WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / lina fox, linafox
Case No. D2015-2199
1. The Parties
Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented.
Respondent is Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org of Queensland, Australia / lina fox, linafox of Sofia, Bulgaria.
2. The Domain Names and Registrar
The disputed domain names <buyxenical-online.com> and <xenical-sale.com> are registered with Shinjiru MSC Sdn Bhd (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 3, 2015. On December 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 4, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 8, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment, supplementing the Complaint with the additional respondent information, on the same date.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on December 10, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 4, 2016.
The Center appointed Seth M. Reiss as the sole panelist in this matter on January 13, 2016. 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 is together with its affiliated companies one of the world's leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, having global operations in more than 100 countries. Complainant's mark XENICAL is protected as a trademark in a multitude of countries worldwide including through International Registration No. 612908 (XENICALword mark) issued December 14,1993 based upon a priority date of August 5, 1993, and International Registration No.699154 (XENICAL & design mark) issued July 28, 1998.
Complainant uses its XENICAL mark as an indication for a prescription medicine used with a low calorie diet to increase weight loss in people with obesity.
Respondent registered both of the disputed domain names on November 13, 2015, in the name of the privacy service Privacy Protection Service INC d/b/a PrivacyProtect.org of Queensland, Australia ("PPS"). At the time the Complaint was filed, Respondent was using the disputed domain names to direct Internet users to online pharmacies that purport to sell XENICAL and other pharmaceuticals and weight loss products. Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use Complainant's XENICAL mark.
On November 25, 2015, Complainant emailed PPS, advising the privacy service of its rights in the XENICAL mark and that PPS' use of the mark in the disputed domain names infringed Complainant's trademark rights. Complainant asked PPS to transfer the disputed domain names to Complainant. Complainant received no response to its communication.
On December 4, 2015, in response to the Center's registrar verification request, the Registrar disclosed to the Center the personal name "lina fox" and company name "linafox" of Sofia, Bulgaria as the "correct domain name's [sic] user details" for the disputed domain names. Shortly thereafter, PPS' contact details were replaced by lina fox's contact details in the Registrar's WhoIs database for the disputed domain names.
5. Parties' Contentions
Complainant contends that the disputed domain names are confusingly similar to the registered XENICAL mark in which Complainant has rights; that Respondent is not making a bone fide commercial use of the domain names and cannot otherwise establish a right or legitimate interest in respect of the disputed domain names, and that Respondent registered and is using the <buyxenical-online.com> and <xenical-sale.com> domain names in bad faith. In particular, Complainant argues that Respondent's use of the disputed domain names to direct Internet users to online pharmacies to sell unauthorized or competing goods, Respondent's failure to reply to Complainant's November 25, 2015 email communication, and Respondent's use of a privacy service to mask Respondent's identity, all demonstrate Respondent's lack of rights or legitimate interests as well as Respondent's bad faith registration and use.
Complainant request that the disputed domain names be transferred to it.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs that the "Panel shall 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."
Pursuant to paragraph 4(a) of the Policy, Complainant has the burden of establishing the existence of the following three elements:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain name were registered and are being used in bad faith.
A. Identical or Confusingly Similar
Complainant holds rights to the XENICAL mark, dating from 1993, as a result of multiple trademark registrations. "If the complainant owns a [registered] trademark, then it generally satisfies the threshold requirement of having trademark rights." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), Section 1.1. Complainant's rights in the XENICAL mark have been previously confirmed by a number of UDRP panels. See, e.g., F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049.
Here, the disputed domain names consist of, in the case of <buyxenical-online.com>, Complainant's XENICAL mark preceded by the generic term "buy" and followed by the generic term "online" and general Top-Level Domain ("gTLD") suffix ".com"; and, in the case of <xenical-sale.com>, Complainant's XENICAL mark without prefix and followed by the generic term "sale" and gTLD suffix ".com".
The incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to complainant's registered mark. See The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812, and panel decisions cited therein. "The addition of merely generic, descriptive, or geographical wording 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." WIPO Overview 2.0, Section 1.9.
