WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Private Whois exenical.com
Case No. D2012-0288
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented by itself.
The Respondent is Private Whois exenical.com of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <exenical.com> is registered with Internet.bs Corp (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2012. On February 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2012, the Registrar 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 February 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 14, 2012.
The Center appointed C. K. Kwong as the sole panelist in this matter on April 2, 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’s group of companies is one of the world’s leading research-focused healthcare groups. It is the owner of numerous trademarks embodying or comprising the word “xenical” (“the XENICAL mark”). These registrations include, in particular, the following:
(a) International Trademark Registration No. 612908 for the mark XENICAL which was registered on December 14, 1993 claiming priority from August 5, 1993 on the basis of Swiss trademark no. 407 537 in respect of certain goods under Class 5;
(b) International Trademark Registration No. 699154 for the combination mark consisting of a device and the word “xenical”, which was registered on August 28, 1998 claiming priority from April 21, 1998 on the basis of Swiss trademark no. 453 451 in respect of certain goods under Class 5.
The uncontradicted evidence produced by the Complainant shows that the registrations of its aforesaid XENICAL mark occurred well over 10 years before the registration of the disputed domain name <exenical.com> on December 14, 2011.
Other than the particulars shown in the printouts of the database searches conducted by the Complainant on the WhoIs database (as provided in Annex 1 to the Complaint), the website to which the disputed domain name resolved or diverted (as provided in Annex 4 to the Complaint) and the WhoIs database search results updated to February 22, 2012 provided by the Center, there is no evidence in the case file concerning the background of the Respondent and its business.
5. Parties’ Contentions
The Complainant has made the following contentions:
The Complainant has rights in its said XENICAL mark. It has obtained registrations for the XENICAL mark worldwide. The Complainant’s group is one of the world’s leading research-focused healthcare groups in the field of pharmaceutical and diagnostics, having operations in more than 100 countries. The XENICAL mark is used to promote oral prescription weight loss medication used to help obese people to lose weight and keep weight off.
The disputed domain name is confusingly similar to the XENICAL mark which has been incorporated in its entirety. The addition of the letter “e” in front of that word does not sufficiently distinguish the disputed domain name from the XENICAL mark which the Complainant has registered and used widely before the registration of the disputed domain name. The Complainant has not licensed, permitted, authorized or consented to the use of the XENICAL mark by the Respondent. The Respondent has used the disputed domain name for commercial gain and with the purpose of capitalizing on the Complainant’s mark.
The Complainant also alleges that the website to which the disputed domain name resolves offers online pharmacy service and refers to the Complainant.
The Complainant claims that the XENICAL mark is well known and that the Respondent had knowledge of it. The Respondent intentionally attempted, for commercial purpose, to attract Internet users to the website to which the disputed domain name resolves, by creating a likelihood of confusion of the Complainant’s XENICAL mark as to the source, affiliation and endorsement of the Respondent’s website or the products or services promoted in it. By doing so, the Respondent has generated unjustified revenues and capitalized on the XENICAL mark. The disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Notice of Proceedings
The contact information of the Respondent and the disputed domain name were fully set out in the WhoIs search results provided in Annex 1 to the Complaint, which was filed on February 14, 2012 and the WhoIs search result updated to February 22, 2012 as provided by the Center (“the Data Base Records”).
Such contact details in the Data Base Records also match with the answers to Center’s Request for Registrar Verification provided by the Registrar to the Center on February 17, 2012.
On February 22, 2012, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding together with the Complaint including its annexes to the Respondent in accordance with the contact details set out above by email with copies to the Registrar. The Center also forwarded a Written Notice of the Proceeding in accordance with the relevant contact details to the postal address of the Respondent.
The Panel finds that as long as the Complainant (or the Center as the case may be) has communicated with the Respondent using the exact contact information which the Respondent has chosen to provide to the Registrar, as reflected in the Data Base Records, their respective obligations of such communications will be discharged and the Respondent will be bound accordingly.
The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a Response is not due to any apparent omission or inadequate communication by the Center.
B. The Three Elements
The three elements required to be proved by the Complainant are considered below.
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “[t]he Panel shall 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 14(b) of the Rules further provides that, “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that, “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
1. Identical or Confusingly Similar
On the evidence available before the Panel, it has no hesitation in finding that the Complainant has rights in its trademark which essentially consists of the word “xenical” by reason of its various trademark registrations as recited in Section 4 above.
Furthermore, the Panel finds that the disputed domain name, which has incorporated into it the word “xenical” entirely, is confusingly similar to the Complainant’s trademark. The addition of the English letter “e” in front of the word “Xencial” is not sufficient to distinguish the disputed domain name from the Complainant’s said XENCIAL Mark. The letter “e” may even suggest the adjective “extra” and when read with the word “xenical” may suggest the idea and sound of “extra-xenical”, which does not help to reduce the possibility of confusion. It is also well-established practice to disregard the top-level suffix of a domain name like “.com”, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d’Evian and Société des Eaux de Volvic v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008-0416.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established.
2. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, there is prima facie evidence that the Respondent lacks rights or legitimate interests in this disputed domain name. There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain name by the Respondent. In the website to which the disputed domain name resolves, references were made to the Complainant and its XENICAL products instead of any company known as “Exenical” or any products bearing an Exenica” mark.
There is no explanation on the record as to why it was necessary for the Respondent to adopt the word “exenical” in the disputed domain name.
The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy is established.
3. Registered and Used in Bad Faith
The disputed domain name resolved to the site at “www.exenical.com”. The printout of the website as shown in Annex 4 to the Complainant shows the service of online pharmacy being offered. It is noted in particular that in doing so, the Complainant’s name “Roche”, the history, popularity and effects of the Complainant’s XENICAL drug are described in detail. Additionally, the Complainant’s combination mark, the subject of International Trademark Registration No. 699154 referred to in Section 4 above, is prominently printed at the beginning of that document. These together with the fact that the XENICAL marks were registered and used by the Complainant worldwide for well over 10 years prior to the registration of the disputed domain name on December 14, 2011, support the contention that the Respondent was aware of the Complainant’s XENICAL mark at the time of registration of the disputed domain name.
The Complainant has clearly stated that it has not authorized the Respondent to use the XENICAL mark or use it to register a domain name. It is the Complainant’s uncontradicted claim that references to goods of the aforesaid types at the website of “www.exenical.com” to which the disputed domain name resolves result in the public being misled into believing that the service and products offered there are associated or otherwise connected with the Complainant. It is clear that the Respondent is not using the disputed domain name for a purpose other than for commercial gain.
There is a strong case for the Respondent to come forward to defend itself. However, the Respondent has chosen not to do so or has failed to come forward with any defence.
On the basis of the evidence adduced, the Panel finds that the Respondent has registered the disputed domain name in bad faith primarily for the purpose of disrupting the business of the Complainant. The presumption under paragraph 4(b)(iii) of the Policy applies.
By using whether directly or indirectly, authorizing or permitting the use of the disputed domain name in the manner described above, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the said website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or products on the website. The Panel accordingly finds that paragraph 4(b)(iv) of the Policy also applies to the present case.
The Panel finds that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
For all 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 <exenical.com> be transferred to the Complainant.
C. K. Kwong
Dated: April 16, 2012