WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Michael Tycoon
Case No. D2011-1721
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Michael Tycoon of Groningen, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <canadianxeloda.com> is registered with Todaynic.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2011. On October 11, 2011, the Center transmitted by email to Todaynic.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 14, 2011, Todaynic.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 October 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2011.
The Center appointed Anthony R. Connerty as the sole panelist in this matter on November 17, 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 world’s leading research – focused healthcare groups in the fields of pharmaceuticals and diagnostics. It has operations in numerous countries worldwide.
The XELODA mark designates an anti – cancer medicine used for treating cancer of the colon after surgery, and to treat breast cancer which has spread to other parts of the body.
The Complainant’s mark XELODA is registered in over 100 countries around the world. For example, the priority date for International Registration No. 664710 is December 4, 1996. The disputed domain name was registered on September 12, 2011.
5. Parties’ Contentions
The Complainant states that the disputed domain name incorporates its mark in its entirety; that the addition of the word “Canadian” does not distinguish the disputed domain name from the mark; and that Internet users typing the disputed domain name are directed to a pharmacy online, thus intentionally misleading consumers by making them believing “that the websites behind those links are associated or recommended by Complainant.”
The Complainant’s contentions are that:
The disputed domain name is confusingly similar to its mark;
The Respondent has no rights or legitimate interests in the disputed domain name;
The Respondent registered and is using the disputed domain name in bad faith.
The Complainant seeks the transfer of the disputed domain name to itself.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules states that the Panel is required 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 appropriate. Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(i) that the disputed domain name 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 disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.
A. Identical or Confusingly Similar
The disputed domain name incorporates the Complainant’s mark in its entirety. Various UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant's registered mark: for example, The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137.
The addition of the word “Canadian” does not detract from that conclusion. In F. Hoffmann-La Roche AG v. Aiden Aibo, WIPO Case No. D2010-0364, the disputed domain name was <valium-australia.info>. The panel stated that the addition of the suffix “australia” did not negate the confusing similarity between the mark and the domain name.
The Panel finds the disputed domain name to be confusingly similar to the Complainant’s mark, and is satisfied that the Complainant has brought itself within the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant asserts that it has exclusive rights to the XELODA mark and that it has not licensed, permitted or otherwise authorized the Respondent to use the mark or the disputed domain name.
It was open to the Respondent to demonstrate rights or legitimate interests in the disputed domain name by, for example, reliance on the circumstances set out in paragraph 4(c) of the Policy. The Respondent has not done so.
The Panel is satisfied that the Complainant has proved the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name incorporates the Complainant’s mark in its entirety. The disputed domain name was registered long after the mark was registered by the Complainant in numerous countries worldwide. The disputed domain name directs Internet users to a pharmacy online that claims to supply, amongst other things, anti-cancer pharmaceuticals.
Domain names consisting of well-known trademarks – used without authorization – may constitute evidence of registration and use in bad faith. For example, in Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, the disputed domain names were <pfizerforwoman.com> and <wwwpfizerforwomen.com>. The respondent, by using PFIZER’s trademark in its domain names, diverted Internet users to an online pharmacy selling PFIZER’s and other’s products, and “intentionally created a likelihood of confusion with PFIZER’s mark as to the source, sponsorship, affiliation, or endorsement of the [r]espondent’s affiliated on-line pharmacy website.” The respondent was not, and never had been, a representative of PFIZER or licensed to use the PFIZER mark. The respondent’s domain names “were registered intentionally to misdirect customers looking for PFIZER’s sites. The domain names are intended to deceive PFIZER’s customers, and the sale of PFIZER products on the resulting website reinforces the deception. This conduct is bad faith and violates the UDRP.”
In F. Hoffmann-La Roche AG v. Pinetree Development Ltd., WIPO Case No. D2006-0049, the disputed domain name was <buy-xenical-cheap-online.com>. That domain name incorporated the complainant’s mark XENICAL in its entirety. The website resolving to the domain name had been used to provide an online pharmacy which offered XENICAL as well as various other drugs which directly compete with the complainant. The use of the domain name “thus appears to be an attempt to attract for commercial gain, Internet users to the [r]espondent’s website, by creating a likelihood of confusion with the [c]omplainant’s mark. This is evidence of bad faith registration and use pursuant to the Policy, paragraph 4(b).”
The Panel is satisfied that the Complainant has proved the requirements of 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 name <canadianxeloda.com> be transferred to the Complainant.
Anthony R. Connerty
Dated: November 24, 2011