In Pfizer Inc. v. Randi Pollock, WIPO Case No. D2015-1494, the panel found that the use of the generic term "online" together with a pharmaceutical manufacturer's brand name enhances a finding of confusing similarity by suggesting the offer of the brand owner's products online. Similarly, the panel in Sanofi-Aventis v. Conciergebrain.com, WIPO Case No. D2005-1358, found the addition of the prefix "buy-cheapest" preceding the brand name drug "Ambien" in a domain name made the possibility of confusion with the brand more, as opposed to less, probable.
This Panel concludes that the disputed domain names <buyxenical-online.com> and <xenical-sale.com> are confusingly similar to the mark XENICAL in which Complainant holds rights.
B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is that:
"[w]hile the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP." WIPO Overview 2.0, Section 2.1.
Complainant contends that Respondent is in no way connected or affiliated with Complainant and has no license, permission or consent, express or implied, to use Complainant's XENICAL mark.
In failing to respond to Complainant's November 25, 2015 email communication, and not submitting a response in the instant proceeding, Respondent has failed to invoke some circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that Respondent holds some right or legitimate interest in the disputed domain names. Ahead Software AG v. Leduc Jean, WIPO Case No. D2004-0323.
There is no evidence in the record that Respondent is commonly known by the disputed domain names.
Respondent's unauthorized use of the disputed domain names to point to online pharmacies that purport to sell Complainant's XENICAL branded pharmaceutical and other pharmaceuticals and weight loss products is inconsistent with any right or legitimate interest Respondent might claim in the "xenical" name. "[S]everal cases have found that a registrant has no legitimate interest in a domain name that is similar to a pharmaceutical manufacturer's mark and that is being used to direct consumers to an on-line pharmacy." Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784.
This Panel finds that the second element of the Policy is established.
C. Registered and Used in Bad Faith
Respondent's selection for registration of the disputed domain names <buyxenical-online.com> and <xenical-sale.com>, twenty plus years after Complainant's XENICAL mark had been established and gained recognition, in the circumstances of this case, is evidence of Respondent's bad faith registration of the disputed domain names. "Only someone who was familiar with the Complainant's mark and its activity would have registered the Domain Name inclusive of such mark and the words 'buy' and 'online'". F. Hoffmann-La Roche AG v. Ivan Varypaev, WIPO Case No. D2014-0112 (discussing the XENICAL mark in the context of the domain name <xenicalbuyonline.com>).
"Although use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith." WIPO Overview 2.0, Section 3.9. Here, Respondent registered the disputed domain names <buyxenical-online.com> and <xenical-sale.com> using a registrar located in Malaysia and a privacy service located in Australia. After receiving the Complaint, the Registrar disclosed an individual name and business name, both being almost the same, having a Bulgarian address. In the absence of evidence suggesting the individual or business identified is real, these circuitous circumstances, considered together, support a finding of bad faith registration and use.
More definitive evidence of bad faith use comes from Respondent's use of the disputed domain names to direct Internet users to online pharmacies purporting to sell Complainant's XENICAL branded pharmaceutical together with other pharmaceuticals and weight loss products. Use of domain names incorporating a pharmaceutical manufacturer's brand name "as a forwarding address for a for-profit on-line pharmacy" has been found to be a factor establishing bad faith use. Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. In the subject case Respondent used the disputed domain names <buyxenical-online.com> and <xenical-sale.com> to intentionally attract for commercial gain Internet users to Respondent's websites by creating a likelihood of confusion with Complainant's XENCIAL mark as to source, sponsorship, affiliation, or endorsement of Respondent's websites and of the products on Respondent's websites, meeting the criteria of paragraph 4(b)(iv) of the Policy.
The Panel finds that Respondent has registered and is using the disputed domain names in bad faith establishing the third and final element of the Policy.
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 names <buyxenical-online.com> and <xenical-sale.com> be transferred to Complainant.
Seth M. Reiss
Date: January 19, 2016