WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Bandilo

Case No. D2015-1767

1. The Parties

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

Respondent is Bandilo, Lviv, Lviv Oblast, Ukraine.

2. The Domain Name and Registrar

The Disputed Domain Name <buycheapxenicalonlinewithoutperscriptionusa.net> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2015. On October 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 8, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 12, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 4, 2015.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on November 13, 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

Complainant states that it, “together with its affiliated companies[, is] one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries.” Complainant further states, and provides evidence in support thereof, that it is the owner of the trademark XENICAL “in a multitude of countries worldwide including the International Registration Nos. 612908 (word mark) & 699154 (mark with logo),” which is used in connection with “a prescription medicine used with a low calorie diet to increase weight loss in people with obesity and overweight.”

Complainant further states, and provides evidence in support thereof, that Respondent is “operating an online pharmacy website which promotes and appears to sell XENICAL drugs and other Complainant’s products.”

The Disputed Domain Name was registered on September 17, 2015.

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

- The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights because “[t]he disputed domain name is confusingly similar to the Complainant’s mark seeing that it incorporates the Complainant’s trademark XENICAL in its entirety” and “[t]he addition of the descriptive words “buy”, “cheap”, “online”, “without”, the misspelling of the word “prescription” as “perscription” and the geographical indication “usa”, which is an abbreviation of “United States of America”, does not sufficiently distinguish the disputed domain name from XENICAL.”

- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s mark XENICAL”; “Respondent is falsely implying that its pharmaceutical products are related or similar to those of the Complainant and is using the domain name with the purpose of capitalizing on the reputation of the Complainant’s mark XENICAL”; “Respondent is using the Complainant’s XENICAL mark to operate an online pharmacy which sells actually competing products, i.e. generic orlistat products, rather than XENICAL” which “does not represent a legitimate noncommercial or fair use”; Respondent’s “use of a disclaimer cannot in itself give rise to any rights or legitimate interests in the disputed domain name where the Respondent takes unfair advantage of the Complainant’s XENICAL mark so as to sell competing products”; and “Respondent did not reply to the Complainant’s cease and desist letter.”

- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Respondent registered a domain name just consisting of the reproduction of the Complainant’s well-known mark with the addition of geographical and generic words which were clearly chosen to relate to the Complainant’s core business, namely the pharmaceutical industry”; “bad faith is established when Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy”; “using a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among Internet users as to the source of products or to confusingly suggest sponsorship by the trademark owner”; and “Internet users would reasonably rely on its website as a legitimate source to purchase XENICAL drugs since the online pharmacies associated to the disputed domain name and to the webpage where Internet users are redirected provide standard information about XENICAL.” (Internal punctuation and citations omitted.)

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the XENICAL trademark.

As to whether the Disputed Domain Name is identical or confusingly similar to the XENICAL trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “buycheapxenicalonlinewithoutperscriptionusa.net”), as it is well-established that the top-level domain (i.e., “.net”) may be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).

It is obvious that the Disputed Domain Name contains both the XENICAL trademark in its entirety plus a number of additional words. The Panel agrees that none of these additional words distinguish the Disputed Domain Name from the XENICAL trademark. See, e.g., F. Hoffmann-La Roche AG v. Whois Agent, WIPO Case No. D2014-0064 (transfer of <buyxenicalinusa.com> and <xenicalonlinerxshop.biz>); F. Hoffmann-La Roche AG v. Private Registration, WhoisGuardService.com, WIPO Case No. D2013-1118 (transfer of <cheapgenericxenicalsure.com>); and F. Hoffmann-La Roche AG v. James Dargan/Wang Zheng, WIPO Case No. D2013-1992 (transfer of <xenical-without-prescription.com>).

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use Complainant’s mark XENICAL”; “Respondent is falsely implying that its pharmaceutical products are related or similar to those of the Complainant and is using the domain name with the purpose of capitalizing on the reputation of the Complainant’s mark XENICAL”; “Respondent is using Complainant’s XENICAL mark to operate an online pharmacy which sells actually competing products, i.e. generic orlistat products, rather than XENICAL” which “does not represent a legitimate noncommercial or fair use”; Respondent’s “use of a disclaimer cannot in itself give rise to any rights or legitimate interests in the disputed domain name where Respondent takes unfair advantage of Complainant’s XENICAL mark so as to sell competing products”; and “Respondent did not reply to the Complainant’s cease and desist letter.”

Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.

The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted 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 website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(iv), given that the Disputed Domain Name is being used by Respondent in connection with “an online pharmacy website which promotes and appears to sell XENICAL drugs and other Complainant’s products.” The Panel agrees with the decision cited by Complainant that “[i]t is well-established that using a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among Internet users as to the source of products or to confusingly suggest sponsorship by the trademark owner.” Hoffmann-La Roche Inc. v. Domain Admin / Michael Carrillo, WIPO Case No. D2015-0160 (transfer of <buyaccutanebuyaccutane.com>).

Accordingly, the Panel finds that Complainant has proven the third element 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 disputed domain name <buycheapxenicalonlinewithoutperscriptionusa.net> be transferred to the Complainant.

Douglas M. Isenberg
Sole Panelist
Date: November 15, 2015