WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F Hoffmann-La Roche AG v. Fundacion Private Whois
Case No D2012-1418
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 & Registrar
The disputed domain name <buyxenical120mg.com> is registered with Internet.bs Corp. (the “Domain Name”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center") on July 12, 2012. On the same date, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the Domain Name. On July 13, 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.
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 transmitted the Complaint to the Respondent, and advising that the proceedings commenced on July 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 7, 2012.
The e-mail dispatches were sent by the Center to the e-mail addresses furnished by the Registrar in respect of the Respondent, as well as those of its Administrative and Technical contacts. It was also sent by e-mail to the Registrar. In addition the Center endeavored to effect delivery of a written copy by courier. All these attempts apparently failed, the courier advising that the postal address and the telephone number furnished were wrong and delivery could not be effected.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on August 14, 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.
Enquiries by the Panel, made of the Center, and examination of the case file, also established that it employed reasonably available means to achieve actual notice to the Respondent. The Panel is therefore satisfied that the Center has accordingly complied with the requirements of paragraph 2(a) of the Rules (Fairmont Hotel Management L.P. v. Puts, WIPO Case No. D2001-0431). The Respondent, however, has apparently not communicated with the Center or attempted to respond to the Complaint.
4. Factual Background
The following facts and circumstances are to be found in the Complaint and its annexes and, in the absence of challenge, can be accepted as true.
The Complainant, together with its affiliated companies, is one of the world's leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and has global operations in more than 100 countries.
The Complainant's mark XENICAL is protected as a trademark in a multitude of countries worldwide, in support of which the Complainant submitted international registration certificates in respect of that trademark. The earliest registration of the trademark evidenced is August 5, 1993.
The trademark designates an oral prescription weight loss medication used to help obese people lose weight and keep that weight off.
The disputed domain name was registered on July 4, 2012.
5. Parties' Contentions
The Complainant contends as follows:
The disputed domain name is confusingly similar to the Complainant’s trademark in that it incorporates the Complainant's trademark in its entirety and the additional terms “buy” and “120mg” do not sufficiently distinguish it from the trademark.
The Complainant has exclusive rights in and to its trademark and no licence, permission or authorization or other form of consent has been granted for use of the trademark in any domain name.
It is obvious that the Respondent is using the disputed domain name for commercial gain and with the purpose of capitalising on the fame of the Complainant's trademark.
As appears from the Respondent's website, the Respondent is using the disputed domain name to redirect Internet users to an online pharmacy.
Accordingly, the Respondent has no right or legitimate interest in respect of the disputed domain name.
As appears from the website of the Respondent, the Complainant submits that it is clear that the Respondent has intentionally sought to attract Internet users to its own website by creating a likelihood of confusion with the trademark of the Complainant as to the source, affiliation and endorsement of the Respondent's website, or of the products and services referred to or linked thereto.
By so using the disputed domain name the Respondent is intentionally misleading consumers and may generate unjustified revenue, thus illegitimately capitalising on the Complainant's trademark reputation.
By its failure to respond, the Respondent is in default and, in accordance with paragraphs 5(e) and 14 of the Rules the Panel shall now deal with the matter on the Complaint.
6. Discussion and Findings
A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules requires that:
"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:-
(i) That the domain name registered by the respondent is identical or confusingly similar to a trademark or a service mark in which the complainant has rights.
(ii) That the respondent has no rights or legitimate interests in respect of the domain name.
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the respondent's rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) of the Policy.
B. Effect of Default
Notwithstanding the fact that a respondent may be in default, the complainant bears the burden of proof in respect of each of the three elements of paragraph 4(a) of the Policy referred to above. Such default does not, per se, entitle the Complainant to a finding in its favor by reason thereof, as failure by the complainant to discharge the burden of proof will still result in the Complaint being denied (M Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). It follows that such default does not necessarily, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v. Shopintimates USA, WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (Brooke Bollea, a.k.a. Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551).
However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a UDRP panel shall draw such inference as it considers appropriate from the failure of a party to comply with the Rules (Allianz Compañia de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942).
In the present instance, the Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response, particularly in the light of the fact that the Complainant wrote on several occasions to the Respondent, as did the Center when dealing with procedural matters and advising the Respondent of time limits, as against the Respondent's failure entirely to respond to any such correspondence.
