turns to the language contained in WIPO Overview of WIPO Panel Views on Selected UDRP Questions which clearly articulates the consensus view for the procedure to follow in determining whether the Complainant has proven this prong of the Policy requirements. As stated at Section 2.1,
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore, a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
Here, there is no evidence that the Respondent has any rights or legitimate interest in the Domain Name. Indeed, the Respondent’s typo-squatting is the exact obverse of either fair or legitimate noncommercial use of a domain name. See Time Warner Entertainment Company, L.P., and Hanna-Barbera Productions Inc. v. John Zuccarini, Cupcake Patrol, and the Cupcake Patrol, WIPO Case No. D2001-0184.
Thus, the Complainant has satisfied the second prong of the Policy as well.
C. Registered and Used in Bad Faith
As for registering the name in bad faith, the Panel agrees with the Complainant that the fact that the XENICAL trademark was secured on a worldwide basis for over a decade before the Domain Name was registered shows that the Respondent was well aware of the trademark and intended to benefit from its value on the day it registered the Domain Name.
With regard to using the Domain Name in bad faith, the Complainant has demonstrated that the Domain Name resolves to a web page that contains a search engine and sponsored links. The Panel concurs with the understanding of several other UDRP panels that the use of a domain name to point to a web site that offers search engine services and sponsored links to the complainant’s competitors is evidence of bad faith. See, Mudd, (USA) LLC v. Unasi, Inc. (MUDDPRODUCTS-COM-DOM), WIPO Case No. D2005-0591; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556.
Accordingly, the conditions set forth in paragraph 4(a)(iii) of the Policy have been demonstrated. This Respondent has been shown to have acted in bad faith when registering and using the Domain Name.
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,<buy-xenical.org> be transferred to the Complainant.
Craig Edward Stein
Dated: September 22, 2010
1 On August 10, 2010, an individual identified only as “Sergey” transmitted an e-mail to the Center stating, “Hello, I don't know English. Can we discuss, this problem in Russian?” The Center responded by e-mail the same day that “[f]urther to paragraph 11 of the Rules, we note that the Registrar, DomainContext, Inc., has confirmed that the Registration Agreement is in English, and thus the proceedings will be in English unless the Parties mutually agree otherwise, and subject to the authority of the Panel to determine otherwise.”