WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Andrey N Afanasev, Private Person
Case No. D2012-0013
1. The Parties
Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
Respondent is Andrey N Afanasev, Private Person of Pavlodar, Kazakhstan.
2. The Domain Name and Registrar
The disputed domain name <buyxeloda.org> is registered with UK2 Group Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2012. On January 5, 2012, the Center transmitted by email to UK2 Group Ltd. a request for registrar verification in connection with the disputed domain name. On January 6, 2012, UK2 Group Ltd. 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 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Response was January 30, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 31, 2012 .
On January 31, 2012 , the Center received an email communication from Respondent. The Center acknowledged receipt and invited Complainant to submit a request for suspension of the proceeding. Complainant filed a request for suspension on February 1, 2012. On February 10, 2012 , Complainant requested the Center to reinstitute the proceeding.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on February 13, 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
Complainant, together with its affiliated companies, is one of world’s largest research-focused healthcare providers of pharmaceuticals and diagnostics with operations in numerous countries worldwide.
The XELODA trademark designates an anticancer medicine used for treating cancer of the colon after surgery as well as breast cancer.
The XELODA trademark is registered in favor of Complainant in numerous countries around the world. Complainant has submitted evidence that it holds, inter alia:
International word mark XELODA, World Intellectual Property Organization (WIPO) Registration Number: 664 710; Registration Date: December 4, 1996; Status: Active.
The disputed domain name <buyxeloda.org> was created on December 11, 2011; prior to the filing of the Complaint, the disputed domain name redirected to a website at “www.buyxeloda.org” which offered numerous pharmaceutical products, including Complainant’s XELODA anticancer medicine, for online sale.
Complainant requests the disputed domain name to be transferred to Complainant.
5. Parties’ Contentions
Complainant asserts that the disputed domain name is confusingly similar to Complainant’s XELODA trademark because (1) the disputed domain name incorporates the trademark in its entirety and (2) the addition of the generic term “buy” does not sufficiently distinguish the disputed domain name from that trademark. Complainant points to the fact that its registration and use of the XELODA trademark predates Respondent’s registration and use of the disputed domain name.
Complainant further argues that Respondent has no rights or legitimate interests in respect of the disputed domain name because (1) Complainant has exclusive rights in the XELODA trademark and has granted Respondent neither a license/permission/authorization nor any other consent to such use as a domain name and (2) Respondent obviously uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of Complainant’s XELODA trademark and (3) the disputed domain name clearly alludes to Complainant.
Finally, Complainant suggests that the disputed domain name was registered in bad faith since at the time of registration on December 11, 2011, Respondent had knowledge of Complainant’s XELODA trademark. Moreover, Complainant argues that the disputed domain name is being used in bad faith since when viewing Respondent’s website one realizes that Respondent has intentionally attempted (for commercial gain) to attract Internet users by creating a likelihood of confusion with Complainant’s well-known XELODA trademark as to the source, affiliation and endorsement of Respondent’s website or of the products and services posted thereon or linked thereto.
Respondent did not formally reply to Complainant’s contentions.
After Respondent was notified by the Center by email of January 31, 2012, of its own default, the Center, however, received an informal email from Mr. J. Red stating: “Hello! I have closed site at http://buyxeloda.org. Sorry for the inconvenience.”
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That 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.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <buyxeloda.org> is confusingly similar to the trademark XELODA in which Complainant has shown to have rights.
The disputed domain name not only incorporates the XELODA trademark in its entirety. Moreover, it has been held in numerous UDRP decisions and has meanwhile become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9) that the addition of a generic or descriptive term or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the generic term “buy” is not capable to dispel the confusing similarity arising from the incorporation of Complainant’s XELODA trademark into the disputed domain name (see also: F. Hoffmann-La Roche AG v. Antonino Chiaramonte, WIPO Case No. D2011-1955).
Therefore, the first element under the Policy as set forth in paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent made a legitimate noncommercial or fair use without intent for commercial gain.
Respondent obviously has not been authorized to use Complainant’s XELODA trademark, neither as a domain name nor on Respondent’s website or in any other way. Respondent, however, has used the disputed domain name at least temporarily to resolve to a website for an online-pharmacy promoting the sale of Complainant’s XELODA product as well as numerous other pharmaceuticals some of which are apparently competing with those of Complainant. In the absence of any other reasonable explanation, such use may neither be deemed legitimate nor noncommercial nor fair (see also: F. Hoffmann-La Roche AG v. Private Whois valiumfinder.com, WIPO Case No. D2011-1484).
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on January 10, 2012. The email communication to the Center of January 31, 2012, from Mr. J. Red stating: “Hello! I have closed site at http://buyxeloda.org. Sorry for the inconvenience.” certainly does not qualify as evidence of any rights or legitimate interests of Respondent in the disputed domain name, but rather supports Complainant’s prima facie case.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panels takes the view that the (temporary) re-direction of the website at the disputed domain name, which is confusingly similar to Complainant’s trademark XELODA, to a website for an online-pharmacy promoting the sale of Complainant’s XELODA product as well as numerous other pharmaceuticals some of which are apparently competing with those of Complainant, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with Complainant’s XELODA trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or a product thereon. Such circumstances, however, shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In connection with this finding, it carries weight in the eyes of the Panel that Respondent formally failed to respond to the Complaint, but apparently contacted the Center on January 31, 2012, by means of an informal email from Mr. J. Red stating: “Hello! I have closed site at http://buyxeloda.org. Sorry for the inconvenience.” The Panel concludes from this statement that Respondent itself is not seriously questioning that the registration and use of the disputed domain name have taken place in bad faith.
Therefore, the Panel finds that also the third element under the Policy as set forth in paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) 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 <buyxeloda.org> be transferred to Complainant.
Stephanie G. Hartung
Dated: February 16, 2012