World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Mason Jonathan

Case No. D2012-2100

1. The Parties

The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.

The Respondent is Mason Jonathan of Sprendlingen, Germany.

2. The Domain Name and Registrar

The disputed domain name <rxenical.com> is registered with Todaynic.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2012. On October 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 2012, the Registrar 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 formally notified the Respondent of the Complaint, and the proceedings commenced on November 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2012.

The Center appointed Mario A. Sol Muntañola as the sole panelist in this matter on December 20, 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

F. 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 No. 699154 for the trademark XENICAL; it provides copies of the certificates for both of these registrations. Priority date for the trademark XENICAL is August 5, 1993.

The Respondent owns the disputed domain name <rxenical.com>, registered on October 8, 2012. On date December 24, 2012 the website to which the disputed domain name resolved was not operational.

5. Parties’ Contentions

A. Complainant

The Complainant contends to own the trademark XENICAL in a multitude of countries worldwide, examples of which are copies of two International Registration Certificates (annex 3 to the Complaint) of the registration No. 612908 (XENICAL, denominative trademark) and No. 699154 (composite trademark including the word “Xenical”), both registered for class 5 of the International Classification of Goods and Services, with priority dates as of 5th August 1993 and 21st April 1998, respectively.

XENICAL is used to designate an oral prescription weight loss medication that according to the Complainant helps obese people lose weight and keep this weight off. Priority date of trademark XENICAL is August 5, 1993.

La Roche alleges that the Respondent’s disputed domain name is confusingly similar to its trademark XENICAL, as the addition of the letter “r” does not sufficiently distinguish the disputed domain from the trademark. To this regard, the Complainant points out UDRP decision Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694.

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 trademark XENICAL. Also, the Complainant 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 the fame of the trademark XENICAL. To this effect, the Complainant provides several printouts of the site of the disputed domain name (annex 5 to the Complaint), printed as of October 22, 2012, to prove its use to redirect users to a pharmacy on-line and refers to a UDRP case where the Complainant was involved, also regarding to 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 October 8, 2012, and considers that by that time the Respondent had knowledge of the Complainant’s well-known product/mark. 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 its website by creating a likelihood of confusion with La Roche’s trademark as to the source, affiliation and endorsement of the 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 at the disputed domain name is associated or recommended by the Complainant and that this may generate unjustified revenues and, in consequence, is illegitimately capitalizing on the XENICAL trademark fame.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

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 its overall burden of proof under paragraph 4 of the Policy. Thus, the uncontested facts, supported by plausible evidence, must provide a sufficient 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 disputed domain name and has registered and used it in bad faith.

A. Identical or Confusingly Similar

The Complaint argues the confusing similarity between the disputed domain name and the Complainant’s trademark XENICAL. The disputed domain name wholly incorporates the Complainant’s registered trademark XENICAL, and adds the letter “r”. The addition of this letter does not lessen the inevitable confusion of the disputed domain name with the Complainant’s registered trademark XENICAL.

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 at the time of registering the disputed domain name, especially because the Respondent is using the trademark XENICAL to redirect Internet users to a pharmacy on-line, same business sector in which the Complainant operates. Also, it cannot be coincidence that the website of the Respondent’s disputed 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.

B. 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 October 2012, years after the Complainant registered the trademark XENICAL in relation to the Complainant’s pharmaceutical business (priority date: August 5, 1993), time when the trademark in question was already well-known in the sector.

Furthermore, the Respondent has not replied to the Complaint, abandoning any option to demonstrate any rights and/or legitimate interests it 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.

C. Registered and Used in Bad Faith

The website to which the disputed domain name resolved redirected Internet users to a pharmacy on-line. This Panel therefore considers that the Respondent has neither used the disputed domain name in connection with a bona fide offering of goods, nor used the disputed domain name 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 registering the disputed domain name, especially due to the fact that it has used it in a website concerning the same sector in which the Complainant operates. Moreover, this Panel considers that the Respondent has used the disputed domain name with the intention of attracting Internet users to its websites 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 pharmacy on-line website (for commercial purposes), and also the inclusion of an image of the packaging of La Roche’s product Xenical in the website to which the disputed domain name resolved (contained in one of the printouts of the website provided as Annex 5 to the Complaint) must be deemed to have been done in bad faith.

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.

7. Decision

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 <rxenical.com> be transferred to the Complainant.

Mario A. Sol Muntañola
Sole Panelist
Date: January 3, 2013

 

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