WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. ClickSpect, George Papazoglou
Case No. D2012-2345
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is ClickSpect, George Papazoglou of Thessaloniki, Greece.
2. The Domain Name and Registrar
The disputed domain name <genericxenical.biz> is registered with Instra Corporation Pty Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2012. On November 28, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 November 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2012.
The Center appointed Reinhard Schanda as the sole panelist in this matter on January 8, 2013. 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 has registered the trademark XENICAL in a multitude of countries worldwide, since August 5, 1993.
Respondent registered the disputed domain name on November 20, 2012.
5. Parties’ Contentions
Complainant contends that it is together with its affiliated companies one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics and having global operations in more than 100 countries. The Complainant’s mark XENICAL is protected as trademark in a multitude of countries worldwide. As an example Complainant makes reference to the International Registration Nos. 612908 & 699154. Priority date for the mark XENICAL is August 5, 1993.
The mark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off. For the mark XENICAL the Complainant holds registrations in over hundred countries on a world-wide basis.
The disputed domain name is confusingly similar to the Complainant’s mark seeing that it incorporates this mark in its entirety. The addition of the term “generic” (before the mark XENICAL) does not sufficiently distinguish the disputed domain name from the trademark.
Complainant contends that its use and registration of the mark XENICAL do predate the Respondent’s registration of the disputed domain name. Accordingly the disputed domain name is confusingly similar to the trademark of the Complainant.
Complainant further contends, that it has exclusive rights for XENICAL, as mentioned above and no licence/permission/authorization/consent was granted to use XENICAL in the disputed domain Name. Furthermore, it is obvious that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant’s mark XENICAL.
According to Complainant, Respondent is using the disputed domain name to redirect Internet users to a pharmacy on-line. Respondent’s use of the disputed domain name to redirect Internet users to an on-line pharmacy demonstrates Respondent’s lack of a legitimate interest in the disputed domain name.
The disputed domain name clearly alludes to Complainant. There is no reason why Respondent should have any rights or legitimate interests in such domain name.
Finally Complainant contends that the disputed domain name was registered in bad faith since at the time of the registration i.e. on November 20, 2012, Respondent had, no doubt, knowledge of the
Complainant’s well-known mark XENICAL.
Furthermore, the disputed domain name is being used in bad faith. This is obvious since when viewing the Iwebsite from Respondent one realizes that Respondent has intentionally attempted (for commercial purpose) to attract Internet users to Respondent’s websites, by creating a likelihood of confusion with Complainant’s well-known mark as to the source, affiliation and endorsement of Respondent’s websites or of the products or services posted on or linked to Respondent’s website.
Complainant contends that Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them by making them believe that the websites behind those links are associated or recommended by Complainant.
As a result, Respondent may generate unjustified revenues and therefore is illegitimately capitalizing on the XENICAL trademark fame.
Respondent did not reply to 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 and 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 a 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 Panel finds that:
1. the disputed domain name <genericxenical.biz> is confusingly similar to Complainant’s registered trademarks,
2. Respondent has not established any right or legitimate interest in the disputed domain name <genericxenical.biz> and
3. Respondent has registered and is using the disputed domain name <genericxenical.biz> in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner of countless registered trademarks all over the world, which contain the term “xenical”. Previous UDRP panels have held that a trademark registration with a national trademark authority is sufficient to establish rights in a complainant’s mark under Policy, paragraph 4(a)(i). See Trip Network Inc. d/b/a Cheap Tickets Inc. v. Sigfredo Alviera, NAF Claim No. 914943 (finding that the complainant’s national trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy, paragraph 4(a)(i)); see also Metropolitain Life Insurance Company v. Robert Bonds, NAF Claim No. 873143 (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy, paragraph 4(a)(i)). Thus, the Panel concludes that Complainant owns rights in its XENICAL mark under Policy, paragraph 4(a)(i).
