WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Rajiv Gupta
Case No. D2012-0541
1. The Parties
Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented by Mr. Jérome Rhein.
Respondent is Rajiv Gupta of New Delhi, Delhi, India, self-represented.
2. The Domain Name and Registrar
The disputed domain name <xenial.info> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2012. On March 16, 2012, the Center transmitted by email to GoDaddy.com, LLC. a request for registrar verification in connection with the disputed domain name. On March 19, 2012, GoDaddy.com, 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 March 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2012. Respondent submitted informal email communications on March 16, 2012, March 20, 2012 and March 30, 2012.1
The Center appointed Fernando Triana, Esq. as the sole panelist in this matter on April 20, 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.
4. Factual Background
Complainant along with its affiliated companies is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, with operations in over 100 countries.
Complainant owns trademark registrations for XENICAL in the European Community, Switzerland, Egypt, China, Vietnam, the Russian Federation, Sudan, Algeria, etc. The trademark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off. Annex 3 to the Complaint comprises a certificate issued by the World Intellectual Property Organization (WIPO) as the administrator of the Madrid System, attesting to the renewal on July 28, 2008 of the international registration certificate No. 699154. Complainant underlines that the priority date claimed for this international registration is August 5, 1993, corresponding to the filing date of the Swiss trademark application and further registration no. 407537.
5. Parties’ Contentions
1. Complainant’s trademark XENICAL is protected as such in a multitude of countries.
2. The disputed domain name <xenial.info> is a purposeful misspelling of the Complainant’s trademark XENICAL and therefore, is confusingly similar to this trademark.
3. Complainant has exclusive rights on the trademark XENICAL, and has not authorized/licensed its use to Respondent.
4. Respondent registered the disputed domain name <xenial.info> in bad faith since at the domain name’s registration date (February 27, 2012) Respondent must have had knowledge of the well-known trademark XENICAL and the products it identifies.
5. Respondent is also using the disputed domain name <xenial.info> in bad faith, given that he is intentionally attempting to attract Internet users to his website for commercial purposes, by creating a likelihood of confusion with the Complainant’s well-known trademark.
1. Respondent requested USD 500 to transfer the disputed domain name <xenial.info> to Complainant.
2. The amount requested does not substantially exceed the out-of-pocket costs for the disputed domain name.
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."
Likewise, paragraph 10(d) of the Rules, provides that “the Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
The Panel wants to make special emphasis to the evidence filed by the parties to prove their assertions, which has been thoroughly studied in order to determine its relevance and weight in arriving to a decision. The statements that have been accompanied by evidence have been given more importance than the mere statements made by the parties without further demonstration to its existence. The Panel is empowered to confirm this evidence ex officio.
Paragraph 4(a) of the Policy requires that Complainant proves each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:
First of all (Section A), the Panel will determine whether or not the disputed domain name is identical or confusingly similar to the trademark in which Complainant has rights. Secondly (Section B), the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain name; and thirdly (Section C), the Panel will establish whether or not the disputed domain name have been registered and are being used in bad faith by Respondent.
Section A: Identical or Confusingly Similar
Complainant contends to be the owner of the trademark XENICAL in a multitude of jurisdictions, including the European Community, Switzerland, Egypt, China, Vietnam, the Russian Federation, Sudan, and Algeria, since 1993.
a) Existence of a Trademark or Service mark in which Complainant has Rights
Firstly, it is important to point out that paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The industrial property rights may be acquired by registration before a competent office in a number of jurisdictions of the world.
The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a mark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles it to prevent any third party from using the registered sign or any other sign confusingly similar to it.
In this case, Complainant proved its rights in the trademark XENICAL. Annex 3 to the Complaint includes a copy of the renewal certificate issued by WIPO as the Madrid System Administrator attesting to the renewal on July 28, 2008 of the international registration no. 699154 of the trademark XENICAL in international class 52.
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the trademark XENICAL and the exclusive right to use it in connection with the stated goods. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive3.
Thus, Complainant established its rights in the trademark XENICAL.
