WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Fundacion Private Whois
Case No. D2012-1596
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland¸ internally represented.
The Respondent is Fundacion Private Whois of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain names <buyxenicalusa.com>, <xenicalonlinepharmacy.com>, <xenicalonlinepharm.com>, <xenicalpricer.com> and <xenicalwithoutrx.com> are registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 8, 2012. On August 8, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 10, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details for the disputed domain names which differed from the contact information in the Complaint.
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 at both the addresses appearing in the Complaint and also the majority of those appearing in the registrar verification, and the proceedings commenced on August 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2012
The Center appointed David J.A. Cairns as the sole panelist in this matter on November 9, 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.
On November 20, 2012 the Center transmitted the Complaint to the remaining addresses appearing in the registrar verification not included in the notification of August 10, 2012. For completeness, the Center, at the same time, also transmitted the Notification of the Respondent’s Default, dated September 3, 2012, and the Notification of Panel Appointment, dated November 9, 2012, to these addresses. The Respondent was advised of an additional period of six days in order to indicate to the Center by return email whether it intended to participate in these proceedings by responding to the notification of the Complaint, and that if it did not respond then the Panel would proceed to a decision. The Respondent did not respond to this email.
4. Factual Background
The Complainant is the registered owner of the international trademark registration Nº 612,908 dated March 3, 1994 for the trademark XENICAL for pharmaceutical, veterinary and hygenic products. This international registration is based on the Swiss registration Nº 407,537 dated August 5, 1993. The Complainant is also the registered owner of the international trademark registration Nº 699,154 dated October 22, 1998 for the trademark consisting of the word XENICAL capped by a seven element design motif.
The disputed domain names were all registered on July 4, 2012.
The Panel entered the disputed domain names in his web browser on November 12, 2012. The disputed domain names <buyxenicalusa.com>, <xenicalonlinepharm.com>, <xenicalpricer.com> and <xenicalwithoutrx.com> all resolved to the same landing page. There was some medical themed illustrations, and the text “Buy xenical Online Without Prescription from Official Certified Pharmacy. Fast Shipping (COD, FedEx). Next Day Delivery......To Buy xenical, Please click the link below”. The link led led to a webpage of “US RX Pharmacy” where “Xenical (Generic)” was for sale in various weights and pill quantities. There was a photo of a blue pill, on which the words Xenical and “Roche” were just visible. The Complainant’s design mark appeared on the page above the word “Orlistat”, and with the subscript “Xenical® is a registered trademark of Roche Laboratories”. While the website also uses in places the international nonproprietary name of Xenical (Orlistat), it is clear from the website that what was being offered for sale was a product described as “Generic Xenical”.
The disputed domain name <xenicalonlinepharmacy.com> had a different landing page. It had a heading ‘Buy Xenical’, and other headings providing information about Xenical, as well as various photos. There was a link marked ‘Click here to order’ which led to the same webpage of US RX Pharmacy as the other disputed domain names.
The US RX Pharmacy webpage for the sale of “Generic Xenical” also had a list entitled “Med Categories” on the left hand side of the page. This list referred to classes of pharmaceuticals such as “Men’s Sexual Health”, “Antidepressants”, “Muscle Relaxants” and many others, and contained links to the sale of these classes of pharmaceuticals.
5. Parties’ Contentions
The Complainant states that it is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, having global operations in more than 100 countries. The Complainant further states that it holds registrations in over hundred countries on a world-wide basis for XENICAL, which is used in respect of an oral prescription weight loss medication.
The Complainant states that the disputed domain names are confusingly similar to the Complainant’s XENICAL trademark, as they all incorporate this mark in its entirety, and the addition of the generic terms “online”, “price(r)”, “pharm(a)”, “pharmacy”, “withoutrx” (the Complainant states that “rx” is a commonly used acronym for “without prescription”), “buy” and “usa” do not sufficiently distinguish the disputed domain names from the trademark. It also notes that the Complainant’s use and registration of the mark XENICAL predate the Respondent’s registration of the disputed domain names.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It says that the Complainant has exclusive rights for XENICAL, and no licence, permission, authorization or consent was granted to use XENICAL in the disputed domain names. Furthermore, the Respondent uses the disputed domain names for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark XENICAL, by redirecting Internet users to a pharmacy on-line.
The Complainant alleges that the disputed domain names were registered and are being used in bad faith. It states that the disputed domain names were registered in bad faith since at the time of their registration i.e. on July 4, 2012, the Respondent had knowledge of the Complainant’s well-known product/mark XENICAL. The disputed domain names are being used in bad faith as the Respondent has intentionally attempted (for commercial purposes) to attract Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement of the Respondent’s websites. It refers to Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. As a result, the Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the XENICAL trademark.
The Complainant requests that the disputed domain names be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel notes that the original notification of the Complaint did not fully comply with paragraph 2(a) of the Rules. This was rectified by the further notification on November 20, 2012, and an additional period was allowed for the Respondent to advise whether it wished to file a Response. The Panel is satisfied that the Respondent has been notified of the Complaint and the other procedural steps in this proceeding, and has had a fair opportunity to present its case.
The Panel is required to decide the 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 15(a) of the Rules).
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) that the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in a disputed domain names.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant owns the XENICAL trademark internationally.
