WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Fundacion Private Whois
Case No. D2012-1474
1. The Parties
Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
Respondent is Fundacion Private Whois of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <buyxenical1.com> is registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2012. On July 20, 2012, the Center transmitted by email to Internet.bs Corp a request for registrar verification in connection with the disputed domain name. On July 23, 2012, Internet.bs Corp. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact.
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 Respondent of the Complaint, and the proceedings commenced on July 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 17, 2012.
The Center appointed John Terry as the sole panelist in this matter on September 17, 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, together with its affiliated companies is one of the world’s leading manufacturers of pharmaceutical and diagnostic products and has operations in more than 100 countries. Complainant’s trademark XENICAL has been protected in a multitude of countries and registrations include international registration numbers 612908 and 699154 with a priority date of August 5, 1993. The trademark XENICAL has been used in relation to an oral prescription weight-loss medication.
The disputed domain name has been used to redirect Internet users to a pharmacy online. Complainant has granted no licence or permission or authorisation for Respondent to utilise any domain name containing the trademark XENICAL or any confusingly similar trademark for the purpose of attracting Internet users to a pharmacy online.
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to Complainant’s trademark since it incorporates the trademark in its entirety and merely adds the generic term “buy” and the numeral “1” and this does not sufficiently distinguish the disputed domain name from Complainant’s trademark.
Complainant relies on an established principle for example in Lilly ICOS LLC v. John Hopking/Neo net Ltd., WIPO Case No. D2005-0694, wherein the panel stated "generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.”
Complainant’s use and registration of the trademark XENICAL predates the registration of the disputed domain name.
Complainant contends that Respondent has used the disputed domain name for commercial gain and with the purpose of capitalising on the fame of Complainant’s trademark XENICAL. Complainant relies on a principle established by the panel in Hoffman-La Roche Inc. v.1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793. In that case the panel held that Respondent was not making a legitimate noncommercial or fair use of the domain name under the Policy paragraph 4(c)(iii). Respondent had been selling pharmaceuticals via a website associated with the disputed domain name. Accordingly, Complainant contends Respondent should have no rights or legitimate interests in the disputed domain name.
Complainant contends that at the time of the registration of the disputed domain name, namely July 10, 2012, Respondent must have had knowledge of Complainant’s well-known trademark XENICAL and accordingly the disputed domain name was registered in bad faith.
Furthermore, Complainant contends the disputed domain name is being used in bad faith by virtue of Respondent’s attempt to attract, for commercial purposes, Internet users to Respondent's websites, and in so doing is creating a likelihood of confusion by causing such users to believe that the websites behind the links are associated or recommended by Complainant.
Complainant relies on the principle that bad faith is established when “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy”; see Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Panel is satisfied that Complainant and the Center have taken all reasonably available means to serve on Respondent copies of all relevant documents as per paragraph 2(a) of the Rules and given Respondent a reasonable opportunity to respond under the Policy and the Rules. Despite this, there has been no Response. The Panel finds that the Complaint can proceed based on the certified content of the Complaint and documents submitted in accordance with the Policy and the Rules.
The Rules require that the Panel decide a complaint on the basis of the documents submitted, and Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark XENICAL in that it differs merely by the addition of non-distinctive material, namely the prefix “buy“ and the suffix “1”. The Panel adopts the contentions of Complainant. The Panel finds that the requirements in paragraph 4(a)(i) of the Policy are met.
B. Rights or Legitimate Interests
Annex 5 to the Complaint shows that the disputed domain name was used to redirect Internet users to a pharmacy online. The Panel accepts that Respondent was using the disputed domain name commercially and using the trademark of Complainant to attract Internet users to its website.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes using a domain name in connection with a bona fide offering of goods and services, or the respondent being commonly known by the domain name or the respondent making a legitimate noncommercial or fair use of a domain name without intent for commercial gain to misleadingly divert consumers. See Policy, paragraphs 4(c)(i)-(iii). It has been established that an absence of rights or legitimate interests can properly be found if Complainant makes out a prima facie case and Respondent enters no response; see for example Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
In the present case, there is no evidence that the disputed domain name is being used in connection with a bona fide offering of services, such as genuine product of Complainant under the trademark XENICAL. Respondent has had an opportunity that it has not taken up to demonstrate such a right or legitimate interest in the disputed domain name. Furthermore, there is no evidence that Respondent has ever been commonly known by the disputed domain name. Finally, the evidence in the Complaint and in particular Annex 5 to the Complaint shows that the disputed domain name was used to redirect Internet users to a pharmacy online, that is clearly for commercial gain and has a high propensity to mislead and divert consumers.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel also finds that the third element of paragraph 4(a) of the Policy, namely bad faith registration and bad faith use, is also established. In this Panel’s view, Respondent must have known or ought to have known of the well-known trademark of Complainant XENICAL when it applied to register the disputed domain name in July 2012. Secondly, the Panel finds that the disputed domain name is being used in bad faith as demonstrated by the Internet website of Respondent as evidenced in Annex 5 to the Complaint. The Panel accepts Complainant’s contention that the manner of use of the disputed domain name by Respondent is misleading or has a high propensity to mislead consumers and to confuse them by virtue of the fact that consumers are likely to believe that the websites behind these links are associated with or recommended by Complainant when this is not the case.
It is well-established that the Panel may draw inferences about bad faith registration or use in the light of the circumstances such as a lack of response to the complaint and a lack of conceivable good faith; see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith and the requirements of paragraph 4(b)(iv) of the Policy are met.
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 <buyxenical1.com> be transferred to Complainant.
Dated: October 1, 2012