WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Andrey Marusich
Case No. D2010-1296
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland represented internally.
The Respondent is Andrey Marusich of Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <xenicalpurchase.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2010. On August 3, 2010, the Center transmitted by email to eNom, Inc., a request for registrar verification in connection with the disputed domain name. On August 3, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Registrar also confirmed that the domain name <xenicalpurchase.com> had been placed on registrar lock status to prevent any transfers or changes to the registration information during the proceedings.
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”).
The undersigned Panel has independently determined and agrees with the Center’s assessment that the Complaint is in formal compliance with the requirements of the Policy, the Rules, and 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 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2010.
The Center appointed Pedro W. Buchanan Smith as the sole panelist in this matter on September 2, 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.
This Panel further considers that the Complaint was properly notified to the Respondent, as provided for in paragraph 2(a) of the Rules.
The Panel has not received any further requests from the Complainant or the Respondent regarding submissions or waivers, extensions of deadlines and the Panel has not found it necessary to request any further information, statements or documents from the parties, nor the need as an exceptional matter, to hold any in-person hearings as necessary for deciding the Complaint, as provided for in paragraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of domain name dispute proceedings.
The language of the proceeding is English, pursuant to paragraph 11(a) of the Rules.
4. Factual Background
Based on the information provided by the Complainant, and considering that the same was not disputed by the Respondent, the following facts and circumstances are recognized within this proceeding:
The Complainant is together with its affiliated companies one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries. The Complainant’s mark XENICAL is protected as trademark in a multitude of countries worldwide. As an example reference is made to the International Registration Nos. 612908 & 699154, certificates of which were submitted by the Complainant as Annex 3. 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 on a worldwide basis.
The disputed domain name registered on July 22, 2010.
5. Parties’ Contentions
The disputed 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 “purchase” does not sufficiently distinguish the domain name from the trademark.
According to the 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”.
The Complainant’s use and registration of the mark XENICAL do predate the Respondent’s registration of the domain name.
The Complainant has exclusive rights for XENICAL, as mentioned above and no license or permission or authorization was granted to the Respondent to use XENICAL in the domain name. Furthermore, it is obvious that the Respondent uses the domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark XENICAL.
The Complainant stated that Internet users typing the disputed domain name are directed to a pharmacy on-line and, according to the Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 “several cases have found that a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer’s mark and that is being used to direct consumers to an on-line pharmacy”. The domain name in question clearly alludes to the Complainant and there is no reason why the Respondent should have any rights or legitimate interests in such domain name.
The domain name was registered in bad faith since at the time of the registration on July 22, 2010, the Respondent had, no doubt, knowledge of the Complainant’s well-known mark XENICAL.
The domain is being used in bad faith. This is obvious since when viewing the website associated with the domain name one realizes that the Respondent has intentionally attempted (for commercial purpose) to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of the Respondent’s website or products and services posted on the Respondent’s website.
According to above mentioned Pfizer Inc. v. jg a/k/a Josh Green, supra, bad faith is established when “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy”.
Furthermore, that similar to F. Hoffmann-La Roche AG vs. Pinetree Development, Ltd., WIPO Case No. D2006-0049 (the website resolving to the disputed domain name has been used to provide an online pharmacy which offers various drugs which directly compete with the Complainant.
The use of the disputed domain name thus appears to be an attempt to attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark. This is evidence of bad faith registration and use pursuant to the Policy, paragraph 4(b).
The Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them by making them believe that the websites associated with the domain name is associated or recommended by the Complainant.
As a result, Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the XENICAL trademark fame.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel considers that the Respondent, by registering the disputed domain name with the Registrar (an Internet Corporation for Assigned Names and Numbers’ –ICANN– accredited domain name registrar), agreed to be bound by all terms and conditions of the Registrar’s Agreement, and any pertinent rule or policy, and particularly agreed to be bound by the Policy (incorporated and made a part of the Registrar’s Agreement by reference), which requests that proceedings be conducted according to the Rules and the selected administrative-dispute-resolution service provider’s supplemental rules, in the present case being the Supplemental Rules. Therefore, the dispute subject matter of this proceeding is within the scope of the above mentioned agreements and Policy, and this Panel has jurisdiction to decide this dispute.