From this, the Panel considers that it follows that it may accept that the Respondent does not deny the reasonable facts asserted and contentions made by the Complainant based on such facts (Reuters Limited v Global Net 2000, Inc, WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain Contact, WIPO Case No. D2003-0994; Standard Innovation Corporation v. Shopintimates USA, supra; VKR Holding A/s v Above.com Domain Privacy/Host Master, Transure Enterprise Ltd, WIPO Case No. D2012-0040).
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters Limited v Global Net 2000, Inc, WIPO Case No. D2000-0441; RX America LLC v. Matthew Smith, WIPO Case No. D2005-0540; Allianz Compañia de Seguros y Reaseguros S.A. v. John Michael, supra ; Standard Innovation Corporation v. Shopintimates USA,supra; VKR Holdings A/ s v Above.com Domain Privacy/Host Master, Transure Enterprise Ltd, supra; Groupe Auchan v. Anirban Mitra, WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers Inc, WIPO Case No. D2012-1213).
C. Domain Name is Identical or Confusingly Similar
As appears from the factual background, the Complainant has set out details of the extent to which it carries on business, and holds trademark registrations for XENICAL, in over 100 countries.
On that basis and even though it does not expressly so contend, the Panel considers that on the factual background relied upon by it, particularly as it is unchallenged by the Respondent, the Complainant has rights which fall within the provisions of Article 6bis of the Paris Convention for the Protection of Industrial Property of March 20, 1893, as revised, and as confirmed and extended by Articles 6.2 and 6.3 of the GATT Agreement on Trade-Related Aspects of Intellectual Property Rights (commonly referred to as "the TRIPS Agreement"). These treaties enable the owner of a well-known trademark to seek protection not only in respect of products which might be marketed under an offending trademark in the same class, but outside that class as well (V&S Vin & Spirit v. Young Nah, WIPO Case No. D2004-0961; Groupe Auchan v. Anirban Mitra, WIPO Case No. D2012-0412). In the present matter, the Complainant's trademarks are, in fact, in many instances, registered for several different classes.
The fact that the word mark has been incorporated entirely into the Domain Name is sufficient to establish that it is identical or confusingly similar to the Complainant's registered mark (Quixtar Investments Inc v. Dennis Hoffmann, WIPO Case No. D2000-0253; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; Lilly ICOS LLC v. John Hopkin/ Neo net Ltd., WIPO Case No. D2005-0694; SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin/Moniker Privacy Services, WIPO Case No. D2008-0016).
The addition of the word "buy" to the mark XENICAL and suffix "120mgs" in the Domain Name does not to the Panel distinguish it from the Complainant's trademark. (Experian Information Solutions Inc v. BPB Prumerica Travel (a/k/a SFXB a/k/a H Bousquet a/k/a Brian Evans), WIPO Case No. D2002-0367). If anything, the dominant portion of the Domain Name is XENICAL. This also reinforces the similarity and the fact of confusion (Intuit Inc v. Nett Corp, WIPO Case No. D2005-1206; BID INDUSTRIAL HOLDINGS V. CRAIG SMITH, WIPO Case No. D2009-1627).
Moreover, the addition of the top level domain is not generally an element which provides distinctiveness that can be taken into consideration when evaluating the identity and similarity of the Complainant's trademark and the Domain Name (Magnum Piering Inc v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374; Qantas Airways Limited v. Minh Huynh, WIPO Case No. D2008-1382; The South African Football Association (SAFA) v. Fairfield Tours (Pty) Ltd, WIPO Case No. D2009- 0998). In these circumstances, the Panel has no difficulty in concluding that the Complainant has established the first element in terms of paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the Domain Name for the purposes of Paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to target the trademark or service mark at issue.
Although paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name, once the Complainant establishes a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name, the burden of production of evidence on this factor shifts to the Respondent to rebut the showing, despite the overall burden of proof remaining upon the Complainant to prove each of the three elements of paragraph 4(a) of the Policy. (Document Technologies, Inc. v. International Electronic Communications Inc, WIPO Case No. D2000-0270; University City Studios Inc, supra).
