WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. no, Karin M?ller
Case No. D2010-2241
1. The Parties
Complainant is F. Hoffmann-La Roche AG, of Basel, Switzerland, represented internally.
Respondent is no, Karin M?ller, of Caacupe, Paraguay.
2. The Domain Name and Registrar
The disputed domain name <xenicaldrugstore.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2010. On December 22, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On December 22, 2010, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on December 23, 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 Respondent of the Complaint, and the proceedings commenced on December 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 18, 2011.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on January 24, 2011. 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
Complainant, together with its affiliated companies, is one of the world’s leading research-focused health care groups in the fields of pharmaceuticals and diagnostics and has operations in more than 100 countries. Complainant owns trademark registrations, including international registrations, around the world for the mark XENICAL, which is used on an oral prescription weight loss product. Complaint, Annex 3.
The disputed domain name, <xenicaldrugstore.com>, was registered on October 31, 2010, and has been used to direct Internet users to a site that offers Complainant’s products, including Xenical. Complaint, Annex 5.
5. Parties’ Contentions
Complainant asserts that the disputed domain name is confusingly similar to the XENICAL mark in that it incorporates the mark in its entirety, adding only the generic term “drugstore.” The addition of such generic term, Complainant declares, “does not sufficiently distinguish the Domain Name from the trademark.”
Complainant further maintains that Respondent has no rights or legitimate interests in the disputed domain name. Complainant notes that no license/permission/authorization has been granted to Respondent to use XENICAL in the domain name and contends that “Respondent’s only reason in registering and using the contested Domain Name is to benefit from the reputation of the trademark XENICAL and illegitimately trade on its fame for commercial gain and profit.”
With respect to the issue of “bad faith” registration and use, Complainant argues that the requisite bad faith is present because: (1) at the time the disputed domain name was registered, Respondent, no doubt, had knowledge of Complainant’s XENICAL product and mark; and (2) Respondent is intentionally attempting, for commercial purposes, to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s well-known XENICAL mark as to the source, affiliation and endorsement of Respondent’s site or of the products or services posed on or linked to such site.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name, <xenicaldrugstore.com>, is confusingly similar to the XENICAL mark. As noted by Complainant, the domain name incorporates the mark in its entirety and the addition of the generic term “drugstore” does not sufficiently distinguish the domain name from the mark. See Forest Laboratories Inc. v. A. Delsey, WIPO Case No. D2008-0285 (“The Disputed Domain Name [lexapro-drugstore.biz] incorporates the Trademark in its entirety to which the descriptive word ‘drugstore’ has been added. As decided in a similar case involving the Complainant, the addition of this descriptive word does not avoid confusion but rather increases the risk of confusion.”)
It is also clear that Complainant, through its ownership of registrations around the world, has rights in the XENICAL mark.
B. Rights or Legitimate Interests
The evidence indicates that the disputed domain name has been used to direct Internet users to a site that offers Complainant’s products and that Respondent has not been licensed or otherwise authorized by Complainant to use the XENICAL mark as part of its domain name.
The Panel concludes that none of the circumstances set forth in paragraph 4(c) of the Policy has been established and that Respondent has no rights or legitimate interests in the disputed domain name. See Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (“several cases have found 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.”)
C. Registered and Used in Bad Faith
The Panel concludes that the domain name <xenicaldrugstore.com> was registered and is being used in bad faith. The evidence supports a determination that, by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s XENICAL mark as to the source, sponsorship, affiliation, or endorsement of such site or of the products offered at such site, within the meaning of paragraph 4(b)(iv) of the Policy. As noted above, the domain name is confusingly similar to the XENICAL mark and Xenical product is advertised at such site.
In addition, while Complainant introduced no evidence as to sales of XENICAL, the Panel may take judicial notice that such product has enjoyed much commercial success. Thus, it is reasonable to assume, as Complainant asserts, that Respondent was aware of Complainant’s XENICAL mark and product at the time the subject domain name was registered. This further supports a finding of “bad faith” registration and use.
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 <xenicaldrugstore.com> be transferred to Complainant.
Jeffrey M. Samuels
Dated: February 7, 2011