WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Domain Admin / Whois Privacy Corp.
Case No. D2015-1947
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
The Respondent is Domain Admin / Whois Privacy Corp. of New Providence, Bahamas.
2. The Domain Name and Registrar
The Disputed Domain Name <xenical-online.com> is registered with TLD Registrar Solutions Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 29, 2015. On October 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 30, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 4, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 25, 2015.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on December 1, 2015. 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 stated 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 owns, in particular, the following trademarks (the "Trademarks") for many goods and services in connection with "a prescription medicine used with a low calorie diet to increase weight loss in people with obesity":
- The International trademark XENICAL No. 612908 registered on December 14, 1993.
- The International trademark XENICAL No. 699154 registered on July 28, 1998.
The Disputed Domain Name <xenical-online.com> was registered on August 11, 2015. At the time the Complaint was filed, the website at the Disputed Domain Name resolved to an online pharmacy promoting and selling the Complainant's XENICAL product.
5. Parties' Contentions
The Complainant, together with its affiliated companies, is one of the world's leading research-focused healthcare groups in the field of pharmaceuticals and diagnostics. It has global operations in more than 100 countries.
The Complainant asserts that it has registered several trademarks for XENICAL in a number of countries.
The Disputed Domain Name is confusingly similar to the Complainant's trademarks seeing that it incorporates the XENICAL trademark in its entirety. According to the Complainant, the addition of a hyphen and the generic term "online" to the term "xenical" in the Disputed Domain Name does not sufficiently distinguish the Disputed Domain Name from the Complainant's trademarks.
The Complainant has exclusive and prior rights in the XENICAL trademarks and the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Indeed, the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant's trademarks.
The Disputed Domain Name redirects to an online pharmacy. The Complainant asserts that the Respondent, by operating an online pharmacy which promotes and sells the Complainant's products, in particular XENICAL products, is falsely implying that its products are related or similar to those of the Complainant and is using the Disputed Domain Name with the purpose of capitalizing on the reputation of the Complainant's trademarks.
The Complainant notified the Respondent by letter of the infringement of its trademarks by the Disputed Domain Name. The Complainant summoned the Respondent to bring such infringement to an end, by a cease and desist from all use of the Trademarks. The Respondent has not responded to the Complainant's letter.
The Complainant contends that the Respondent registered the Disputed Domain Name in bad faith. At the time of registration of the Disputed Domain Name, and because it consists of the reproduction of the Complainant's well-known trademarks, the Respondent had constructive knowledge of these trademarks. The Respondent has intentionally chosen the Disputed Domain Name based on the Complainant's trademarks in order to disrupt the Complainant's business.
The Respondent is deliberately using the Disputed Domain Name with a connection to the Complainant's trademarks in order to mislead Internet users by creating a likelihood of confusion as to the source, affiliation or endorsement of the Respondent's website or of the products or services on the Respondent's website.
For the foregoing reasons, the Complainant requests that the Disputed Domain Name be transferred from the Respondent to the Complainant.
The Respondent did not reply to the Complainant's contentions and is therefore in default.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Respondent did not reply to the Complainant's contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0"), the consensus view of UDRP panelists is that a respondent's default does not automatically result in a decision in favor of the complainant. Although, the Panel may draw appropriate inferences from a respondent's default, paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.
In order to obtain the transfer of the Disputed Domain Name and according to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
At the same time, in accordance with paragraph 14(b) of the Rules:
"(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."
The Panel finds that in this case there are no such exceptional circumstances. Consequently, failure on the part of the Respondent to file a response to the Complaint permits an inference that the Complainant's reasonable allegations are true. It may also permit the Panel to infer that the Respondent does not deny the facts that the Complainant asserts (see Harrods Limited v. Harrod's Closet, WIPO Case No. D2001-1027; see also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
There are two parts to the inquiry under the first element of the Policy. The Complainant must first demonstrate that it has rights in a trademark and secondly that the Disputed Domain Name is identical or confusingly similar to such trademark.
The Panel is satisfied that the Complainant is the owner of a variety of registered trademarks for XENICAL, including the examples cited in the Factual Background. The Panel therefore turns to the second part of the inquiry.
