WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Guk, Roman
Case No. D2011-1428
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Guk, Roman of Lviv, Ukraine.
2. The Domain Names and Registrar
The disputed domain names <xenical-generico.com> and <xenicalmaisbarato.com> are registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2011. On August 24, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 25, 2011, 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 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 August 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2011.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on September 23, 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
The Complainant, together with its affiliated companies, is one of the worlds’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries.
The Complainant has several trademark registrations including, as an example, International Registration Nos. 612908 and 699154 on the term “xenical”.
The Respondent became the Registrant of the disputed domain names <xenical-generico.com> and <xenicalmaisbarato.com> on May 14, 2011.
5. Parties’ Contentions
The Complainant claims that the disputed domain names are confusingly similar to the Complainant’s trademark XENICAL. The addition of the descriptive terms “mais barato” or “generico” does not sufficiently distinguish the disputed domain names from the trademark.
In respect of the Respondent’s lack of legitimate rights and interests over the disputed domain names, the Complainant declares that no license or any type of authorization has been given to the Respondent in relation to the use of the disputed domain names. Further, the <xenicalmaisbarato.com> is redirected to a pharmacy online and such use demonstrates lack of interest.
Finally, the Complainant is convinced that the disputed domain names have been registered and are being used in bad faith. In reference to the registration, the Complainant asserts that the Respondent had knowledge of the Complainant’s well-known product/mark XENICAL.
The use of the disputed domain name <xenicalmaisbarato.com> affirms that it is being used in bad faith since the Respondent has intentionally attempted (for commercial purpose) to attract Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s well-known mark as the source, affiliation and endorsement of the Respondent’s website or the products or services posted on or linked to the Respondent’s website.
Notwithstanding, in reference to the other disputed domain name <xenical-generico.com>, the Complainant alleges passive holding to draw conclusion of use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of the disputed domain names to the Complainant under the Policy it is necessary that the Complainant must prove, as required by Paragraph 4(a) of the Policy, that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the Complaint”. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the Complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate.
Thus where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. (State of Wisconsin v. Pro-Life Domains, Inc., WIPO Case No. D2003-0432; Visa Europe Limited v. DomainByProxy.com / Dahai Huang, WIPO Case No. D2011-0302). Here, since Respondent has defaulted, it is appropriate to accept the facts asserted by the Complainant and to draw adverse inferences of fact against the Respondent.
A. Identical or Confusingly Similar
The Complainant has made continuous use of its registered and incontestable mark where “xenical” appears to be a distinctive element. Besides, Complainant has spent much time, money and effort promoting the mark and has established significant good will.
Previous UDRP panels have decided that the addition of a generic and descriptive terms to an otherwise distinctive trademark name is to be considered confusingly similar to the trademark, La Caixa D'Estalvis I Pensions de Barcelona v. José Antonio Bernal, WIPO Case No. D2006-1637 (finding that the addition of the words “area” does not remove a domain name from being confusingly similar); F. Hoffman La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049 (finding that the words “buy” and “online” are not sufficient to render a domain name dissimilar or to prevent consumer confusion).
Accordingly, in the present case, the addition of the words “generico“ or “mais barato” to the disputed domain names is not sufficient to distinguish new Internet sources from existing service sources. Therefore, the Panel is prepared to accept the submission of the Complainant that the addition of the term “generico” or “maisbarato” to the Complainant’s trademark to form the disputed domain names <xenical-generico.com> and <xenicalmaisbarato.com> is insignificant and consequently the disputed domain names are confusingly similar to the Complainant’s trademark.
The Panel therefore concludes that the Complainant has satisfied the requirements of paragraph 4(a) (i) of the Policy.
B. Rights or Legitimate Interests
The Respondent has filed no Response to the Complaint, and thus has made no assertion of interest in the disputed domain names as provided for in paragraph 4 (c) of the Policy. As stated by previous and numerous UDRP decisions of the Center the burden of production shifts where the Complainant presents a prima facie showing, as has occurred in the instant case.
No evidence that is before this Panelist suggests that the Respondent has any rights or legitimate interests in the disputed domain names: The Respondent is not known by the disputed domain names, nor the Complainant has granted any license or authorization to the Respondent to use the Complainant’s trademark, neither the Respondent has made a legitimate noncommercial or fair use of the disputed domain names as it appears to the Panel that the Respondent profits from a pharmacy online website over the <xenicalmaisbarato.com> or through a passive holding in respect of <xenical-generico.com>.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain names and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
The Panel considers that the Respondent’s actions demonstrate that it registered and used the disputed domain names in bad faith based on previous UDRP decisions which hold that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Accordingly, the Complainant's worldwide reputation indicates that the Respondent was or should have been aware of the marks prior to registering the disputed domain names.
Further and in the absence of any Response from the Respondent, the Panel considers that the clear inference to be drawn is that the Respondent registered the disputed domain name <xenicalmaisbarato.com> for the purpose of attracting Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark. Certainly, due to the notoriety of the Complainant’s trademark, there appears to be no reason for the Respondent to have selected the disputed domain name <xenicalmaisbarato.com>, other than to trade off the Complainant’s reputation.
Finally and in respect of the disputed domain name <xenical-generico.com>, the Complainant asserts that it is on passive holding status. Indeed, the Respondent has registered the disputed domain name but has not uploaded to the website any material content and merely displayed a “welcome” to the “www.xenical-generico.com” website. Accordingly, the Respondent is holding the disputed domain name passively. It has long been generally held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark, without obvious use for legitimate purpose, does not necessary bypass a finding that the domain name is used within the requirements of paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Upon the above mentioned, the Complainant has established the third and final element necessary for a finding that the Respondent has registered and used the disputed domain names in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <xenicalmaisbarato.com> and <xenical-generico.com> be transferred to the Complainant.
Dated: October 4, 2011