Therefore, the Panel concludes that Complainant has demonstrated registered rights in the trademark XENICAL for purposes of paragraph 4(a)(i) of the Policy.
b) Identity or Confusing Similarity between the Disputed Domain Name and Complainant’s Trademark
Complainant alleges that the disputed domain name <xenial.info> is a purposeful misspelling of the trademark XENICAL and therefore, the former is confusingly similar to the latter.
Before establishing whether or not the disputed domain name <xenial.info> is confusingly similar to the Complainant’s trademark XENICAL, the Panel wants to point out that the addition of generic top-level domains (gTLD), i.e., “.com,” “.biz,” “.edu,” “.org”, “co”, “.info”, is typically not considered when determining if the registered domain name is identical or confusingly similar to the registered trademark. Neither the addition of country code top-level domains (ccTLD), i.e., “.co”, “.de”, “.cr”, “.es”, nor the insertion of a gTLD have a distinctive function.
UDRP Panels have unanimously accepted that the inclusion of the “.com” (gTLD), in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477, the Panel stated that “the addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.” This conclusion applies also to the .info gTLD.
The Panel believes that the disputed domain name <xenial.info> is confusingly similar to the trademark XENICAL. Moreover, the spelling similarity is a criterion used by several Trademark Offices4 to determine whether or not two trademarks are confusingly similar. It refers to the coincidence in the position of the letters that make up the trademarks compared, making emphasis on the similarities rather than on the differences. In this case, the Panel will use the same criterion to determine if the trademark XENICAL and the disputed domain name <xenial.info> are similar: six out of the seven letters that make up the trademark XENICAL are present in the disputed domain name <xenial.info> in the exact same position. The only difference found between them in the absence of the letter “c” in the domain name. Thus, they are confusingly similar.
The Panel confirms that the disputed domain name <xenial.info> is indeed a misspelling of the trademark XENICAL, which does not seem to be accidental but rather a purposeful decision of Respondent. This topic will be further addressed in Section C below.
As per this reasoning, the Panel finds that the disputed domain name <xenial.info> is confusingly similar to Complainant’s trademark XENICAL and thus, the requirement set forth in paragraph 4(a)(i) of the Policy is duly complied with.
Section B: Rights or Legitimate Interests
a) Prima Facie Case
Regarding this second element of paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the complainant to prove the lack of rights or legitimate interests of the respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the respondent.
In the Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121, the panel stated that:
“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head.”
Therefore, a complainant is required to make a prima facie case that the respondent lacks of rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to the respondent, who must prove those rights or legitimate interests. If the respondent fails to do so, a complainant is deemed to have met the second element of paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name <xenial.info>: Complainant has exclusive rights on the trademark XENICAL, and no license/permission/authorization was granted to Respondent to use the trademark XENICAL in the disputed domain name. In addition, annex 6 to the Complaint includes a printout of the website to which the disputed domain name <xenial.info> resolves, showing that Respondent is using the domain name for commercial gain and with the purpose of capitalizing the fame of the trademark XENICAL.
The Panel accepts this assertion as a prima facie case made by Complainant that shifts the burden of production to Respondent.
b) Respondent’s Rights or Legitimate Interests in the Disputed Domain Name
Paragraph 4(c) of the Policy includes an enunciative listing of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent did not address this matter in his informal email communications. Respondent limited himself to state that he registered the disputed domain name <xenial.info>, so he owns it.
Simply submitting a domain name registration request before any registrar and paying a registration fee does not mean that Respondent has per se rights or legitimate interests in the disputed domain name.
Thus, this Panel believes that Respondent failed to prove his rights or legitimate interests in the disputed domain name <xenial.info>. Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy is duly complied with.
Section C: Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(2) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.
Complainant asserts that Respondent registered the disputed domain name <xenial.info> in bad faith since he must have had knowledge of the trademark XENICAL on February 27, 2012.
Complainant briefly mentions in the Complaint that the trademark XENICAL is well-known, but did not submit evidence to prove this assertion. The Panel wishes to highlight that a trademark’s alleged well-known character must be proven by the interested party and cannot simply be taken for granted.