Furthermore, the Panel considers that in the same manner, by entering into the above mentioned Registrar Agreement, the Respondent agreed and warranted that neither the registration of its domain name nor the manner in which it intended to use such domain name would directly or indirectly infringe the legal rights of a third party, and that as a result of a dispute under the Policy, Respondent’s domain name registration services might be suspended, cancelled or transferred.
The Panel also particularly considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met.
Such requirements include that the Parties and particularly the Respondent in this case be given adequate notice of the proceedings; that the Parties may have a fair and reasonable opportunity to exercise their rights and to present their respective cases; that the composition of this Panel be properly made and the Parties be notified accordingly; and that both Parties be treated with equality in these administrative proceedings.
In this case, the Panel is satisfied that these proceedings have been carried out by complying with such elemental due diligence requirements, and particularly contemplating the notification of the filing of the Complaint and the initiation of these proceedings giving the Respondent a right to respond.
Paragraph 4(a) of the Policy directs that the Complainant must prove the presence of each of the following elements: (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) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This Panel finds that the Respondent’s domain name <xenicalpurchase.com> is confusingly similar to Complainant’s well-known XENICAL trademark. The Complainant’s trademark was registered significantly earlier than the date of registration of the Respondent’s domain name <xenicalpurchase.com>.
In addition, the domain name <xenicalpurchase.com> wholly comprises Complainant’s ACCUTANE trademark, with the addition of the word “purchase”. Although the word “purchase” is generic, its composition with the Complainant’s trademark makes the domain name <xenicalpurchase.com> confusingly similar to the Complainant’s XENICAL trademark.
Furthermore, the addition of the gTLD “.com” is not a distinctive element, it is just a necessary element required for the registration of a first level domain name.
B. Rights or Legitimate Interests
This Panel finds, from the information and facts that were analyzed and from the lack of evidence to the contrary, that there is no indication that the Respondent has any rights or legitimate interests in connection with the disputed domain name that the disputed domain name is being used to intentionally misdirect to the Respondent’s website visitors who attempt to visit Complainant’s website; that the Respondent has not used nor prepared to use the <xenicalpurchase.com> domain name in connection with any good faith offering of goods or services as contemplated under paragraph 4(c)(i) of the Policy; nor that the Respondent is commonly known by the domain name as contemplated under paragraph 4(c)(ii) of the Policy; nor that the Respondent is 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 as contemplated under paragraph 4(c)(iii) of the Policy. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the domain name under paragraph 4(a)(ii) of the Plicy.
C. Registered and Used in Bad Faith
The Panel finds, from the information and facts that were analyzed, and from the lack of evidence to the contrary, that the registration and use of the domain name <xenicalpurchase.com> by the Respondent is in bad faith pursuant to paragraph 4(b)(iv) of the Policy, in particular but without limitation in view of the fact that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark XENICAL, as to the source, sponsorship, affiliation, or endorsement of the website “www.xenicalpurchase.com”. Indeed, at the time the Complaint was filed, the disputed domain name directed Internet users to online pharmacy. This is evidence of registration and use in bad faith disputed domain name F. Hoffmann-La Roche AG v. Sergery Popov, WIPO Case No. D2009-0983.
Therefore, and in consideration of the Complaint’s compliance with the formal requirements for this domain name dispute proceeding, to the factual evidence and legal contentions that were submitted, to the conclusive confirmation of the presence of each of the elements contemplated in paragraph 4(a)(i), (ii) and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15(a) of the Rules, this Panel orders that the domain name <xenicalpurchase.com> be transferred to the Complainant.
Pedro W. Buchanan Smith
Dated: September 16, 2010