Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
Respondent is Andrei Kosko of Minsk, Belarus.
The disputed domain names <buygenericxenical.net>, <buyxenicalnoprescription.net>, <buyxenicalwithoutprescription.net>, <noprescriptionxenical.net> are registered with Internet.bs Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2010. On May 12, 2010, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain names. On May 12, 2010, Internet.bs Corp. 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 9, 2010.
The Center appointed Gregory N. Albright as the sole panelist in this matter on June 25, 2010. 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.
Complainant is the owner of International Registration No. 612908 for the trademark XENICAL in connection with an oral prescription weight loss medication, with a priority date of August 5, 1993. Complainant is also the owner of International Registration No. 699154 for the XENICAL design mark, with a priority date of April 21, 1998. The disputed domain names were registered on April 13, 2010.
Complainant, together with its affiliated companies, is one of the world's leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, and has global operations in more than 100 countries. Complainant's mark XENICAL is protected as a trademark in a multitude of countries worldwide; for example, Complainant is the owner of International Registration Nos. 612908 and 699154, described above in Section 4.
The XENICAL mark designates an oral prescription weight loss medication used to help obese people lose weight and keep the weight off. Complainant holds registrations for the XENICAL mark in over 100 countries worldwide.
The disputed domain names are confusingly similar to Complainant's mark because they incorporate XENICAL in its entirety. The addition of the generic terms “buy,” “generic,” “no prescription,” and “without prescription” do not distinguish the disputed domain names from Complainant's trademark. Generally, “a user of a mark may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it.” Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694. Further, Complainant's use and registration of the XENICAL mark predate Respondent's registration of the disputed domain names.
Complainant owns exclusive rights in the XENICAL mark. Complainant has not granted Respondent any license, permission, authorization, or consent to use the XENICAL trademark in the disputed domain names.
Respondent is using the disputed domain names to direct Internet users to sites that offer or sell Complainant's products. “[S]everal cases have found that a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer's mark and that is being used to direct consumers to an on-line pharmacy.” Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. Respondent's only reason in registering and using the disputed domain names is to benefit from the reputation of the XENICAL mark and illegitimately trade on its fame for commercial gain and profit.
The disputed domain names were registered in bad faith because at the time of the April 13, 2010 registrations Respondent no doubt had knowledge of Complainant's XENICAL mark and product. The disputed domain names are also being used in bad faith because Respondent is intentionally attempting, for a commercial purpose, to attract Internet users to Respondent's website, by creating a likelihood of confusion as to the source, affiliation or endorsement of Respondent's website or of the products or services posted on or linked to Respondent's website. Accordingly, Respondent may generate unjustified revenues through unauthorized use of Complainant's XENICAL mark
Respondent did not reply to Complainant's contentions.
Complainant has shown that it owns trademark rights in the XENICAL mark. The XENICAL mark is a fanciful designation of source, rather than a word, and thus a strong mark.
The disputed domain names <buygenericxenical.net>, <buyxenicalnoprescription.net>, <buyxenicalwithoutprescription.net>, and <noprescriptionxenical.net> incorporate the entirety of the XENICAL mark. “Numerous ICANN UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark.” PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696. Furthermore, “a user of a mark may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it.” Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694. Despite Respondent's addition of the words and phrases “buy,” “generic,” “no prescription,” and “without prescription” to the disputed domain names, Internet users drawn to Respondent's website would reasonably expect to be dealing with the owner of the XENICAL mark, or an authorized seller of products under the XENICAL mark.
Complainant has established the first element.
Complainant has also made an adequate prima facie showing that Respondent does not have rights or legitimate interests in respect of the disputed domain names. XENICAL does not resemble Respondent's name. Complainant asserts that it has not licensed or otherwise granted Respondent permission to use the XENICAL mark. The web page to which the disputed domain names resolve manifests Respondent's intent to capitalize upon use of the XENICAL mark for commercial gain, rather than for any legitimate noncommercial or otherwise fair use. Indeed, three of the disputed domain names that Respondent registered on April 13, 2010 show Respondent's profit motive because they include the explicit invitation to “buy” products bearing the XENICAL mark.
Respondent did not come forward with any evidence that it has any rights or legitimate interests in respect of the disputed domain name.
Complainant's use and registrations of the XENICAL mark predate Respondent's registration of the disputed domain. Given the fanciful nature of the XENICAL mark, and the sequence of events, the Panel finds it likely that Respondent was aware of the Complainant's mark when the disputed domain names were registered, and Respondent chose the disputed domain names intentionally for the purpose of trading on the value of Complainant's mark.
The Panel is also satisfied that Respondent is using the disputed domain names intentionally to attempt to attract, for commercial gain, Internet users to the website to which the disputed domain names resolve, and to linked sites, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's website. As discussed above, the intentional but unauthorized commercial nature of Respondent's registration and use of the disputed domain names is inescapable. Respondent likely derives “click through” revenue from using the disputed domain names in this manner. But even if Respondent is not profiting from use of the disputed domain names, it is evidence of bad faith that Respondent's website uses the XENICAL mark to attract web visitors to sites where Complainant's products are offered for sale, without Complainant's consent.
Complainant has shown both bad faith registration and bad faith use by Respondent.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <buygenericxenical.net>, <buyxenicalnoprescription.net>, <buyxenicalwithoutprescription.net>, and <noprescriptionxenical.net> be transferred to Complainant.
Gregory N. Albright
Dated: July 9, 2010