However, the Panel conducted quick searches on the search engine GOOGLE about Complainant and its trademark XENICAL, and concludes that this trademark has indeed a high level of recognition around the world, also proven with the number of UDRP cases handled by the Center and the National Arbitration Forum involving domain names identical or confusingly similar to the trademark XENICAL.
Thus, the Panel agrees with Complainant. Respondent must had known the trademark XENICAL at the time he registered the disputed domain name. Evidence of such knowledge is the disputed domain name itself: XENIAL is not a word in the English language, which is the language of Respondent’s website. XENIAL is a common misspelling of the trademark XENICAL, and Respondent foresaw that any Internet user interested in information about the XENICAL trademark could end up in his website. Thus, Respondent deliberately took someone else’s trademark with a minor modification to register a domain name and to create a business around it. This Panel deems that the mere fact of knowingly using and modifying a third-party’s trademark in a domain name is registration in bad faith. See Aktiebolaget Electrolux v. Jorgeariel Figueroa Rodríguez, WIPO Case No. D2011-1311, where the panel held: “The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.
Complainant also contends that Respondent is using the disputed domain name <xenial.info> in bad faith. Annex 6 to the Complaint, which is a printout of Respondent’s website, shows that he is intentionally attempting (with commercial purposes) to attract Internet users to his website by creating a likelihood of confusion with the trademark XENICAL as to the source, sponsorship, affiliation, or endorsement of his website.
This is also true, as above stated, because Respondent chose a common misspelling of the trademark XENICAL capitalizing its recognition and its great demand worldwide. Annex 6 to the Complaint shows that the disputed domain name resolves to a website that offers links to both unrelated companies and companies that compete directly with Complainant’s business. Respondent receives pay-per-click fees for each Internet user diverted to the sites linked in this website. Thus, the more diverted Internet users Respondent could attract the more profit he could make5. Respondent knew that an easy and effective way to divert Internet users and to make money was using someone else’s highly recognized trademark, like Complainant’s trademark XENICAL.
In addition, Internet users seeking out Complainant online might be diverted to its competitors, where they may then purchase goods that they had intended to purchase from Complainant in the first place. This entails disruption of Complainant’s business as per Policy 4(b)(3).
Finally, Respondent requested USD 500 to Complainant for transferring the disputed domain name <xenial.info>. This amount certainly exceeds the out-of-the pocket-costs for the disputed domain name, as the Panel confirmed after looking for the registration fees in the concerned Registrar’s website (for a “.info” domain name the fees range from USD 2.99 to USD 11.09, depending on the registration’s duration).
Therefore, the Panel considers this request made by Respondent as an additional fact of domain registration and use in bad faith.
The three elements of the Policy, paragraph 4(a) are satisfied in the present case in respect to Respondent of the disputed domain names.
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 <xenial.info> be transferred to Complainant.
Fernando Triana, Esq.
Dated: April 25, 2012
1 Respondent’s email communication of March 16, 2012 was originally solely submitted to Complainant, which then forwarded it to the Center.
2 The listing of goods includes: Pharmaceutical, veterinary and sanitary preparations.
4 The Trademark Offices of the Andean Community countries members (Colombia, Peru, Ecuador and Bolivia) apply this criterion, among others, to determine if two trademarks are similar. The Andean Court of Justice has adopted it from the Hispano-American Trademark doctrine (including authors such as Guillermo Cabanellas de las Cuevas, Carlos Novoa and Luis Eduardo Bertone, among others), and accordingly, has ordered the Andean Trademark Offices to use this criterion to carry out the registrability exams.
5 See ER Marks, Inc. and QVC, Inc. v. Stefan Hansmann, NAF Case No. 1381755, where the Panel held that: “The <qvc.co> domain name is a clear mistype of the <qvc.com> domain name and places this case in the typo squatting field as a specific kind of cyber squatting. It does not matter that the mistype falls on the gTLD instead of the mark, the result of the typo squatting is the same: Respondent created a likelihood of confusion with the QVC mark attempting to attract Internet users to his website for commercial gain”; also see AltaVista Company v. Andrew Krotov, WIPO Case No. D2000-1091, where the Panel found use and registration in bad faith because the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes.