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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Jery Melon

Case No. D2012-0262

1. The Parties

The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, internally represented.

The Respondent is Jery Melon, Erevan, Armenia.

2. The Domain Name and Registrar

The disputed domain name <buyxenicalnoprescription.com> (hereinafter: "the Disputed Domain Name") is registered with Internet.bs Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2012. On February 10, 2012, the Center transmitted by email to Internet.bs Corp a request for registrar verification in connection with the disputed domain name. On February 14, 2012, Internet.bs Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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 February 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2012.

The Center appointed Neil J. Wilkof as the sole panelist in this matter on March 20, 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 Disputed Domain Name, <buyxenicalnoprescription.com>, was registered on January 13, 2012, in the name of Jery Melon, an individual located at Geroi Shevchenko 32 str, 0033 Erevan, Armenia.

The Complainant has International Registrations for the mark XENICAL (hereinafter: the Mark) in accordance with the following:

Registration No. 612908 for the mark XENICAL in class 5, registered on December 14, 1993.

Registration No. 699154 for the mark XENICAL plus design in class 5, registered on July 28, 1998 (collectively: "the International Registrations").

5. Parties’ Contentions

A. Complainant

The Complainant and its affiliate companies, with operations in over 100 countries, is one of the largest research-focused healthcare groups in the world in the fields of pharmaceuticals and diagnostics. Among the Complainant's products is an oral prescription weight loss medication that is identified by the Mark.

The Complainant alleges that it holds registration for the Mark in over 100 countries. Annex 3 to the Complaint contains copies of certificates of the International Registrations.

The Disputed Domain Name is confusingly similar to the Mark, which it incorporates in its entirety. The inclusion of the generic terms "buy" and "noprescription" does not serve to distinguish the Disputed Domain Name from the Mark. The Complainant's use and registration of the Mark predate the Complainant's registration of the Disputed Domain Name.

The Complainant did not grant to the Respondent any license, permission, authorization or other form of consent to use the Mark.

The Disputed Domain Name was registered and is being used in bad faith. The Respondent is seeking to attract Internet customers to the website associated with the Disputed Domain Name for the purpose of the Respondent's commercial gain. In so doing, the Respondent is intentionally creating confusion regarding the source, affiliation and sponsorship of such website.

Based on the foregoing, the Complainant alleges the following:

(i) The Disputed Domain Name is confusingly similar to the Mark.

(ii) The Respondent has no rights or legitimate interests in the Disputed Domain Name.

(iii) The Disputed Domain Name has been registered and has been used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.

Based on the International Registrations, the Panel rules that the Complainant has established rights in the Mark.

The International Registrations, dating back to 1993, long predate the registration of the Disputed Domain Name, being January 13, 2012.

In determining whether there is confusing similarity between a domain name and a mark with respect to paragraph 4(a)(i) of the Policy, it is a well-established principle that special attention should be paid to the mark as compared to the dominant part of the domain name. As the panel in Dr. Ing. H.c.F. Porsche AG v. Vasily Terkin, WIPO Case No. D2003-0888, noted, "a domain name that wholly incorporates a Complainant's registered mark may be sufficient to establish confusingly similarity for purposes of the UDRP.” As stated in the case of Merrell Pharmaceuticals Inc., Adventis Pharma SA v. Filips Kostins, WIPO Case No. D2004-0943, "the Domain Name includes the Complainant's trademark in its entirety together with the generic words "buy" and "noprescription". The mere addition of such generic terms is not sufficient to avoid confusion between domain name and trademark". Moreover, it is well-established that the presence of the top level domain (TLD) “.com” is not relevant in comparing a domain name to a trademark.

The Disputed Domain Name fully incorporates the XENICAL mark together with the ordinary English words "buy" and "noprescription." This combination of words does not serve to distinguish between the Disputed Domain Name and the Mark. As stated by the panel in Sony Kabushuki Kaisha (also trading as Sony Corporation)v. Inja, Kil, WIPO Case No. D2000-1409, “neither the addition of an ordinary descriptive word nor the suffix“.com” detracts from the overall impression of the dominant part of the name, namely the trademark SONY”. The same applies to the instant situation.

For the foregoing reasons, the Panel rules that the Disputed Domain Name is confusingly similar to the Mark.

B. Rights or Legitimate Interests

Here, as well, the Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.

The Panel finds that the Complainant has carried its burden of proof on this element and has demonstrated a prima facie case that the Respondent has no rights or legitimate interests.

