WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Moniker Privacy Services/ Moshe Nahum
Case No. D2012-1332
1. The Parties
Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
Respondent is Moniker Privacy Services of Pompano Beach, Florida, United States of America/ Moshe Nahum of Ramat Gun, Israel.
2. The Domain Name and Registrar
The disputed domain name <xenicaltoday.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2012. On June 29, 2012, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On July 3, 2012 Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 4, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 6, 2012.
The Center verified that the Complaint together with the amendment to 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 July 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 31, 2012.
The Center appointed Leon Trakman as the sole panelist in this matter on August 3, 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 is together with its affiliated companies one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries.
The Complainant’s mark XENICAL is protected as trademark in a multitude of countries worldwide.
Complainant is the owner of the International Registration No. 612908 for the trademark XENICAL in connection with an oral prescription weight loss medication, with a priority date of August 5, 1993. Complainant is also the owner of the International Registration No. 699154 for the XENICAL design mark, with a priority date of April 21, 1998.
The disputed domain name was registered on June 25, 2012 and resolved to an online pharmacy.
5. Parties’ Contentions
The Complainant, with its affiliated companies is a global research-focused healthcare group, operating in the fields of pharmaceuticals and diagnostics globally. Complainant’s mark, XENICAL, designates an oral prescription weight loss medication which is used to help obese people lose weight.
Complainant holds registrations for the mark XENICAL in various countries. Complainant provides evidence of its registration of its mark from at least August 5, 1993.
Complainant alleges that the disputed domain name is confusingly similar to the Complainant's mark, XENICAL, in that it incorporates Complainant’s mark in its entirety and further, that the addition of the generic term "today" does not sufficiently distinguish the disputed domain name from that mark.
Complainant contends that Respondent has no rights to or legitimate interests in the disputed domain name. In particular, Complainant has the exclusive rights to its trademark which is identical to the disputed domain name. Nor has Complainant granted any license or other authorization, permission, or consent to Respondent to use that mark.
Complainant maintains that Respondent has registered and is using the disputed domain name in bad faith. Respondent is intentionally misleading and confusing consumers by attracting them to websites other than those of Complainant in the belief that those websites are associated with or recommended by the Complainant. Complainant alleges further that Respondent is intending to profit from such bad faith.
Complainant maintains that Respondent has registered and is using the disputed domain name in bad faith. In particular, Respondent is intentionally misleading consumers and confusing them so as to attract them to other websites making them believe that the websites behind those links are associated or recommended by Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to Complainant's mark, XENICAL, on four related grounds. First, the disputed domain name incorporates Complainant’s mark in its entirety. Second, the addition of the generic term "today" to the disputed domain name does not sufficiently distinguish it from Complainant’s mark. Third, the disputed domain name describes a product that is marketed and sold by Complainant and its affiliates under Complainant’s mark. Fourth, Complainant’s products marketed under its trademark are widely known across the world. See Lilly ICOS LLC v. John Hopking / Neo Net Ltd., WIPO Case No. D2005-0694.
B. Rights or Legitimate Interests
Respondent has no rights or legitimate interest in the disputed domain name. First, Complainant has exclusive rights to its trademark. Second, Complainant has not granted Respondent any license, permission or other authorization or consent to use Complainant’s mark. Third, Respondent has no other affiliation with, directly or otherwise, with Complainant that gives it the right to sell Complainant’s products. See Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 ["Several cases have found that a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer's mark and that is being used to direct consumers to an on-line pharmacy"].
The Panel finds that Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case.
C. Registered and Used in Bad Faith
Respondent has registered the disputed domain name in bad faith. In this Panel’s view, there can be no doubt but that Respondent knew of the Complainant's trademark, XENICAL, at the time of registering the disputed domain name. First, Complainant’s trademark well preceded Respondent’s registration of the disputed domain name. Second, Complainant’s trademark is known across the world. Third, the disputed domain name has been used to resolve to an online pharmacy that has directed users to websites which sells Complainant’s products. Fourth, Respondent has used a confusingly similar domain name to Complainant’s mark.
Respondent has used the disputed domain name in bad faith. In particular, Respondent registered the disputed domain name in order to benefit from the reputation of Complainant and its trademark XENICAL. Second, Respondent’s website evinces an intention to confuse Internet users into believing Respondent is selling Complainant’s products as agent, affiliate, or associate of Complainant, or as endorsed or recommended by Complainant. Third, it is likely that Respondent has derived revenue as a result of click-through sales generated from the unlawful use of Complainant’s mark. However, it is not necessary to determine this last point in order to establish Respondent’s bad faith use of the disputed domain name. See further F Hoffmann-La Roche AG v. Pavlishin Mihail, WIPO Case No. D2010-0799.
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 <xenicaltoday.com> be transferred to Complainant.
Dated: August 7, 2012