Complainant asserts that the disputed domain name is confusingly similar to its XENICAL mark. The Panel notes that the disputed domain name contains Complainant’s XENICAL mark, the descriptive term “generic”, and the generic top-level domain (“gTLD”) “.biz”. Past panels have held that the addition of a descriptive term and a gTLD both fail to remove a disputed domain name from the realm of confusing similarity. See Novell, Inc. v. Taeho Kim, NAF Claim No. 167964 (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant’s trademark NOVELL”); see also Americain International Group, Inc. v. Ling Shun Shing, NAF Claim No. 206399 (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy, paragraph 4(a)(i) because the appended term related directly to the complainant’s business); see also Jerry Damson, Inc. v. Texas Inernational Property Assocsiations, NAF Claim No. 916991 (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel is of the view that the disputed domain name is confusingly similar to Complainant’s XENICAL mark under Policy, paragraph 4(a)(i), as the disputed domain name contains Complainant’s mark in its entirety, with the addition of the term “generic” at the beginning of Complainant’s mark. The Panel finds that such an addition does not negate the confusing similarity between Complainant’s mark and the disputed domain name under Policy, paragraph 4(a)(i). See Sutton Group Fin. Servs. Ltd. v. Rodger, WIPO Case No. D2005-0126 (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy, paragraph 4(a)(i)); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Thus, the Panel holds also in this case that the disputed domain name is confusingly similar to Complainant’s XENICAL mark under Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion, under the Policy, and Respondent has failed to demonstrate any right or legitimate interest.
According to the majority of UDRP decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270; Inter-Continental Hotel Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., NAF Claim No. 118277 (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, WIPO Case No. D2000-1228 (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is not commonly known by the disputed domain name <genericxenical.biz>. Complainant alleges that it never licensed or otherwise permitted Respondent to use its XENICAL mark. Complainant argues that Respondent does not own a trademark registration for the disputed domain name <genericxenical.biz>. Furthermore, Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with Complainant. Finally, Respondent is not an authorized reseller of Complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.3.
Complainant provides the Panel with the WhoIs information, which lists “George Papazoglou / ClickSpect” as the registrant of disputed domain name, and avers that the WhoIs information contains no evidence that Respondent is commonly known by the disputed domain name. In similar situations, past panels have found that a respondent is not commonly known by the disputed domain name based on the WhoIs information and the evidence in the record. See Braun Corpopration v. Loney, NAF Claim No. 699652 (concluding that the respondent was not commonly known by the disputed domain names where the WhoIs information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, NAF Claim No. 715089 (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WhoIs information, suggesting that the respondent was commonly known by the disputed domain name). Consequently, the Panel holds that Respondent is not commonly known by the disputed domain name <genericxenical.biz> pursuant to Policy, paragrap 4(c)(ii).
As Complainant has established a prima facie case that Respondent fails to rebut under the second element, the Panel finds Complainant satisfies this element.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s attempt to profit from its registration and use of the disputed domain name is evidence of Respondent’s bad faith registration and use. Previous panels have determined that a respondent’s competing use is evidence of bad faith registration and use because the respondent is attempting to commercially benefit from the likelihood that Internet users become confused as to Complainant’s affiliation with the disputed domain name. See Scholastic Inc. v. Applied Software Solutions, Inc., , WIPO Case No. D2000-1629 (finding bad faith under Policy, paragraph 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); see also Luck’s Music Library v. Stellar Artist Mgmt., NAF Claim No 95650 (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
The Panel is of the view that Respondent registered the disputed domain name for purposes of commercially benefiting from the goodwill associated with Complainant’s mark. The Panel finds that the <genericxenical.biz> domain name is creating a likelihood of confusion as to the source and affiliation of Complainant to the disputed domain name and corresponding website, which illustrates the Respondent’s bad faith registration and use of the domain name under Policy, paragraph 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, NAF Claim No 95284 (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also Computerized Sec. Sys., Inc. v. Hu, NAF Claim No 157321 (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy, paragraph 4(b)(iv)). Since the Panel determines that Respondent is attempting to commercially gain by creating confusion as to Complainant’s affiliation with the domain name, the Panel holds that Respondent has registered and is using the disputed domain name in bad faith under Policy, paragraph 4(b)(iv).
The Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the XENICAL mark. While constructive notice has not generally been held to suffice for a finding of bad faith registration and use, the Panel nonetheless finds that Respondent registered and is using the disputed domain name in bad faith under Policy, paragraph 4(a)(iii) for the additional reason that Respondent is found to have had actual notice of Complainant’s trademark rights. See Custom Modular Direct LLC v. Custom Modular Homes Inc., NAF Claim No. 1140580 (“There is no place for constructive notice under the Policy.”); see also Yahoo! Inc. v. Butler, NAF Claim No. 744444 (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
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 <genericxenical.biz> be transferred to the Complainant.
Date: January 16, 2013