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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Fancy Wilson

Case No. D2013-1414

1. The Parties

The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented by Jérôme Rhein, Switzerland.

The Respondent is Fancy Wilson of Huntsville, Austria.

2. The Domain Name and Registrar

The disputed domain name <buywhatforxenical.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2013. On August 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 12, 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 August 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2013.

The Center appointed Ladislav Jakl as the sole panelist in this matter on September 18, 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.

The language of the Registration Agreement is Czech. The Complaint was submitted in English and the Complainant requests that the language of proceedings be English and provides supporting arguments and evidence. The Complainant points out to a copy of the website at the disputed domain name which content is completely in English language (Annex 5). In this connection the Complainant points out to previous WIPO UDRP cases (Groupe Auchan v. xmzl, WIPO Case No. DCC2006-004; Finter Bank Zurich v. Schumin Peng, WIPO Case No. D2006-0432) (Annex 4p.3). In line with those cases, the Complainant requests to file the subject Complaint in English. The Respondent has not objected to the language of proceedings to be English. . The Panel, taking into account the circumstances of this case and a number of recent panel decisions and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd., WIPO Case No. D2007-1836), decides that the language of the administrative proceedings will be English.

4. Factual Background

The Complainant is together with its affiliated companies one of the world’s leading research-focused healthcare groups in the field of pharmaceuticals and diagnostics and having global operations in more than 100 countries. The Complainant´s trademark XENICAL is protected in a multitude of countries worldwide and introduces as an example the International trademark registrations No. 612908 and No. 699154, (certificates of these are submitted in copy as Annex 3). Priority dates are August 5, 1993 and April 21, 1998.

The disputed domain name <buywhatforxenical.com> was registered on July 13, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name <buywhatforxenical.com> is identical or confusingly similar to its trademark XENICAL, that the Respondent has no rights or legitimate interests in respect to the disputed domain name and that the disputed domain name was registered and is being used in bad faith.

The Complainant introduces that the disputed domain name <buywhatforxenical.com> incorporates the Complainant's trademark XENICAL in its entirety and that the addition of the generic terms "buy", "what" and "for" does not sufficiently distinguish the disputed domain name from the Complainant’s trademark XENICAL (See Hoffman-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240). Moreover the Complainant contends that the Complainant´s registration and use of the trademark XENICAL predate the Respondent‘s registration of the domain name <buywhatforxenical.com>. Therefore the Complainant concludes that the disputed domain name is identical or confusingly similar to its trademark XENICAL.

As to rights or legitimate interests, in respect of the disputed domain name, the Complainant essentially contends that it has exclusive rights for XENICAL and no licence /permission/authorization respectively consent was granted to use XENICAL in the domain name. Furthermore it is obvious that the Respondent uses the domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant's trademark XENICAL. Moreover the Complainant contends that the Respondent is using the disputed domain name to redirect Internet users to a pharmacy on-line and that, according to previous WIPO UDRP decisions, such a behaviour is considered to demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name (See Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784).

The Complainant concludes that the Respondent does not have any right or interest in the disputed domain name.

Furthermore the Complainant argues that the domain name is also registered and being used in bad faith as, at the time of registration of the disputed domain name, the Respondent had, no doubt, knowledge of the Complainant‘s well-known trademark XENICAL. Moreover, the Respondent has intentionally attempted for commercial purpose to attract Internet users to the Respondent‘s websites, by creating a likehood of confusion with the Complainant´s well-known trademark as to the source, affilation and endorsement of Respondent‘s websites or of the products or services posted on or linked to Respondent‘s website. 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, the Complainant concludes that the Respondent may generace unjustified revenues and therefore is illegitimately capitalizing on the XENICAL trademark. The Complainant concludes that above mentioned facts demonstrate the Respondent‘s bad faith registration and use of the domain name under paragraph 4(c)(iii) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

 

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.

A. Identical or Confusingly Similar

Panel notes that the disputed domain name <buywhatforxenical.com> incorporates the Complainant's trademark in its entirety and finds that the addition of the of the generic terms "buy", "what" and "for" does not sufficiently distinguish the disputed domain name from the Complainant‘s trademark XENICAL (See Lilly ICOS LLC v. John Hopking/Neo net Ltd., WIPO Case No. D2005-0694; Hoffman-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240). As well the inclusion of the generic top level domain gTLD suffix “.com” does not prevent a finding of confusing similarity of a domain name and a trademark (See AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-Aventis v. Brad Hedlund, WIPO Case No. D2007-1310).

For all the above cited reasons, the Panel concludes that the disputed domain name <buywhatforxenical.com> is confusingly similar to the trademark XENICAL in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

As to rights or legitimate interests, in respect of the disputed domain name, the Complainant essentially contends that it has exclusive rights for XENICAL and no licence /permission/authorization respectively consent was granted to use XENICAL in the disputed domain name. Furthermore it is obvious that the Respondent uses the domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant's trademark XENICAL. Moreover the Respondent is using the disputed domain name to redirect Internet users to a pharmacy on-line. According to previous WIPO UDRP decisions, such a behaviour is considered to indicate that the Respondent has no rights or legitimate interests in respect of the disputed domain name (See Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784). The Panel finds convincing on the record of this case the argument of the Complainant that the Respondent uses the disputed domain name for commercial gain and with the purpose of capitalizing on the fame of the Complainant's trademark XENICAL.

For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):

(ii) the 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 the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.

The Complainant has submitted evidence, unchallenged by the Respondent, that the disputed domain name was registered and is being used in bad faith as, at the time of registration of the disputed domain name, the Respondent had, no doubt, knowledge of the Complainant‘s well-known trademark XENICAL. Moreover the Panel finds that the Respondent has intentionally attempted for commercial purpose to attract Internet users to the Respondent‘s websites, by creating a likehood confusion with the Complainant‘s well-known trademark as to the source, affilation and endorsement of Respondent‘s websites or of the products or services posted on or linked to Respondent´s website (See Pfizer Inc. v. jg a/k/a JoshGreen, WIPO Case No. D2004-0784; F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. 2006-0049). The Respondent, by using the disputed domain name, is intentionally misleading consumers and confusing them by making them believe that the websites behind those links are associated or recommended by the Complainant.

For the above cited reasons the Panel finds that the disputed domain name <buywhatforxenical.com> was registered and is being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

7. Decision

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 <buywhatforxenical.com> be transferred to the Complainant.

Ladislav Jakl
Sole Panelist
Date: September 29, 2013.

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