Having defaulted, the Respondent has placed itself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is said by the Complainant in order to determine whether or not it has been so established.
The Complainant contends that it has exclusive rights in the mark XENICAL and that the Respondent has no licence, permission, authorization or consent to use “Xenical” in its Domain Name. It follows, therefore, that the Respondent has no right to the use of that mark as part of the Domain Name and that any unauthorized use for commercial purposes would violate the exclusive trademark rights enjoyed by the Complainant. (Caesar's World Inc & Park Place Entertain Corporation v. Japan Nippon, WIPO Case No. D2003-0615; AT&T Corp v. Roman Abreu d/b/a Smartalk Wireless WIPO Case No. D2002-0605; America Online Inc v. Xianfeng Fu, WIPO Case No. D2000-1374; Sybase Inc v. Analytical Systems, WIPO Case No. D2004-0360; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, supra).
Apart from there being no authorization on the part of the Complainant, the Panel is, in the absence of challenge by the Respondent, entitled to draw the inference that there is no relationship or association between the Complainant and the Respondent, whether by licence or otherwise. The inference is warranted by reason of the Complaint that the Respondent is misleading consumers by suggesting such a link with its website. This also militates against the Respondent having rights or legitimate interests in or other entitlement which might fall within that purview (Sybase Inc v. Analytical Systems, supra).
In view of the facts and circumstances put up on the ground and which are unchallenged, the Panel is of the view that the Complainant should therefore succeed on this ground as well.
The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of the Policy.
E. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial again, 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 produce or service on your website or location."
Whilst bad faith can exist where a domain name contains in its entirety a complainant's trademark, the Panel does not see why this principle cannot also apply where a domain name contains the dominant feature of the trademark of the Complainant and where the whole trademark has been so incorporated.
Moreover, with particular regard to paragraph 4(b)(iv) of the Policy quoted above, the Respondent suggests in its website that it either has a relationship with the Complainant or does so with the approval or endorsement of it. (Standard Innovation Corporation v Shopintimates USA,supra).
It is also not without significance that Annex 5 to the Complaint, depicting what can be seen on the Respondent's website, contains a detailed description of the medication Xenical under a main heading "BUY XENICAL WITHOUT PRESCRIPTION IN THE UK" followed immediately by a sub-heading "WHAT IS XENICAL?"
This, in the view of the Panel, puts the matter beyond doubt that the Respondent is clearly inviting would-be customers to acquire the medication XENICAL from it.
The implication arising from the website, in the mind of a would-be customer, is therefore clearly that the website is either of or in some way associated with the Complainant, which in turn, in the view of the Panel, leads to the inescapable conclusion that such potential customer is invited to do business with either the Complainant itself or someone authorized on its behalf in relation to its goods. That would, by application of paragraph 4(b)(iv) of the Policy, constitute bad faith registration and use. (Media 24 Limited v. Llewellyn Du Randt, WIPO Case No. D2009-0699; San Lameer (Pty) Ltd and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, supra). In this instance, further proof of bad faith is the use of the Domain Name as a forwarding address to a for-profit on-line pharmacy (Pfizer Inc v. jg a/k/a Josh Green, WIPO Case No. D2004-0784).
Moreover, by use of the Complainant's trademark as incorporated in the Domain Name, the Respondent is trading on the value established by the Complainant in its marks, to attract Internet users and thereby deriving economic benefit from either those users attracted to the Respondent's website or by receiving compensation from others, if these would-be customers are routed elsewhere. Such a practice would also constitute bad faith registration and use. (Yahoo! Inc and GeoCities v. Data Art Corp, DataArt Enterprises Inc., Stonybrook Investments, Global Net 2000 Inc., Powerclick Inc. and Yahoo Search, Inc., WIPO Case No. D2000-0587).
The selection of a domain name that is confusingly similar to the Complainants’ trademark and the Complainant's domain names, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant in the market and therefore it selected the Domain Name in circumstances where it was very well aware of the Complainant's reputation and intended to benefit therefrom. (Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128).
The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <buyxenical120mg.com> be transferred to the Complainant.
Archibald Findlay SC
Dated: August 22, 2012