World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Fundacion Private Whois

Case No. D2012-0983

1. The Parties

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

The Respondent is Fundacion Private Whois of Panama, Panama.

2. The Domain Name and Registrar

The disputed domain name <xenicalmedstore.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 May 9, 2012. On May 9, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 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 May 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2012.

The Center appointed Marcin Krajewski as the sole panelist in this matter on July 4, 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 F. Hoffmann-La Roche AG, together with its affiliated companies, is a leading healthcare supplier in the field of pharmaceuticals and diagnostic products. It operates in more than 100 countries.

The Complainant is the registered owner of trademarks consisting of or including the word “xenical”. In particular, the Complainant owns:

- the nominative international trademark “XENICAL” No. 612 908 with a priority date of August 5, 1993,

- the figurative international trademark “XENICAL” No. 699 154 with a priority date of April 21, 1998.

The XENICAL trademark designates an oral weight loss medication used to help obese people lose weight and keep the weight off.

The disputed domain name was registered on May 1, 2012. It resolves to a pharmacy on-line offering “Xenical” branded products as well as medicines of different brands.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are present in this case. In particular the Complainant claims that:

(i) The disputed domain name is confusingly similar to the trademarks in which the Complainant has rights

The disputed domain name is confusingly similar to the Complainant’s trademark seeing that it incorporates this mark in its entirety. The addition of the term “medstore” does not sufficiently distinguish the disputed domain name from the Complainant’s trademark.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name

The Complainant contends that the disputed domain name clearly alludes to the Complainant’s trademark and it is obvious that the Respondent uses the domain name for commercial gain.

The Complainant states that no license or authorization of any other kind to use the XENICAL trademark has been given by the Complainant to the Respondent. Therefore, there is no reason why the Respondent should have any right or interest in the disputed domain name.

(iii) The disputed domain name was registered and used in bad faith

In support of this view the Complainant contends that the Respondent certainly had knowledge of the Complainant’s XENICAL trademark when registering the disputed domain name.

Moreover, the Complainant contends that the Respondent intentionally attempted to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, affiliation and endorsement of Respondent’s website or of the products or services posted on or linked to this website.

According to the Complainant, by using the disputed domain name the Respondent intentionally misleads the consumers and makes them believe that the Respondent’s website is associated to or recommended by the Complainant. As a result the Respondent may generate unjustified profit.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the following facts must be established in order to grant the Complainant the remedy requested:

(1) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(3) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The most distinctive part of the disputed domain name is “xenical”, which is identical to the Complainant’s trademarks. It is a well-established principle that, in determining whether there is confusing similarity between a domain name and a trademark, special attention should be paid to the trademark as compared to the dominant part of the domain name. The Panel agrees with the Complainant’s argument that the addition of the suffix “medstore” is not relevant as seems to simply indicate an online pharmacy.

For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the suffix “.com” must be disregarded as being simply a necessary component of a generic top level domain.

Accordingly, the Panel finds that the Complaint has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances which may establish a respondent’s rights or legitimate interests in a domain name. However, it seems that none of the mentioned circumstances is present in this case. In particular, there is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Internet users who type the disputed domain name in their browsers are directed to the website, where, as evidenced by copies of the respective pages, the Xenical product as well as products of other brands are offered for sale. Such use of the Complainant’s trademark cannot be considered to be a bona fide offering of goods or services.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights and legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds it obvious that the Respondent knew of the existence of the XENICAL trademark and had this trademark in mind at the time of registration of the disputed domain name. The Panel finds that the disputed domain name was registered in bad faith.

It is equally clear that the disputed domain name is also being used in bad faith. In particular, paragraph 4(b) of the Policy gives non-exhaustive illustrations of bad faith registration and use, including the following:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Respondent is using the disputed domain name to intentionally attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s XENICAL trademark, and using the disputed domain name to link to an online pharmacy.

Accordingly, the Panel finds that the Complaint has satisfied paragraph 4(a)(iii) of the Policy.

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 disputed domain name <xenicalmedstore.com> be transferred to the Complainant.

Marcin Krajewski

Sole Panelist

Dated: July 18, 2012

 

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