WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. alca bug
Case No. D2007-0429
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internet representative.
The Respondent is alca bug, Kampala, Uganda.
2. The Domain Names and Registrar
The disputed domain names <lxenical.com>, <xdenical.com>, <xencal.net>, <xencal.org>, <xenicle.net>, <xenicl.net> are registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2007. On March 21, 2007, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain names at issue. On March 23, 2007, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 17, 2007. 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”), 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 April 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2007.
The Center appointed Ross Carson as the sole panelist in this matter on June 20, 2007. 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’s trademark XENICAL is protected as a trademark in more than 100 countries worldwide. Complainant is the registered owner of International Registrations Nos. 612908 and 699154 for the trademark XENICAL. The earliest priority date for the trademark XENICAL is August 5, 1993. The trademark XENICAL is registered in association with the goods pharmaceutical products. The domain names in dispute were registered in early February 2007.
5. Parties’ Contentions
A. Complainant
A.1 Identical or Confusingly Similar
Complainant submits that each of the domain names in dispute are confusingly similar to Complainant’s trademark XENICAL. Complainant submits that each of the domain names in dispute is an obvious purposeful misspelling of the trademark XENICAL intended to direct Internet users who misspell Complainant trademarks to accord with one of the domain names in dispute to Respondent’s website, conduct referred to as typosquatting.
Complainant further submits that the domain name <lxenical.com> is purposefully misspelled by adding the letter “l”; the domain name <xdenical.com> is purposefully misspelled by adding the letter “d”; the domain name <xenicl.net> is purposefully misspelled by removing the letter “a”; the domain names <xencal.net> and <xencal.org> are purposefully misspelled by removing the letter “i”; the domain name <xenicle.net> is purposefully misspelled by removing the letter “a” and adding the letter “e”. See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775, “This conduct, commonly referred to as ‘typo squatting ‘, creates a virtually identical and/or confusingly similar mark to the Complainant’s trademark under paragraph 4(a)(i) of the Policy”.
Complainant further states that Complainant’s use and registration of the mark XENICAL predate Respondent’s registration of the domain names in dispute.
A.2 No Right or Legitimate Interests in respect of the Domain Names
Complainant submits that it has exclusive rights in the trademark XENICAL and states that no license, permission, authorization or consent was granted to Respondent to use XENICAL in the domain names in dispute. The domain names in dispute are confusingly similar to Complainant’s trademark XENICAL and clearly allude to the Complainant.
Complainant further submits that the Respondent’s websites are all search engines composed of sponsored links. Respondent’s only reason in registering and using the domain names in dispute is to benefit from the reputation of the trademark XENICAL and illegitimately trade on its fame for commercial gain and profit by diverting Internet users who mistakenly type the name “Xenical”. See Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo, WIPO Case No. D2004-0990, “the sole diversion of Internet traffic by Respondent to other, unrelated websites, does not represent a use of the Domain Name in connection with a bona fide offering of goods and services. Rather, the conduct of Respondent serves the purpose of generating revenues, e.g. from advertised pay-per-click products”.
A.3 Registered and Used in Bad Faith
Complainant submits that the domain names in dispute were registered in bad faith since at the time of the registrations in February 2007, the Respondent had, no doubt, knowledge of the Complainant’s product sold in association with the trademark XENICAL. See, F. Hoffmann-La Roche AG v. United Pharmacy Limited, WIPO Case No. D2006-0063, “it is hard to believe that the Respondent could have selected this domain name without knowing of the Complainant’s product ‘Xenical’ since the word has no independent meaning in any language. At best, the Respondent must have suspected that the Complainant would have registered trademark rights in the name”.
Complainant further submits that the domain names in dispute are being used in bad faith. On the websites associated with each of the domain names in dispute the Respondent is intentionally attempting for commercial purpose to attract Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s mark, which has a good reputation among doctors, as to the source, affiliation and endorsement of Respondent’s websites or of the products or services posted on or linked to Respondent’s websites. See, Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775, “Misspellings alone are ‘sufficient to prove bad faith under paragraph 4(b)(iv) of the Policy because Respondent has used these names intentionally to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark”.
Complainant further submits that Respondent’s bad faith is further demonstrated by the use of the domain names to provide advertising links to websites promoting and/or offering products and services of third parties, especially in the pharmaceutical field being the business area of the Complainant. See Gianfranco Ferre’ S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622, “This use of the domain name in issue appears to be advertising links to websites promoting and / or offering products and services of third parties and similar to those provided by the Complainant. This use of the Domain Name in issue by the Respondent is unable to be considered as a bona fide use of the domain name in issue”.
Complainant further submits that Respondent is acting in bad faith: by using the confusingly similar domain names in dispute to divert Internet users to the websites associated with the domain names in dispute intentionally misleading the consumers and confusing them so as to attract them to other websites making them believe that the websites behind those links are associated with or recommended by Complainant to generate unjustified click through revenues. See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623 “such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions”.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The fact that the Respondent did not submit a Response does not automatically result in a decision in favor of the Complainant. The failure of the Respondent to file a Response results in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding, AG v. AAIM, WIPO Case No. D2000-0403.
A. Identical or Confusingly Similar
Pursuant to Paragraph 4(a)(i) of the Policy Complainant must establish rights in a trademark and secondly prove that the domain names in dispute are confusingly similar to the trademark in which Complainant has rights.
Complainant has established that it is registered as the owner of the registered trademark XENICAL registered in relation to pharmaceutical products. The earliest priority date for the trademark XENICAL is August 5, 1993.
Each of the domain names in dispute is a purposeful misspelling of Complainant’s trademark XENICAL in which a single letter has been changed by either adding a letter, eliminating a letter or substituting a letter for the purpose of misleading Internet users who misspell Complainant’s trademark to Respondent’s websites associated with the purposely misspelled domain names in dispute. The purposeful misspelling of Complainant’s trademark XENICAL results in confusingly similar domain names under paragraph 4(a)(i) of the Policy. See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.
The Panel finds that the Complainant has proven that the domain names in dispute are confusingly similar to the Complainant’s registered trademark.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name.
The Respondent has not used the trademark XENICAL or any misspelling thereof in association with any bona fide offering of goods or services by Respondent.
The Respondent is not affiliated with Complainant and has never been authorized by Complainant to use the XENICAL trademark or any trademark confusingly similar thereto. The domain names in dispute are used by Respondent for websites that include sponsored links promoting products offered by competitors of Complainant. The use of the domain names in dispute to divert Internet traffic to Respondent’s websites associated with the domain names in dispute is not a legitimate use of the domain names. Respondent did not file any evidence to demonstrate Respondents rights or legitimate interests in the domain name in dispute as it was entitled to do pursuant to paragraph 4(c of the Policy.
The Panel finds that the Complainant has proven that the Respondent does not have any rights or legitimate interests in the domain names in dispute.
C. Registered and Used in Bad Faith
Having regard to Complainant’s substantial use of the trademark XENICAL and the deliberate misspelling (typosquatting) of Complainant’s trademark in the domain names in dispute, and the links to pharmaceuticals found on the web pages associated with the domain names in dispute, the Panel finds that Respondent was aware of Complainant’s trademark prior to the respective dates of registration of the domain names in dispute in February 2007.
Respondent used the domain names in dispute to intentionally attract Internet users to its websites for commercial gain by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement of Respondent’s websites. Lily ICOS LLC v. Brian Focker, WIPO Case No. D2005-0729; Wilmington Trust Company v.Domaincar, WIPO Case No. D2006-0045; Caesars World, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2005-0425.
The Panel finds that Complainant has proven that Respondent registered and used the domain names in dispute in bad faith as set out in paragraph 4(b)(iv) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <lxenical.com>; <xdenical.com>, <xenicl.net>, <xencal.net>, <xencal.org> and <xenicle.net> be transferred to the Complainant.
Ross Carson
Sole Panelist
Dated: July 4, 2007