WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Domain Name Privacy Protection and Valeriia Lysokobylko
Case No. D2012-2027
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Domain Name Privacy Protection of Cordoba, Argentina and Valeriia Lysokobylko of Lugovaya - Luganskaya, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <orlistatbuyxenical.com> is registered with Dattatec.com de Irazoqui Veronica Palmira (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2012. On October 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2012, the Registrar 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 the Complainant on November 2, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 5, 2012.
On November 2, 2012, the Center transmitted the language of the proceedings document to the parties in both English and Spanish. On November 5, 2012, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.
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 the Respondent of the Complaint, and the proceedings commenced on November 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2012.
The Center appointed Mario A. Sol Muntañola as the sole panelist in this matter on December 11, 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
Hoffmann-La Roche AG (hereinafter referred to as “La Roche”) is a company organized under the law of Switzerland and is a research-focused healthcare group in the fields of pharmaceuticals and diagnostics, operating in more than 100 countries.
The mark XENICAL designates an oral prescription weight loss medication. The Complainant has proved to have International registration No. 612908 and 699154 for the trademark XENICAL, and provides copies of the certificates for both of these registrations. Priority date for the trademark XENICAL is August 5, 1993.
The Respondent owns the domain name <orlistatbuyxenical.com>, registered through Dattatec.com de Irazoqui Veronica Palmira, according to the information contained in “whois.dattatec.com”. The Registrar attended the request of the Center disclosing registrant and contact information of the referred domain.
5. Parties’ Contentions
The Complainant contends to own the trademark XENICAL in a multitude of countries worldwide; an example of this are copies of two International Registration certificates accompanied to the Complaint as Annex 3.
XENICAL is used to designate an oral prescription weight loss medication to help obese people lose weight and keep this weight off. Priority date of the trademark XENICAL is August 5, 1993.
La Roche alleges that the disputed domain name is confusingly similar to its trademark XENICAL, as the incorporation of the terms “buy” and “orlistat” together with the trademark does not sufficiently distinguish the disputed domain name from the trademark. The Complainant points out two prior UDRP cases as support.
Also, La Roche asserts that the use and registration of the trademark XENICAL predates the Respondent’s registration of the disputed domain name, as well as alleges that the disputed domain name is confusingly similar to La Roche’s trademark.
The Complainant denies that the Respondent has any rights or legitimate interests over the disputed domain name, as La Roche is the exclusive right owner of the word XENICAL, as well as affirms that it has never licensed or given permission or authorization to use it to the Respondent.
La Roche alleges the disputed domain name is being used for commercial purposes and with the aim of capitalizing on the fame of the trademark XENICAL. He provides a copy of several printouts of the site of the disputed domain name to prove that it is being used to redirect users to a pharmacy on-line and refers to a UDRP case were the Complainant was involved, also regarding a website selling pharmaceuticals (Hoffmann-La Roche Inc. v. 1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No.. D2003-0793).
La Roche points out that the disputed domain name was registered on August 28 2012, and considers that by that time the Complainant’s product/mark was already well-known. According to the Complainant, bad faith is also extended to the use of the disputed domain name, as the Respondent has intentionally attempted to attract Internet users to his websites by creating a likelihood of confusion with La Roche’s trademark as to the source, affiliation and endorsement of respondent’s website or of the products or services in the site.
Finally, the Complainant contends that the Respondent is misleading consumers and confusing them by making them believe that the website behind the links are associated or recommended by the Complainant.
B. The Respondent
The Respondent did not reply to the Complainant’s contentions, or to the Complaint.
6. Discussion and Findings
A. Language of the Proceeding
In accordance with paragraph 11(a) of the Rules, “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
La Roche submitted the Complaint in English language. The Center, according to the information received by the Registrar of the disputed domain name, notified to the Complainant that the Registration Agreement was in Spanish language and requested La Roche to either (1) submit the Complaint in Spanish, (2) give satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (3) submit a request for English to be the language of the proceeding, including arguments and supporting material. The Complainant attended the request and submitted communication to the Center requesting that English be the language of the proceeding for the four following reasons:
- The information contained in the Registrar’s Registration Agreement (see Annex 2 of the Complaint) is in English language.
- The Complainant sent in October 8 2012 a cease and desist letter to the Respondent regarding the domain in dispute in English language (Annex A of the Amendment to the Complaint), and did not get any response informing of the incomprehension of the letter and, in fact, did not get any feedback of the same.
- Printouts of the website of the disputed domain name (see Annex 6 of the Complaint) are in English language.
