WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Whois Privacy Protection Service by onamae.com / Fukutaro Kojima

Case No. D2015-1281

1. The Parties

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

The Respondent is Whois Privacy Protection Service by onamae.com of Tokyo, Japan / Fukutaro Kojima of Hokkaido, Japan.

2. The Domain Name and Registrar

The disputed domain name <xenical.diet> (the “Domain Name”) is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2015. On July 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 27, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 27, 2015 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 July 28, 2015.

On July 27, 2015, the Center notified the Parties in both English and Japanese that the language of the Registration Agreement for the Domain Name was Japanese. On July 28, 2015, the Complainant confirmed that it requests for English to be the language of the proceeding, to which the Respondent has not replied.

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 both in English and Japanese, and the proceeding commenced on August 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2015.

The Center appointed Haig Oghigian as the sole panelist in this matter on September 8, 2015. 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

The Complainant is, together with its affiliated companies, a global pharmaceutical and diagnostics research group, with operations in more than 100 countries.

The Complainant owns trademark registrations in multiple countries including, without limitation, the following trademark registrations for the mark XENICAL (the “XENICAL Marks”):

- Japan Registration No. 4917489, registered December 22, 2005; and

- Japan Registration No. 4092868, registered December 12, 1997.

Xenical is a prescription medicine used for weight-loss purposes.

The Domain Name was registered on June 20, 2015.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the registration of the Domain Name be transferred from the Respondent to the Complainant.

The Complainant argues that the Domain Name is confusingly similar to the XENICAL Marks. The second-level Domain Name incorporates the Complainant’s trademark XENICAL in its entirety. The Top-Level Domain consists of a new generic top-level domain (“gTLD”) “.diet”. The Complainant asserts that the new gTLD does not sufficiently distinguish the Domain Name from the XENICAL Marks as the nature of the Complainant’s Xenical drug is to support dieting and weight loss.

The Complainant also asserts that the Respondent has no rights or legitimate interests in the Domain Name as the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the XENICAL Marks. The Complainant adds that (i) the Respondent is redirecting customers to an online pharmaceutical website that offers Xenical products, which falsely implies that its products are related or similar to those of the Complainant; (ii) the Respondent did not reply to the Complainant’s cease-and-desist letter and has not used the opportunity provided to the Respondent to present any case of rights or legitimate interests in the Domain Name, and therefore, the Respondent cannot demonstrate any rights or legitimate interests in the Domain Name.

The Complainant also asserts that the Domain Name was registered and is being used in bad faith. The registration of the Domain Name was well after the Complainant’s registrations of the XENICAL Marks and the Respondent has deliberately chosen a domain name with a connection to the Complainant’s well-known mark to attract customers to the Respondent’s websites. As a result, the Respondent may generate unjustified revenues and therefore illegitimately capitalize on the Complainant’s XENICAL Marks.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceeding

While the Panel notes that the language of the Registration Agreement is Japanese and the website at the Domain Name resolves to an online pharmacy in Japanese, the Panel notes that the Respondent did not object to English being the language of the proceeding and did not file a response. In view of these circumstances, noting the Complainant’s request, and in accordance with previous UDRP decisions, the Panel decides that English will be the language of the proceeding pursuant to paragraph 11 of the Rules.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the complainant must prove that the domain name is identical or confusingly similar to a trademark in which the complainant has rights.

The Domain Name contains the XENICAL Mark in its entirety, and “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249. Further, “[t]he addition of the generic term ‘diet’ to the trademark portion of the Domain Name does not preclude a finding of confusing similarity.” F. Hoffman-La Roche AG v. Anna Valdieri, WIPO Case No. D2007-0284. This Panel notes that in this case “.diet” is the gTLD and therefore is largely disregarded under the first UDRP element confusing similarity test.

For the above reasons, and in accordance with previous UDRP decisions, the Panel finds that the Domain Name is confusingly similar to the XENICAL Marks. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the complainant must prove that the respondent has no rights or legitimate interests in respect of the domain name. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the respondent in order to demonstrate its rights or legitimate interests in a domain name. Such circumstances include:

- demonstrable preparations to use or use the domain name in connection with a bona fide offering of goods or services prior to the dispute (paragraph 4(c)(i));

- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights (paragraph 4(c)(ii)); or

- legitimate, noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark (paragraph 4(c)(iii)).

In this case, the Complainant presented a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. It is clear on the given evidence that the Domain Name was registered long after the Complainant registered and started to use the XENICAL Marks. Further, there is no evidence that the Respondent has been or is commonly known by the Domain Name. In addition, there is no evidence that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name or any trademark confusingly similar thereto, as a domain name or for any other purposes.

Further, the Respondent’s use of the Domain Name to direct consumers to an online pharmacy does not provide a legitimate interest in the Domain Name when such Domain Name is similar to the Complainant’s mark. See Phizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784.

Therefore, in the absence of any Response to rebut the Complainant’s prima facie case, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name, and the Complainant has therefore satisfied the requirement of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the complainant must prove that the domain name has been registered and is being used in bad faith. In addition, paragraph 4(b) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the complainant in order to demonstrate bad faith registration and use of the domain name. Such circumstances include:

- use of the domain name to intentionally attempt to attract, for commercial gain, Internet users to the registrant’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 registrant’s website or location or of a product or service on the registrant’s website or location (paragraph 4(b)(iv)).

In the Panel’s view, the Respondent must have had knowledge of the Complainant’s rights in the XENICAL Marks when it registered the Domain Name, since the Complainant’s XENICAL Marks are unique and have been used for over 20 years.

The Panel also finds it convincing that a simple Google search for the word “XENICAL” would have led to the Complainant’s affiliates’ website “www.xenical.com” and put the Respondent on notice of the Complainant’s rights in the XENICAL Marks.

Finally, the Panel finds that by fully incorporating the XENICAL Mark into the Domain Name and by using it in connection with an online pharmacy where different drugs are sold, the Respondent falsely creates the impression that they are associated with the Complainant, which is not the case, and this “represents ‘opportunistic bad faith’ under the Policy” Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix GroupCo., WIPO Case No. D2000-0163, and therefore, the Panel is satisfied that the Complainant has established bad faith registration and use as required by paragraph 4(a)(iii) of the Policy.

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 Domain Name <xenical.diet> be transferred to the Complainant.

Haig Oghigian
Sole Panelist
Date: September 11, 2015