WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Benjamin Merle
Case No. D2011-2240
1. The Parties
Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
Respondent is Benjamin Merle of Phuket, Thailand.
2. The Domain Name and Registrar
The disputed domain name <le-xenical.com> (the “Domain Name”) is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2011. On December 20, 2011, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Domain Name. On December 20, 2011, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 27, 2012.
The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on January 30, 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
According to the evidence submitted by Complainant, Complainant holds registrations in many countries on a world-wide basis, including an international registration. A priority date for the mark XENICAL is August 5, 1993. Complainant is one of the world’s leading healthcare groups in the field of pharmaceuticals. The Panel takes notice of Complainant’s statement that it has global operations in more than 100 countries worldwide. The mark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off.
The Domain Name <le-xenical.com> was registered on November 22, 2011.
5. Parties’ Contentions
Complainant submits that the Domain Name is confusingly similar to the XENICAL trademark as it contains the XENICAL mark in its entirety. According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Name in view of its trademark. Internet users are directed to a website which is a search engine composed of sponsored links. Respondent uses the Domain Name without permission from Complainant for commercial gain and with the purpose to benefit from the reputation of the mark of Complainant. Complainant submits that Respondent has registered and is using the Domain Name in bad faith as Respondent no doubt had knowledge of the well-known mark of Complainant and is intentionally misleading consumers.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that Complainant proves each of the following three elements to obtain an order that the Domain Name should be transferred:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The Panel is satisfied that the registrant of record for the Domain Name is Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied by Complainant in this proceeding.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant has established that it is the owner of various trademark registrations for XENICAL. Complainant’s registrations predate the registration date of the Domain Name.
The Domain Name <le-xenical.com> incorporates the entirety of the XENICAL mark as its distinctive element. Many UDRP decisions have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s mark in its entirety. The addition of common, dictionary, descriptive or other elements is irrelevant.
The Panel finds that Complainant has proven that the Domain Name is confusingly similar to Complainant’s trademarks.
B. Rights or Legitimate Interests
In the opinion of the Panel Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. This is particularly true as Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant. Based on the evidence provided by Complainant Respondent directs Internet users to a website which is a search engine composed of sponsored links. Respondent makes use of the likelihood of confusion with the trademarks of Complainant, which cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. In addition, Respondent is not commonly known by the Domain Name nor has it acquired trademark rights. Under these circumstances the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith. The trademarks of Complainant are well-known and long existing trademarks and Respondent knew or should have known that the Domain Name included Complainant’s marks.
The Panel finds that the above elements mean that Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product on its website or location. See, among others, F. Hoffmann-La Roche AG v. Antonio Chiaramonte, WIPO Case No. D2011-1955 (<buy-xenical-online.org>, <buy-xenical-uk.com>, <xenical-online.net>, <xenical-online-uk.com> and <xenica-uk.com>).
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 <le-xenical.com> be transferred to Complainant.
Dinant T. L. Oosterbaan
Dated: February 13, 2012