The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Evgeny Zaicev of Moscow, Russian Federation.
The disputed domain name <medl-kytril.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2012. On January 6, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On January 6, 2012, eNom transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on January 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2012.
The Center appointed Sir Ian Barker as the sole panelist in this matter on February 8, 2012. 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.
The Complainant, a Swiss corporation, and its affiliated companies have operations in more than 100 countries in the fields of pharmaceuticals and diagnostics.
The Complainant owns registered trademarks in over 50 countries for the word “kytril”. Its United States of America registration has a priority date of February 19, 1990.
The mark KYTRIL designates an anti-emetic drug used to prevent nausea and vomiting associated with chemotherapy and radiation treatment. The Complainant acquired the product from SmithKline Beecham PLC in 2000.
The Complainant gave the Respondent no rights to reflect its trademark in a domain name.
The website accessed by the disputed domain name directs to a webpage selling pharmaceutical products. The website offers, inter alia, KYTRIL for sale and includes a picture of the packaging for this product.
The disputed domain name is confusingly similar to the Complainant’s numerous trademarks for KYTRIL. It incorporates the mark in its entirety and the addition of ‘medl’ and a hyphen does not sufficiently distinguish the disputed domain name from the mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant gave him none. Paragraph 4(c) of the Policy cannot apply to the Respondent who is illegitimately trading on the reputation of the trademark for commercial gain.
The disputed domain name was registered on December 21, 2011 in bad faith. The Respondent would have had knowledge of the Complainant’s trademark as at that date because of the worldwide fame of the Complainant’s mark.
The disputed domain name is being used in bad faith. The Respondent is intentionally attempting for commercial purposes to attract internet users to his website by creating a likelihood of confusion with the Complainant’s well-known mark as to the source, affiliation and endorsement by the Complainant of the Respondent’s website and of the products there offered for sale by a for-profit online pharmacy. The Respondent is illegitimately capitalizing on the fame of the Complainant’s mark.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The disputed domain name is confusingly similar to the Complainant’s registered trademarks for KYTRIL. The mark is repeated in its entirety. The addition of the relatively meaningless expression “medl” and a hyphen does nothing to diminish the dominance of the trademark.
The first limb of Paragraph 4(a) of the Policy has been established.
The Complainant gave the Respondent no rights to reflect its trademark in a domain name. The Respondent could have invoked as a defence any of the situations envisaged by Paragraph 4(c) of the Policy but has not done so. Accordingly, the Panel considers that Paragraph 4(a)(ii) of the Policy has been satisfied.
Several WIPO UDRP panelists have come to a similar conclusion where, as here, a respondent’s use of a disputed domain name has redirected Internet users to an online pharmacy. See, for example, Pfizer Inc v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 and Pfizer Inc v. Seocho & Vladimir Sneko, WIPO Case No. D2001-1199.
This is a clear case of bad faith registration and use by reason of the following factors.
(a) The worldwide fame of the Complainant’s trademark leads to the inescapable conclusion that the Respondent who shortly after registering the disputed domain name, set up a website with links to an Internet pharmacy, selling the Complainant’s trademarked product, must have known of the Complainant’s trademark.
(b) The Respondent’s website uses the Complainant’s trademark and packaging in an illegitimate way.
(c) The Respondent’s website uses the Complainant’s trademark for commercial gain. The website creates the likelihood of confusion in the minds of Internet users that the Respondent has some sort of affiliation with or endorsement from the Complainant.
Accordingly, paragraph 4(a)(iii) of the Policy has been established.
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 <medl-kytril.com> be transferred to the Complainant.
Sir Ian Barker
Sole Panelist
Dated: February 22, 2012