WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Antonino Chiaramonte
Case No. D2011-1955
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, self-represented.
The Respondent is Antonino Chiaramonte of Stoke-on-Trent, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <buy-xenical-online.org>, <buy-xenical-uk.com>, <xenical-online.net>, <xenical-online-uk.com> and <xenica-uk.com> are registered with 1&1 Internet AG.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2011. On November 9, 2011, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain names. On November 11, 2011, 1&1 Internet AG 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 November 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2011.
The Center appointed Thomas Hoeren as the sole panelist in this matter on January 5, 2012. 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 largest health research and health diagnostic providers in the world. The Panel takes notice of the Complainant’s statement that it has global operations in more than 100 countries worldwide.
The Complainant’s mark XENICAL is protected as a trademark in numerous countries around the world. The Complainant submitted evidence that it holds International Registration Nos. 612908 and 699154 in XENICAL. Priority for the mark XENICAL is August 5, 1993. The mark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep weight off. For the mark XENICAL the Complainant holds registration in over one hundred countries.
According to the publicly available WhoIs information, the disputed domain names have been all created on October 26, 2011.
5. Parties’ Contentions
The Complainant held that the disputed domain names are confusingly similar to the Complainant’s mark. The addition of the descriptive terms “buy”, “online” and the geographical term “UK” (= United Kingdom) does not sufficiently distinguish the disputed domain names from the Complainant’s mark. The disputed domain name <xenica-uk.com> is purposefully misspelled by leaving out the letter “l” and adding a hyphen followed by the geographic term “UK”.
Furthermore, the Complainant argues that there is no reason why the Respondent should have any right or legitimate interest in such domain names.
Finally, the Complainant contends that the disputed domain names were registered and are used in bad faith as the disputed domain names direct Internet users to websites which are search engines composed of sponsored links.
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 names are 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 names; and
(iii) the domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
The Complainant holds numerous registrations for the mark XENICAL, inter alia, International Registration No. 612908 and No. 699154, with priority date August 5, 1993.
The disputed domain names incorporate the Complainant’s trademark XENICAL respectively in its entirety. This is in itself sufficient to support the claim that the disputed domain names are confusingly similar to the Complainant’s marks. 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.
In the present case, the addition of generic or descriptive words, including “buy” and “online” or a hyphen is not sufficient to dispel the confusing similarity arising from the incorporation of the Complainant’s XENICAL marks. See PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027 and F. Hoffmann-La Roche AG v. Private Whois xenical-shop.net, Private Whois xenical-shop.net, Private Whois valiumbuyrx.net, Private Whois valiumbuyrx.net, WIPO Case No. D2011-1662.
Moreover, the “UK” geographical indicator detracts in no way from the distinctiveness of the Complainant’s trade mark (see LEGO Juris A/S v. Owen Jones, WIPO Case No. D2011-0537).
B. Rights or Legitimate Interests
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 disputed domain names under paragraph 4(c) of the Policy.
According to a consistent 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 disputed domain names 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 disputed domain names.
C. Registered and Used in Bad Faith
In the Panel’s view, the Respondent obviously knows or should have known the products of the Complainant when registering the disputed domain names; these domain names were registered globally many years after the Complainant registered its trademark XENICAL.
Today, the Respondent has “parked” the disputed domain names’ pages. However, pursuant to paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), the lack of active use of the domain name “[...] does not as such prevent a finding of bad faith.” In addition, current bad faith may be inferred from passive holding of a domain name in certain circumstances. Examples of such circumstances include “complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity.” (WIPO Overview 2.0, paragraph 3.2).
Notably, many of these circumstances are present in this case:
(i) The Complainant’s trademark has a strong reputation and is well-known, as evidenced by its substantial use in many countries (see F. Hoffmann-La Roche AG v. Onotole Vasermane, WIPO Case No. D2010-2074).
(ii) The Respondent failed to respond to the Complaint.
(iii) As evidenced by the documents submitted by the Complainant (dated 8 November 2011), Internet users typing in the disputed domain names had at least temporarily access to a website showing sponsored links. The links included references to the pharmaceutical products of competitors of the Complainant. The product mentioned there is for instance LIPOSINOL which is praised at the website to help reducing weight. The Respondent has thus been using the disputed domain names to attract online consumers interested in the Complainant’s products to a directory and further websites and that such online consumers would be misled so as to lead them to the Respondent’s website or websites where competing products may be sold.
(iv) Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by the Respondent that would not be unlawful.
In light of the above facts and reasons, the Panel therefore finds that the disputed domain names were registered and are 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 disputed domain names <buy-xenical-online.org>, <buy-xenical-uk.com>, <xenical-online.net>, <xenical-online-uk.com> and <xenica-uk.com> be transferred to the Complainant.
Dated: January 8, 2012