WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Whois Agent, Web Domains By Proxy / Big Star Markets, Sam Mason
Case No. D2012-2173
1. The Parties
The Complainant is F. Hoffmann - La Roche AG of Basel, Switzerland represented internally.
The Respondent is Whois Agent, Web Domains By Proxy / Big Star Markets, Sam Mason of Lahore, Punjab, Pakistan, and Robersonville, North Carolina, United States of America, respectively.
2. The Domain Name and Registrar
The disputed domain name <evexenical.com> is registered with Paknic (Private) Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 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 9, 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 the same date.
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 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2012.
The Center appointed Erica Aoki as the sole panelist in this matter on December 13, 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.
The language of the administrative proceeding is English (being the language of the Registration Agreement).
4. Factual Background
The Complainant and its affiliated companies is one of the world’s leading research and development of pharmaceutical and diagnostic products having global operations in more than 100 countries.
The Complainant’s mark XENICAL is protected as trademark in a multitude of countries worldwide since August 5, 1993.
The disputed domain name <evexenical.com > was registered on October 21, 2012.
The disputed domain name <evexenical.com>, as at the date of this Decision, does not resolve to an active website.
5. Parties’ Contentions
XENICAL is an oral prescription weight loss medication used to help obese people lose weight and keep this weight off.
The Complainant contends that the disputed domain name <evexenical.com> incorporates the Complainant’s trademark XENICAL in its entirety with addition of word “eve” which does not make sufficient distinction with Complainant’s trademark.
The Complainant further contends that it has not granted license or permission for the Respondent to use XENICAL in a domain name and the Respondent is impermissibly using the disputed domain name as a pharmacy online and thus has no rights or legitimate interest, and asserts that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In this Panel’s view, the Complainant has satisfied the requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in respect of which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
Based on the facts presented by the Complainant, this Panel finds that the disputed domain name is confusingly similar to the mark in which the Complainant has rights in the sense of paragraph 4(a)(i) of the Policy. The Panel finds that there is no doubt that the disputed domain name is confusingly similar to the Complainant’s registered trademark, as the disputed domain name includes the Complainant’s mark in full, with the addition of the nondistinctive word “eve” and the gTLD “.com”..
B. Rights or Legitimate Interests
- The Respondent is in default and thus has made no affirmative attempt to show any rights or legitimate interests in the disputed domain name in light of the Complainant’s prima facie case;
- The Policy indicates that a registrant may have a right or legitimate interest in a domain name if it was making use of the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute;
- The Respondent’s knowledge of the Complainant’s right is presumed since it is a well-known trademark;
- The Respondent is in no way connected with the Complainant and has no authorization to use any of the Complainant’s trademarks; and
- There is no evidence that the Respondent is or was commonly known by the disputed domain name as an individual, business or other organization.
Thus, in this Panel’s view, the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, as the Respondent appears to use the disputed domain name to redirect to a pharmacy online.
Accordingly, the Panel notes that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use activity.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith under paragraph 4(b) of the Policy and that the Respondent has used the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to the Respondent’s website or other online location by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the Respondent’s Web site.
In this Panel’s view, there is no doubt that the Respondent was aware of the Complainant’s rights on the XENICAL mark at the time the disputed domain name was registered, indicating that such registration was made in bad faith.
Based on that evidence, the Panel finds that the Respondent registered the disputed domain name with the intention of illegally obtaining benefits and harming the Complainant’s reputation in the market.
Also, based on the undisputed allegations, the Panel considers that the registration and use of the disputed domain name by the Respondent is in order to divert Internet users seeking information about the Complainant, pursuant to paragraph 4(b)(iv) of the Policy.
Accordingly, and as also supported by the Panel’s findings above under the second element of the Policy, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.
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 <evexenical.com> be transferred to the Complainant.
Date: January 2, 2013