World Intellectual Property Organization

Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Webmasters

Case No. D2010-1634

1. The Parties

The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.

The Respondent is Webmasters of Pasig City, Masbate, Philippines.

2. The Domain Name and Registrar

The disputed domain name <cheapxenicalonline.com> (also referred to as the “Domain Name”) is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2010. On September 28, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 29, 2010, GoDaddy.com, 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 September 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2010.

The case was formally suspended on October 15, 2010. The proceedings were reinstituted on November 9, 2010. The new due date for Response was November 14, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2010.

The Center appointed Anna Carabelli as the sole panelist in this matter on November 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 Complainant is a multinational pharmaceutical corporation. The Complainant’s products include Xenical, an oral weight loss medication prescription.

The Complainant has provided evidence of trademark registrations for the word “XENICAL” by submitting a copy of the International Registration certificates No. 612908 and 699154; priority date for the mark XENICAL is August 5, 1993 (Annex 3 of the Complaint).

The Respondent registered the Domain Name on September 18, 2010 (Annex 1 of the Complaint).

As shown by the printout of the relevant pages, the website corresponding to the Domain Name (Annex 4 of the Complaint): (i) is presented as “your reliable source of Xenical online – a unique weight loss drug that helps you lose weight, maintain your lower weight and minimize weight regain.”; (ii) provides information on the Complainant’s product Xenical, how it works and its side effects; and (iii) features links to online pharmacies. The Panel also notes that currently there is a link to a competitor’s product, Alli Diet Pills.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its registered trademark, XENICAL, since it includes the XENICAL mark in its entirety. The Complainant argues that the addition of the generic terms “cheap” and “online” is not sufficient to distinguish the Domain Name from the trademark.

In addition, the Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant has no relationship with the Respondent and has not authorized it to use the XENICAL mark. The Complainant also points out that the Respondent’s website redirects Internet users to online pharmacies and that previous WIPO decisions (see Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784) 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 was registered in bad faith since at the time of registration the Respondent clearly had knowledge of the Complainant’s well-known product/mark XENICAL. The Domain Name is also being used in bad faith to intentionally attempt to attract Internet users to the Respondent’s website for commercial purposes and to divert them to online pharmacies.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. DISCUSSION AND FINDINGS

Paragraph (15)(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

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 circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The Complainant has proved that it owns trademark rights in the name XENICAL.

The Domain Name entirely incorporates Complainant’s trademark XENICAL with the addition of the generic terms “cheap” and “online”.

It is an established principle that the mere addition of a generic term does not create a different trademark in which the respondent has rights and cannot be considered sufficient to avoid confusion between the domain name at issue and the complainant's trademark (GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International WIPO Case No. D2000-1219; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp, WIPO Case No. D2000-0464).

Accordingly the Panel finds that the Complainant has established element 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name in relation to the three circumstances identified in paragraph 4(c) of the Policy, namely: (i) bona fide prior use; (ii) common association with the domain name; and (iii) legitimate noncommercial use. The Respondent did not exercise its right to respond in these proceedings, thus failing to rebut the prima facie case made by the Complainant (or advance any other argument supporting rights or legitimate interests).

There is no evidence before the Panel that the Respondent is making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain. The Respondent is instead misleading and diverting Internet users to online pharmacies, including a link to a competitor’s product. This demonstrates the Respondent’s lack of a legitimate interest in the Domain Name; several prior WIPO decisions 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 online pharmacy (Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199, AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002-0290; Aventis, Aventis Pharma SA. v. VASHA Dukes, WIPO Case No. D2004-0276; Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793; Pfizer Inc v. lipidor.com DNS Services, WIPO Case No. D2002-1099).

Accordingly, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is convinced that the Respondent has registered and has been using the Domain Name in bad faith, to intentionally attract Internet users to its website for commercial gain by trading on the goodwill associated with the Complainant’s XENICAL product/mark and creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and of the products and services offered on the site (paragraph 4(c)(iv) of the Policy).

The contents of the Respondent’s website clearly indicate that the Respondent knew the Complainant’s XENICAL product/mark at the time it registered the Domain Name (see Revlon Consumer Product Corp v. Domain Manager, PageUp Communications, WIPO Case No. 2003-0602; Microsoft Corporation v. Superkay Worldwide Inc., WIPO Case No. 2004-0071; Revlon Consumer Product Corp. v. Easy Weight Loss Info, Augustinus Ferry Yonatan, WIPO Case No. 2010-0936).

The website at the Domain Name features links to online pharmacies, presumably on a “pay-per-click” basis. There is also a link to a competitor’s product. Applying the comments of numerous other panelists (see L’Oreal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623, Deutsche Telekom AG v. Keyword Traffic, WIPO Case No. D2005-0443; Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430; Associazione Radio Maria v. Mr. Hong Hee Dong, WIPO Case No. D2005-0062, Micro Electronics Inc. v. J. Lee, WIPO Case No. D2005-0170) the Panel finds that such a use does not constitute a bona fide offering of goods or services and that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website (and hence divert Internet traffic) by creating a likelihood of confusion with the Complainant’s mark.

Accordingly the Panel finds that the Complainant has established element 4(a)(iii) of the Policy.

7. Decision

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 <cheapxenicalonline.com> be transferred to the Complainant.

Anna Carabelli
Sole Panelist
Date: December 9, 2010

 

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