- The Complainant alleges that Expedia, Inc. v. Matias Luque, WIPO Case No. D2012-0921 (provided as Annex B of the Amendment to the Complaint), is a case in which the domain name was also registered with the Registrant and the Decision, was rendered in English language.
This Panel adds to the foregoing reasons stated that the Complainant filed the Complaint in English language and the Respondent did not reply to the same.
Attending to the default of the Respondent, together with the reasons alleged by the Complainant, and according to paragraph 11 (a) of the Rules, this Panel determines that the language of the proceeding shall be English.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
A. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B. The Respondent has no rights or legitimate interests in the disputed domain name; and
C. The disputed domain name has been registered and is being used in bad faith.
As in other cases where a respondent fails to reply substantively to a UDRP complaint, the Panel must still satisfy itself that the complainant has met his overall burden of proof under paragraph 4 of the Policy. Thus, the uncontested facts, supported by plausible evidence, must provide a sufficient prima facie basis for finding confusing similarity with the complainant’s trademark and then for inferring that, more probably than not, the respondent has no right or legitimate interest in the domain name and has registered and used it in bad faith.
B. Identical or Confusingly Similar
The Complaint argues the confusing similarity between the domain name and the Complainant’s trademark XENICAL. The disputed domain name wholly incorporates the Complainant’s registered trademark XENICAL, and adds the term “orlistat” (generic term of the medication in question) and the descriptive term “buy”. The addition of these does not lessen the inevitable confusion of the disputed domain name with the Complainant’s registered trademark XENICAL, but rather exacerbates it.
The Panel agrees with the arguments stated in the Decision Hoffmann-La Roche Inc. v. WhoisGuard/ Oursafeonlinepharmacy, John O’Sullivan, WIPO Case No. D2010-1023 and cited by La Roche in the Complaint, “Orlistat is the generic term (INN) of the medication in question. The mere addition of the term “orlistat”, to the mark, does not change the overall impression of the designations as being domain names connected to the mark”.
XENICAL constitutes a well-known trademark in the business sector in which the Complainant acts, and it is more than probable that the Respondent knew this trademark, especially because the Respondent is associating the product XENICAL to the generic name of the medication, which brings this Panel to the conclusion that it cannot be due to coincidence. This is further reinforced by the fact that the disputed domain name <orlistatbuyxenical.com> redirects to a pharmacy on-line, the same business sector in which the Complainant operates. Also, it cannot be coincidence that the home page of the Respondent’s domain name contains an image of La Roche package for the product XENICAL.
Taken these facts together, this Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant and due to its default, has not provided any evidence that it has been commonly known by the disputed domain name, which is an obstacle to proving any possible rights it may have over such denomination.
The Respondent registered the disputed domain name in August 2012, years after the Complainant registered the trademark XENICAL in relation to the Complainant pharmaceutical business (priority date: August 5, 1993), at a time when the medication in question was already well-known in the sector.
Furthermore, the Respondent has not replied to the prima facie contentions in the Complaint, abandoning any option to provide any evidence of rights and/or legitimate interests he may have over the disputed domain name.
Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
The website to which the disputed domain redirects Internet users is a pharmacy on-line. This Panel considers that the Respondent has neither used the disputed domain in connection with a bona fide offering of goods, nor used the disputed domain for a legitimate noncommercial or fair use.
The Complainant has conducted a substantial business of international renown for decades, having one of its products known under its trademark XENICAL. This Panel is persuaded that the Respondent was likely aware of the Complainant’s trademark when it registered the disputed domain name. Moreover, this Panel considers that the Respondent has used the disputed domain name with the intention of attracting Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, affiliation or endorsement of the website. The well-known character of the XENICAL trademark in the pharmaceutical business together with the intention of the Respondent to attempt to attract users to its website (for commercial purposes), and also the inclusion of an image of the packaging of La Roche’s product XENICAL must be deemed to have been done in bad faith.
Finally, it is noteworthy to say that this Panel has made a search in the Internet regarding the false Registrant’s name used by the Respondent and has verified that is the owner of multitude of domains, many of which appear to contain renowned and notorious trademarks. The Panel finds that the foregoing also supports the bad faith in the registration and use of the disputed domain name.
Pursuant to paragraph 4(b)(iv) of the Policy, this Panel finds that the disputed domain name has been registered and is being used in bad faith.
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 <orlistatbuyxenical.com> be transferred to the Complainant.
Mario A. Sol Muntañola
Date: December 25, 2012