WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. nithya devi
Case No. D2013-1102
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is nithya devi of Tiruppur, Tamil Nadu, India.
2. The Domain Name and Registrar
The disputed domain name <1stxenicalprescription.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2013. On June 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 19, 2013, 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.
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 June 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2013.
The Center appointed Gabriela Paiva Hantke as the sole panelist in this matter on August 7, 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
The Complainant, F. Hoffmann-La Roche AG, is a company duly organized under the laws of Switzerland.
And together with its affiliate group of companies is one of the world’s leading research groups in the field of pharmaceuticals, with global operation in more than 100 countries. The expression XENICAL is protected as trademark in multiple countries. As an example the Complainant provided a copy of registration in Annex 3 to the Complaint, been the priority date for the mark XENICAL August 5, 1993.
The XENICAL mark designates an oral prescription weight lost medication used to help obese people.
The Domain Name was registered on June 7, 2013.
5. Parties’ Contentions
The Complainant is requesting the Domain Name to be transferred to it in view of the rights over trademark XENICAL. The Complainant is the owner of the trademark and has multiple registrations over the world. In the case file, Annex 3 to the Complaint, the Complainant has provided copy of one of the XENICAL trademark registration, and the priority date for the trademark is August 5, 1993.
The Complainant has provided relevant submissions regarding the three elements of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name <1stxenicalprescription.com> includes the trademark XENICAL in the middle of other alphanumeric expressions as “1 st” and “prescription”. Those alphanumeric expressions are descriptive of pharmaceutical products, and pharmaceutical products are those products for which the Complainant uses and has registered the trademark XENICAL, so in this Panel’s view the Domain Name does not sufficiently distinguished of the trademark XENICAL. In view of composition of the Domain Name, been no more than the registered trademark plus some descriptive alphanumeric expression makes the Domain Name confusingly similar to the mark XENICAL in which the Complainant has rights.
The Panel finds that the Complainant has therefore satisfied the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant has provided evidence of the ownership of the trademark XENICAL according to copy of certificate of registration in the case file (Annex 3 to the Complaint) and it has also show that its area of business if pharmaceutical and health research.
In addition, the Complainant has provided evidence in the case, that the Domain Name is used as a kind of a pharmacy on-line, according to Annex 5 and Annex 5.1. to the Complaint, and it is clear then that the Respondent alludes to the Complainant by selling pharmaceuticals on the website associated with the Domain Name, according to Annexes 6 and 7 to the Complaint. The Respondent did not show any right or legitimate interest in the Domain Name.
The Panel finds that the Complainant has therefore satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
It is evident to the Panel, in view of the use of the Domain Name as a kind of on-line pharmacy and the alphanumeric descriptive words plus the trademark XENICAL that the Domain Name was registered in bad faith by the Respondent, and that the Respondent knew about the Complainant’s well-know trademark.
The Domain Name is also used in bad faith because the Respondent is using the website to attract Internet users for commercial gain, this is for commercial purpose, as can be seen in Annex 5 to the Complaint, a kind of on-line pharmacy by creating a likelihood of confusion with the Complainant’s well known trademark.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <1stxenicalprescription.com> be transferred to the Complainant.
Gabriela Paiva Hantke
Date: August 21, 2013