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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Domain Administrator/ DigiMedia Holding

Case No. D2010-1464

1. The Parties

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

Respondent is Domain Administrator/ DigiMedia Holding of Panama City, Panama.

2. The Domain Name and Registrar

The disputed domain name <xenicl.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2010. On September 1, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On September 2, 2010, Moniker Online Services, LLC. 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 September 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 29, 2010.

The Center appointed Lone Prehn as the sole panelist in this matter on October 11, 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.

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. 812908 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 disputed domain name was registered on February 16, 2010.

5. Parties’ Contentions

A. Complainant

Complainant submits that the disputed domain name is confusingly similar to Complainant’s trademark XENICAL. Complainant submits that the disputed domain name is an obvious purposeful misspelling of the trademark XENICAL intended to direct Internet users who misspell Complainant’s trademark and as a consequence are directed to Respondent’s website, conduct referred to as typosquatting.

Complainant further submits that the domain name <xenicl.com> is purposefully misspelled by leaving out the letter “a”, 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 disputed domain name.

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 or XENICL in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s trademark XENICAL and clearly alludes to Complainant.

Complainant further submits that Respondent’s website is a search engine composed of sponsored links. Respondent’s only reason for registering and using the disputed domain name 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.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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 Complainant must prove each of the following three elements to obtain an order that the domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences included 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 disputed domain name is confusingly similar to the trademark in which Complainant has rights.

Complainant has established that it is the owner of the registered trademark XENICAL in relation to pharmaceutical products. The earliest priority date for the trademark XENICAL is August 5, 1993.

In the Panel’s view, the disputed domain name is a purposeful misspelling of Complainant’s trademark XENICAL in which a single letter has been omitted for the purpose of misleading Internet users who misspell Complainant’s trademark to Respondent’s website associated with the purposely misspelled disputed domain name. The purposeful misspelling of Complainant’s trademark XENICAL results in a confusingly similar domain name under paragraph 4(a)(i) of the Policy. See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.

The Panel finds that Complainant has proven that the disputed domain name is confusingly similar to Complainant’s registered trademark.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.

In the Panel’s view, Respondent has not used the disputed domain name in association with any bona fide offering of goods or services by Respondent.

According to Complainant, Respondent is not affiliated with Complainant and has never been authorized by Complainant to use the XENICAL trademark or any domain name confusingly similar thereto. The disputed domain name is used by Respondent for a website that includes sponsored links promoting various products. The use of the disputed domain name to divert Internet traffic to Respondent’s website associated with the disputed domain name is not a legitimate use of the domain name. Respondent did not file any evidence to demonstrate Respondent’s rights or legitimate interests in the disputed domain name as it was entitled to do pursuant to paragraph 4(c) of the Policy.

The Panel finds that Complainant has proven that Respondent does not have any rights or legitimate interests in the disputed domain name.

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 disputed domain name, the Panel finds that Respondent must have been aware of Complainant’s trademark when the disputed domain name was registered in February 2010.

The Panel is satisfied that Respondent used the disputed domain name to intentionally attract Internet users to its website 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 disputed domain name 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 disputed domain name <xenicl.com> be transferred to Complainant.

Lone Prehn
Sole Panelist
Dated: October 25, 2010

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