It is well-established that "a domain name that wholly incorporates a Complainant's registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP" (see Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888).
Here, the Disputed Domain Name incorporates the Complainant's XENICAL trademark in its entirety with the mere addition of the generic term "online" and the addition of a hyphen between "xenical" and the generic term "online".
The addition of the generic term "online" and a hyphen does not sufficiently distinguish the Disputed Domain Name from the Complainant's trademarks. Indeed, "the word 'online', a description of a selling medium, does nothing to diminish the distinctiveness of the Complainant's trade mark" (see F. Hoffmann-La Roche AG v. PrivacyProtect.org / Arrakis Inc, WIPO Case No. D2012-1887).
On the contrary, by the addition of the generic term "online" after the Complainant's trademark, the Disputed Domain Name leads a portion of Internet users into thinking that legitimate products bearing the Trademarks will be available from the corresponding website.
Regarding the addition of the generic Top-Level Domain (gTLD) extension ".com" to the Disputed Domain Name, it is well-established that gTLDs may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy.
Indeed, "a principle which applies to all the domain names is that the addition of generic Top-Level Domains (gTLDs) or country code Top-Level Domains (ccTLDs) does not affect the confusing similarity or identity between the domain name and the trade mark(s) in issue. This has been clearly established from the beginning of the UDRP process, and now is no longer an issue. Thus, the addition of various types of gTLDs to the domain names ('.com', '.net') does not change the assessment of confusing similarity" (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In these circumstances, the Panel finds that the Disputed Domain Name is confusingly similar to the trademarks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by a respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has made out such a prima facie case.
The Respondent is not an authorized dealer, distributor or licensee of the Complainant and has been given no other permission from the Complainant to use the Complainant's Trademarks.
The Respondent's name does not bear any resemblance to the Disputed Domain Name nor is there any basis to conclude that the Respondent is commonly known by the Trademarks or the Disputed Domain Name. Furthermore, there is no evidence that the Respondent has made demonstrable preparations to use or is using such terms in connection with a bona fide offering of goods or services.
The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name in light of the Complainant's evidence that the Respondent's intention was to benefit from the Trademarks' reputation to disrupt the Complainant's business and to illegitimately trade on its fame for commercial gain.
The Respondent has not rebutted this by way of a Response or otherwise. The way that the Respondent has been using the Disputed Domain Name, see below under section C, does not support a finding of rights or legitimate interests.
In all of these circumstances, the Panel finds that the Complainant has proved 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 have been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four non-exclusive circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location."
In the Panel's view, the Respondent necessarily had constructive knowledge of the Complainant's trademarks when registering the Disputed Domain Name since the Trademarks have been used for over 20 years.
The Disputed Domain Name redirects to an online pharmacy webpage promoting and selling XENICAL products. By using the Disputed Domain Name, the Respondent has intentionally attempted to disrupt the Complainant's business and capitalize on its reputation.
"It is well-established in UDRP decisions that 'initial interest confusion' and the resultant misdirection of Internet traffic to respondent is independently sufficient to establish bad faith" (Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784). In the present case, the Respondent is using the Disputed Domain Name as a forwarding address to a for-profit online pharmacy.
Finally, the Respondent's online pharmacy associated to the Disputed Domain Name promotes and sells XENICAL products, with and without prescription. However, genuine XENICAL products are not available without prescription.
"To a certain extent, Respondent is encouraging consumers to enter into an irresponsible pattern of conduct in the purchase of drugs and even to self-medication in respect to those that need prescription. Considering that Respondent is trading on the goodwill of Complainants' trademarks, it should be also taken into account that the conditions under which Respondent is offering the sale of 'aventis' may lessen the reputation associated with Complainants' trademarks" (see Aventis, Aventis Pharma SA. v. VASHA Dukes, WIPO Case No. D2004-0276).
Noting that the Disputed Domain Name incorporates the XENICAL trademark, with the addition of the generic term "online" and a hyphen, together with the gTLD ".com"; that no Response has been filed; and that there appears to be no conceivable good faith use that could be made by the Respondent of the Disputed Domain Name, and considering all the facts and evidence submitted by the Complainant, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <xenical-online.com> be transferred to the Complainant.
Date: December 9, 2015