The disputed domain names are not identical with the Complainant’s trademark. The disputed domain names all incorporate the Complainant’s trademark entirely, adding in one case the prefix ‘buy’ and the suffixes ”pricer”, “onlinepharm”, “withoutrx”, “usa” and “onlinepharmacy”. “The fact that a trademark is incorporated in its entirety in a domain name is a solid indication of but does not ipso facto mean that the domain name is confusingly similar to the trademark. The similarity of the trademark and the domain name depends on many factors, including the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin.” (See Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870).
In the present case, the Panel considers that the disputed domain names are all confusingly similar to the XENICAL trademark for the following reasons: (a) XENICAL is an unusual and invented word with a high degree of inherent distinctiveness, and is the most prominent element in all of the disputed domain names; (b) the prefix and suffixes in the disputed domain names are all common or descriptive words or expressions; (c) the prefix and suffixes in the disputed domain names refer to purchase (“buy”, “pricer”), geographical availability (‘usa’), as well as to pharmaceuticals or more generally to the purchase of pharmaceuticals online (“onlinepharma”, “withoutrx” “onlinepharmacy”). In this way they emphasize the trademark function of XENICAL in that XENICAL is the pharmaceutical that can be bought online, or without prescription, or in the USA; and (d) the disputed domain names in their entirety identify locations that Internet users will assume offer the Complainant’s pharmaceutical for sale.
Therefore the prefix and suffixes added to the trademark XENICAL in the disputed domain names are not sufficient to avoid a confusing similarity with the XENICAL trademark, and so the first element required by the Policy is satisfied.
B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain names: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain names; (ii) the Respondent is not authorized or licensed by the Complainant to use the XENICAL trademark or to register and use the disputed domain names; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain names; (iv) the Respondent has been making a commercial use of the disputed domain name (through offering pharmaceuticals for sale) so the circumstances described in paragraph 4(c)(iii) of the Policy do not exist in the present case.
As regards paragraph 4(c)(i) of the Policy, the Respondent is using the disputed domain names in relation to an offer of goods or services. However, this offering is not bona fide for two distinct reasons. Firstly, the disputed domain names direct to a website that sells not the Complainant’s trademarked pharmaceutical but a generic equivalent. Secondly, the Respondent’s website also offers for sale many other pharmaceutical products, and so is attracting Internet users through the fame of the Complainant’s trademark that are then offered a wide range of unrelated products. For both these reasons the Respondent’s conduct constitutes “bait and switch” marketing, which is not bona fide: see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
Accordingly, and in the absence of any response from the Respondent providing any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain names, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
Thus, the second element of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
“Xenical” is an invented word with no meaning in English. It is highly distinctive and has been extensively used by the Complainant internationally. The Respondent has registered and used five domain names incorporating this well known trademark to offer for sale not the Complainant’s product, but the generic equivalent of a competitor, as well as unrelated products. The Respondent is in the business of the sale of pharmaceuticals, and no doubt knew of the Complainant’s trademark at the time of registration of the five disputed domain names, and deliberately sought to use its goodwill to attract Internet users seeking the Complainant’s product. The Panel concludes that the Respondent has registered and used the disputed domain names in order to deceive Internet users seeking the Complainant’s product, so as to generate revenue from selling unrelated or competing pharmaceuticals. This constitutes bad faith registration and use within the meaning of the Policy.
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith. In particular, paragraph 4(b)(iv) of the Policy states that if the Panel finds that the Respondent has used the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website, it should be taken as evidence of the registration and use of the domain names in bad faith.
In this case, the Respondent’s use of the disputed domain names with the intention to attract Internet users for commercial gain is established by the fact that the disputed domain names host websites offering pharmaceuticals for sale. The likelihood of confusion as to source, sponsorship, affiliation or endorsement is established by the fact that the disputed domain names are all confusingly similar to the XENICAL trademark, and Internet users are likely to assume the disputed domain names host a website that is affiliated with the Complainant, or at least offers for sale XENICAL originating from the Complainant or subject to quality control by the Complainant. When the Internet user clicks on the link to the US RX Pharmacy website, then the use of a photograph of a blue pill with the trademark XENICAL and the name ‘Roche’, the use of the Complainant’s XENICAL trademark with the design motif, and the subscript recognizing that XENICAL is a trademark of Roche Laboratories confirm this impression of source or affiliation.
The US RX Pharmacy website to which the disputed domain names resolve offers for sale “Generic Xenical”. This description is itself misleading as the generic name of this pharmaceutical is “Orlistat”, and a further example of the Respondent’s bad faith exploitation of the Complainant’s goodwill in the XENICAL trademark, and deception of Internet users. There is no basis to assume that Internet users would realize from the use of the term “generic” in this way that the pharmaceutical offered for sale did not originate with the Complainant. In any event “the fact that the deception as to source or affiliation is rectified prior to purchase does not alter the fact that the buyer has been brought to the point of purchase by deception and a bad faith misuse of the goodwill attached to the Complainant’s trademark” (see F. Hoffmann-La Roche AG v. Alex Rino WIPO Case No. D2012-1867).
Finally, the fact that the Respondent has registered five distinct domain names incorporating the Complainant’s trademark is further evidence of a deliberate intention to exploit the Complainant’s trademark for commercial gain and of bad faith under the Policy.
Accordingly, the third element of paragraph 4(a) of the Policy is also satisfied.
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 names <buyxenicalusa.com>, <xenicalonlinepharmacy.com>, <xenicalonlinepharm.com>, <xenicalpricer.com> and <xenicalwithoutrx.com> be transferred to the Complainant.
David J.A. Cairns
Dated: November 23, 2012