WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Vladamir Brosknivotich
Case No. D2011-1648
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented internally.
The Respondent is Vladamir Brosknivotich, Moscow, Russian Federation.
2. The Domain Name and Registrar
The Domain Name <xenicalshoprx.com> is registered with Realtime Register B.V.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2011. On September 28, 2011, the Center transmitted by email to Realtime Register B.V. a request for registrar verification in connection with the Domain Name. On September 29, 2011 Realtime Register B.V. 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 October 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2011.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on November 14, 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.
On November 24, 2011, the Panel became aware that the Domain Name appeared to be registered to a different entity than that at the time of filing (i.e., the named Respondent is no longer the listed owner of the Domain Name). Accordingly, the Panel issued a Procedural Order on November 25, 2011 seeking clarification from the concerned registrar Realtime Register B.V. On November 25, 2011 the following reply was received from Realtime Register B.V.
“The domain was/is placed on Registrar hold.
However a Registrar hold does not prevent a whois change since Verisign runs a thin WHOIS.
We will take measurements to prevent this in future cases.
Regarding your requests.
The domain is on registar hold and can only by modified by authorised Realtime Register employees.
We have placed back the original WHOIS data prior to the UDRP proceedings.”.
The Panel trusts that the relevant registrar accrediting agency in this case will take the appropriate steps for the implementation of the Panel’s issued Decision in accordance with the relevant provisions of the UDRP should such a need arise.
4. Factual Background
The Complainant is a Swiss healthcare company in the fields of pharmaceuticals and diagnostics. The Complainant holds registrations for XENICAL mark in over one hundred countries worldwide, inter alia, International Registration No. 612908 and No. 699154. The mark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep the weight off.
The Respondent registered the Domain Name <xenicalshoprx.com> on September 10, 2011.
5. Parties’ Contentions
The Complainant contends that the Domain Name registered by the Respondent is confusingly similar to its XENICAL trademark. The Complainant has rights to International Registration No. 612908 and No. 699154 with a priority date of August 5, 1993, which predates the registration of the Domain Name. The mark XENICAL is protected as a trademark in many countries worldwide and is well-known. The Domain Name incorporates the mark XENICAL in its entirety and the addition of the generic terms “shop” and “rx” does not distinguish the Domain Name from the XENICAL trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has exclusive rights to the mark XENICAL and no license/permission/authorization has been granted to the Respondent to use XENICAL in the Domain Name. The purpose of the Respondent in registering and using the Domain Name is to capitalize on the fame of the Complainant’s mark XENICAL for commercial gain and profit.
The Complainant further contends that the Respondent registered the Domain Name and is using it in bad faith. The Complainant states that the Respondent had knowledge of the Complainant’s well-known product/mark XENICAL at the time of registering the Domain Name. By using the Domain Name, the Respondent is intentionally attempting to attract Internet users, for commercial purposes, to its website by creating a likelihood of confusion with the Complainant’s well-known trademark XENICAL 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.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed in a complaint, the Complainant must, in accordance with paragraph 4(a) of the Policy, satisfy the Panel of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 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.
A. Identical or Confusingly Similar
The Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
The Complainant’s distinctive mark XENICAL is protected as a trademark in many countries worldwide and the Complainant holds numerous registrations in over one hundred countries, including International Registration No. 612908 and No. 699154 with a priority date of August 5, 1993. The Panel finds the Complainant has trademark rights to XENICAL.
The Domain Name incorporates the Complainant’s trademark XENICAL in its entirety, which in itself is sufficient to support the claim that the Domain Name is confusingly similar to the Complainant’s mark. See Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (“When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar”), and also Oakley, Inc. v. Zhang Bao, WIPO Case No. D2010-2289.
The words “shop” and “rx” (which stands for prescription pharmaceuticals) added to the Domain Name are generic, and the addition of such generic words is insufficient to dispel the confusing similarity arising from the incorporation of the Complainant’s XENICAL mark. See Wal-Mart Stores, Inc. vs. Kuchora, Kal, WIPO Case No. D2006-0033 (“It is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion”) and also PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027.
The Panel holds that the Domain Name is confusingly similar to the Complainant’s trademark XENICAL.
B. Rights or Legitimate Interests
The Complainant possesses exclusive rights to the XENICAL trademark and has not licensed, permitted or authorized the Respondent to use XENICAL in the Domain Name.
The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy. According to previous series of WIPO UDRP decisions, in such a case the burden of production shifts to the Respondent to rebut the evidence. See among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
The Panel notes that the Respondent has failed to file a response to prove its rights or legitimate interests in the Domain Name under paragraph 4(c) of the Policy. For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Complainant is one of the leading research-focused healthcare companies in the fields of pharmaceuticals and diagnostics and has global operations in more than 100 countries. The Complainant’s product/trademark XENICAL is well-known as medication to treat obesity. In this Panel’s view, the incorporation of the Complainant’s distinctive trademark in the Domain Name indicates that the Respondent had knowledge of the Complainant’s product/trademark XENICAL at the time of registering the Domain Name, which constitutes bad faith. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004.
As evidenced by the documents submitted by the Complainant (Annex 4 to the Complaint), Internet users typing in the Domain Name will access a website showing “BUY XENICAL ONLINE”. By clicking “Click Here to Buy Xenical”, Internet users are directed to an online pharmacy “www.liveuspharmacy.com”, which sells, inter alia, Xenical branded medication. The Panel finds that bad faith is established by the Respondent’s use of the Domain Name to divert Internet users to a for-profit on-line pharmacy, which sells XENICAL branded product as well as the products of others. The Panel views the acts of the Respondent as amounting to “opportunistic exploitation of inevitable Internet user confusion for the Respondent’s own benefit” which indicates bad faith. See Sound Unseen, Ltd.; Apple Bottoms, LLC; and Cornell Haynes p/k/a “Nelly” v. Patrick Vanderhorst, WIPO Case No. D2005-0636. The Respondent is intentionally creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s affiliated online pharmacy website.
Failure of the Respondent to respond to the Complaint may be further indicative of bad faith. See Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.
In light of the above facts and reasons, the Panel therefore finds that the Domain Name was registered and is being used in bad faith pursuant to 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 Domain Name, <xenicalshoprx.com>, be transferred to the Complainant.
Jacob (Changjie) Chen
Dated: November 28, 2011