WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. NA NA, Digi Real Estate Foundation
Case No. D2006-1397
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, of Basel, Switzerland.
The Respondent is Na Na, Digi Real Estate Foundation, of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <orderxenical.com> is registered with Domain-A-Go-Go, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2006.
On November 6, 2006, the Center transmitted by email to Domain-A-Go-Go, LLC a request for registrar verification in connection with the domain name at issue. On November 6, 2006, Domain-A-Go-Go, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 November 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2006. The Respondent was informed that if its response was not received by that date, it would be considered in default. The Center would still appoint a Panel to review the facts of the dispute and to decide the case. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2006.
The Center appointed Vinod K. Agarwal as the sole panelist in this matter on December 13, 2006. 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
From the Complaint and the various annexure to it, the Panel has found the following facts:
The Complainant in this administrative proceeding is F. Hoffmann-La Roche AG. It is a research focus health group in the field of pharmaceuticals and diagnostics.
It is stated that the Complainant has its operations in more than 100 countries. It is further stated that the Complainant’s mark XENICAL is a registered trade mark in many countries of the world. The mark XENICAL designates an oral prescription weight loss medication.
The Complainant has not mentioned detailed activities of the Complainant in the Complaint.
The Respondent did not reply to the Complainant’s contentions. Hence, the Respondent’s activities are not known.
5. Parties Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to this dispute.
In relation to element (i), that is, the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the Complainant contends that amongst the consumers worldwide it is known as F. Hoffmann-La Roche AG.
The Complainant further contends that the trademark XENICAL is registered in many countries of the world. However, the name of the countries where the trademark is registered is not given in the Complainant. But the registration indicates that the Complainant has interest in Austria, Benelux, Bulgaria, Egypt, France, Italy, Portugal, Spain, Ukraine, etc.
In relation to element (ii), that is, the Respondent has no rights or legitimate interests in respect of the domain name, the Complainant contends that the Respondent (as an individual, business, or other organization) has not been commonly known by the domain name <orderxenical.com>. Further, the Respondent is not making a legitimate or fair use of the said domain name for offering goods and services.
The Complainant contends that the Respondent registered the domain name for the sole purpose of creating confusion and misleading the general public and the customers of the Complainant. Further that, the addition of one word “order” does not change the meaning or does not avoid confusion in the minds of prospective customers of the Complainant.
Regarding the element at (iii), that is, the domain name has been registered and is being used in bad faith, the Complainant contends that the main object of registering the domain name <orderxenical.com> by the Respondent is to earn profit and to mislead the general public and the customers of the Complainant. The Complainant has stated that the use of a domain name that appropriates a well known trademark to promote competing or infringing products cannot be considered a “bona fide offering of goods and services”.
In support of its contentions regarding elements (ii) and (iii), the Complainant has relied on the decision of F. Hoffmann-La Roche AG v. DOMIBOT. WIPO Case No. D2006-0327.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision. It says that, “A panelist shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The present dispute pertains to the domain name <orderxenical.com>.
The domain name <orderxenical.com> is confusingly similar in appearance and pronouncement to Complainant’s trademark. In the disputed domain name only the word “order” has been added.
In Lilly ICOS LLC v. John Hopking / Neo net /Ltd,. WIPO Case No. D2005-0694 the Panel has stated that, “generally a user of a mark may not avoid likely confusion by appropriating another’s mark and adding descriptive or non-distinctive matter to it.”
Thus, the Panel finds that the domain name is confusingly similar to the registered trademark of the Complainant.
B. Rights or Legitimate Interests
According to Paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interest in the domain name by proving any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent’s 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) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate non-commercial 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 Respondent has not filed any response in this case. There is no evidence to suggest that the Respondent has become known by the disputed domain name anywhere in the world. Based on the default and the evidence in the Complaint, it is presumed that the above circumstances do not exist in this case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The mark of the Complainant is XENICAL. Based on the evidence it appears that the Respondent does not have a legitimate interest in the domain name. Further, in view of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its name or trademark or to apply for or use the domain name incorporating said name and that nobody would use the word “xenical” unless seeking to create an impression of an association with the Complainant.
The Panel finds that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of the domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has 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 it has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on its website or location.
The contention of the Complainant is that the present case is covered by the second and fourth circumstance. The Complainant has furnished evidence of the fact that the disputed domain name directs towards other websites.
In support of its contentions the Complainant has relied on the decision of F. Hoffmann-La Roche AG v. United Pharmacy Limited, WIPO Case No. D2006-0063. In that case one of the disputed domain names was <discouny-xenical.com>. The Panel found that, “it is hard to believe that the Respondent could have selected this domain name without knowing the Complainant’s product “xenical” since this word has no independent meaning in any language. At best, the Respondent must have suspected that the Complainant would have registered trademark rights in the name. Nevertheless the Respondent used that name to attract visitors to its site knowing that the Complainant had not authorized it to do so. This provides clear evidence of bad faith registration of the domain name”
This and other information submitted by the Complainant leads to the presumption that the domain name in dispute was registered and used by the Respondent in bad faith. The Panel agrees with the said contention of the Complainant and concludes that the registration of the domain name amounts to the registration and use of the domain name in bad faith.
In light of the forgoing findings, namely, that the domain name is confusingly similar to a mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was
registered and is being used in bad faith, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <orderxenical.com> be transferred to the Complainant.
V. K. Agarwal
Dated: December 27, 2006