There is no evidence that the Respondent has registered any mark that consists of, or contains, the Mark, or any material portion thereof. There is no evidence that the Complainant has entered into any agreement, authorization or license with the Respondent with respect to the use of the Mark. The name of the Respondent bears no resemblance to the Disputed Domain Name nor is there any basis to conclude that the Respondent is commonly known by the Mark or the Disputed Domain Name.

Having regard to the three suggested grounds set out in paragraph 4(c) of the Policy, on the basis of which a respondent may support a claim that it has rights or legitimate interests in the domain name, the Respondent has not submitted any response to support such a claim. The Respondent does not use the Disputed Doman Name in connection with a bona fide offering of goods or services. An Internet user who types the Disputed Domain Name is directed to an on-line pharmacy. As stated in the case of Hoffmann-La Roche Inc. v. 1 Viagra Propecia Xenical & More Online Pharmacy, "… it is evident that Respondent is not making a legitimate noncommercial or fair use of the Domain Name under the Policy para. 4(c)(iii). The Respondent's use is manifestly commercial. It sells pharmaceuticals on the website associated with the challenged Domain Name“. The Panel is of the view that these words apply to the instant situation.

Based on the foregoing, the Panel rules that the Respondent has no rights or legitimate interests in the Mark.

C. Registered and Used in Bad Faith

Here, as well, the Respondent has failed to respond to the Complainant. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.

Paragraph 4(b) of the Policy sets out a nonexhaustive list of circumstances that point to bad faith conduct on the part of the Complainant, as follows:

(i) Circumstances indicate that the Respondent has registered the Disputed Domain Name primarily to sell or otherwise transfer it to the Complainant who is the owner of the trademark or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name.

(ii) The Disputed Domain Name has been registered to prevent the Complainant from reflecting its Mark in a corresponding domain name.

(iii) The Disputed Domain Name has been registered primarily for the purpose of disrupting the business of a competitor.

(iv) The use of the Disputed Domain Name indicates an intention to attract Internet users to the Respondent’s website, for commercial gain, by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Panel believes that the circumstances described in subsection 4(b)(iv) above of the Policy apply in this case and, as such, support the conclusion that the Respondent has acted in bad faith. In the Respondent’s choice and use of the Disputed Domain Name, the Panel is of the view, based on the particular circumstances of this case, that the Respondent is likely attempting to attract Internet users to the Respondent’s website by attempting to create a false association, sponsorship or endorsement with or of the Complainant. The Respondent seeks to create a false impression that, in its offer via the website associated with the Disputed Domain Name of the sale of the XENICAL product, the Respondent is connected with the Complainant. In so doing, it is acting in a bad-faith manner in exploiting the goodwill and reputation of the Mark for the purpose of the Respondent’s commercial gain. As stated in Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, bad faith is established when "Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy."

One point must be mentioned in connection with the foregoing. From an inspection of the website that is associated with the Disputed Domain Name, it is not clear to whom the sale of the XENICAL product is being targeted. This is especially so in light of potential regulatory restrictions on the sale of pharmaceutical products on-line. Accordingly, the Panel is unable to determine whether there is any overlap between the countries covered by the International Registrations and the countries that are being targeted. The Panel would have preferred that the Complainant be more forthcoming in the presentation of its evidence, especially with respect to the extent of its national rights in the Mark. The Complainant states that it holds registration for the Mark in over 100 countries, but it did not provide even a list of such registrations, much less a copy of the registration certificates. For a company with the apparent resources of the Complainant and, given the apparent commercial importance of the product identified by the Mark for the Complainant, the absence of such evidence is regrettable.

Nevertheless, this Panel is aware that decisions by other panels with respect to the Complainant and the Mark have found that the Mark enjoys wide-spread notoriety. See, e.g., F. Hoffman-La Roche AG v. Ontole Vasermane, WIPO Case No. D2010-1074 and Hoffman-La Roche AG v. Vladamir Brosknivotich, WIPO Case No. D2011-1648. Under the circumstances, there is no reasonable basis to question the Complainant's here uncontested claim about the wide-spread use and registration of the Mark. As such, the Respondent has presumed knowledge of the Mark and the rights of the Complainant therein. Accordingly, the Panel is of the view that the Complainant's failure to provide more specific evidence regarding the use and registration of the does not alter the Panel's conclusion that the Respondent (who has not in these proceedings sought to challenge the Complainant’s factual claims) has acted in a bad faith manner in its registration and use of the Disputed Domain Name.

7. Decision

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, <buyxenicalnoprescription.com>, be transferred to the Complainant.

Neil, J. Wilkof
Sole Panelist
Dated: April 3, 2012

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