WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Kelvin Pol
Case No. D2014-1806
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Kelvin Pol of Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <xenicalpharmacyjsv.com> is registered with GKG.NET, INC (formerly GK Group LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2014. On October 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 2014, 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 October 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2014.
The Center appointed Marilena Comanescu as the sole panelist in this matter on November 14, 2014. 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 proceeding is English.
4. Factual Background
Complainant asserts that it is one of the world's leading research-focused healthcare groups in the fields of pharmaceutical and diagnostics, having operations in more than 100 countries.
The Complainant holds numerous trademark registrations for XENICAL, including the International Trademark No. 612 908 registered on December 14, 1993 for goods in class 5 and extended in 1994 to the Russian Federation where the Respondent is apparently located.
The disputed domain name was registered on September 25, 2014 and at the time of filing the Complaint it was used for an online pharmacy.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its trademark XENICAL, the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent registered and uses the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In view of the default and the absence of any reply to the Complaint by the Respondent, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant holds worldwide trademark registrations for the XENICAL mark in connection with pharmaceutical preparation. The disputed domain name <xenicalpharmacyjsv.com> includes the Complainant’s widely known trademark and the generic non-distinctive terms “pharmacy” and “jsv“. This Panel agrees with the majority view of UDRP panels1 , that the addition of merely generic, descriptive terms to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP.
Given the above, the Panel finds that the disputed domain name <xenicalpharmacyjsv.com> is confusingly similar to the Complainant’s trademark XENICAL.
B. Rights or Legitimate Interests
The Complainant asserts that it has given no license or other right to use its trademarks, that the Respondent is not commonly known by the disputed domain name, and that it has not conducted legitimate business under the disputed domain name. In line with previous UDRP decisions, the Panel accepts that the Complainant has provided a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, and the burden of production shifts to the Respondent.
The Respondent chose not to challenge the Complainant’s allegations. There is no evidence before the Panel to support the contrary, and therefore the Panel accepts these arguments as facts.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name <xenicalpharmacyjsv.com>.
C. Registered and Used in Bad Faith
The disputed domain name was registered in 2014 and incorporates as a prefix the Complainant’s widely known mark, which has been used since 1993 in connection with pharmaceuticals.
Further, the disputed domain name resolves to an online pharmacy that promotes via various links Xenical products and other drugs, and thus the Respondent appears to be intentionally misleading consumers by attracting them to other websites and making them believe that the websites behind those links are associated or recommended by the Complainant. This fact supports the inference that the purpose of the Respondent’s diversion of traffic from the Complainant to itself is for the Respondent’s own commercial gain. Such facts constitute bad faith under paragraph 4(b)(iv) of the Policy.
Furthermore, selling unauthorized pharmaceuticals, the safety of which cannot be assured, ultimately puts the public’s health and safety at risk.
The Respondent did not respond to the Complaint, nor did it provide accurate contact details to the Registrar. Given the other circumstances of the case, such behavior may be considered as further evidence of bad faith in registering and using the disputed domain name.
For the above, the Panel finds that the Respondent registered and is using the disputed domain name <xenicalpharmacyjsv.com> in bad faith.
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 <xenicalpharmacyjsv.com> be transferred to the Complainant.
Date: November 28, 2014
1 See paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).