WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Private Registration, WhoisGuardService.com
Case No. D2010-1368
1. The Parties
The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, represented internally.
The Respondent is Private Registration, WhoisGuardService.com of Nanjing, China.
2. The Domain Name and Registrar
The disputed Domain Name <xenicaldietpills.com> (the “Domain Name”) is registered with Cronon AG (the ”Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2010. On August 12, 2010, the Center transmitted by email to Cronon AG a request for registrar verification in connection with the disputed Domain Name(s).
On August 13, 2010, 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; that the Domain Name under dispute <xenicaldietpills.com> has been placed on lock to prevent any transfers or changes to the registration information during the proceedings.
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”).
The undersigned Panel has independently determined and agrees with WIPO’s assessment that the Complaint is in formal compliance with the requirements of the Policy, the Rules, and the WIPO 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 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 6, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2010.
The Center appointed Pedro W. Buchanan Smith as the sole panelist in this matter on September 16, 2010. 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.
This Panel further considers that the Complaint was properly notified to the registered domain-name holder, as provided for in paragraph 2(a) of the Rules.
The Panel has not received any further requests from Complainant or Respondent regarding submissions, waivers or extensions of deadlines and the Panel has not found it necessary to request any further information, statements or documents from the Parties, nor the need as an exceptional matter, to hold any in-person hearings as necessary for deciding the Complaint, as provided for in paragraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of Domain Name dispute proceedings.
The language of the proceeding should be that of the Registration Agreement (which might be German or English as confirmed by the Registrar), nevertheless this being subject to the authority of the Panel to determine otherwise, pursuant to paragraph 11(a) of the Rules. Therefore, this Panel has decided that in consideration to the circumstances of this Domain Name dispute and administrative proceeding, based on the confirmations from the Registrar, that the web pages used by the Registrant are in English, and that other documents related to this proceeding are originally in English, it is determined by the Panel that the language of the proceeding shall be English.
4. Factual Background
According to the information provided by the Complainant, and due to the fact that the same was not disputed by the Respondent, the following facts and circumstances are recognized within this proceeding:
The Complainant 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’s mark XENICAL is protected as trademark in a multitude of countries worldwide. As an example reference is made to the International Registration Nos. 612908 & 699154, certificates of which were submitted as Annex 3 to the Complaint. Priority date for the mark XENICAL is August 5, 1993.
The mark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off. For the mark XENICAL the Complainant holds registrations in over hundred countries on a world-wide basis.
5. Parties’ Contentions
The Domain Name of the Respondent is confusingly similar to the Complainant’s mark seeing that it incorporates this mark in its entirety. The addition of the descriptive term “dietpills” does not sufficiently distinguish the Domain Name from the trademark.
The Complainant’s use and registration of the mark XENICAL do predate the Respondent’s registration of the Domain Name on August 3, 2010. The Complainant argues that the Domain Name is confusingly similar to the trademark of the Complainant.
The Complainant has exclusive rights for the XENICAL mark, as mentioned above and no license, permission, authorization or consent was granted to use XENICAL in the Domain Name. Therefore the Domain Name in question clearly alludes to the Complainant.
As it appears on Annex 4 which was submitted by the Complainant, the Respondent’s Domain Name at one time directed Internet users to a website which was a search engine composed of sponsored links. According to Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085, “using the Domain Name to mislead users by diverting them to a search engine (..) does not appear to be use in connection with a bona fide offering of goods or services and therefore legitimate”. Currently, the Domain Name redirects to a pharmaceutical retail site “www.123rx.net”.
The Respondent’s only reason in registering and using the Domain Name is to benefit from the reputation of the trademark XENICAL and illegitimately trade on its fame for commercial gain and profit.
The Domain Name was registered in bad faith since at the time of the registration, i.e., on August 3, 2010, the defendant had, no doubt, knowledge of the Complainant’s product and mark XENICAL.
The domain is also being used in bad faith. When viewing the Internet website of the Respondent one realizes that the Respondent is intentionally attempting (for commercial purpose) to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark, which has a good reputation among doctors, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products or services posted on or linked to the Respondent’s website.
According to the above-mentioned case Fox News Network, LLC v. Warren Reid, “the Respondent’s commercial use of the Domain Name to increase Internet traffic directed at a search engine is evidence of bad faith and the use of the Domain Name is likely to result in consumer confusion as to the Complainant’s supposed affiliation with the search engine and its operator/s”.
Respondent, by using the disputed Domain Name, is intentionally misleading the consumers and confusing them so as to attract them to other websites by making them believe that the websites behind those links are associated or recommended by the Complainant. The Respondent is therefore illegitimately capitalizing on the XENICAL trademark fame.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel considers that the Respondent, by registering the disputed Domain Name with the Registrar (an Internet Corporation for Assigned Names and Numbers –ICANN– accredited Domain Name registrar), agreed to be bound by all terms and conditions of the Registrar’s Agreement, and any pertinent rule or policy, and particularly agreed to be bound by the Policy (incorporated and made a part of the Registrar’s Agreement by reference), which mandates that proceedings be conducted according to the Rules and the selected administrative dispute resolution service provider’s supplemental rules, in the present case being the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. Therefore, the dispute subject matter of this proceeding is within the scope of the above mentioned agreements and Policy, and this Panel has jurisdiction to decide this dispute.
Furthermore, the Panel considers that in the same manner, by entering into the above mentioned Registrar’s Agreement, the Respondent agreed and warranted that neither the registration of its Domain Name nor the manner in which it may intend to use such Domain Name will directly or indirectly infringe the legal rights of a third party, and that in order to resolve a dispute under the Policy, the Respondent’s Domain Name registration services may be suspended, cancelled or transferred.
The Panel also particularly considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met.
Such requirements include that the Parties and particularly the Respondent in this case be given adequate notice of proceedings initiated against them; that the Parties may have a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases; that the composition of this Panel be properly made and the Parties be notified of the appointment of this Panel; and that both Parties be treated with equality in these administrative proceedings.
In the case subject matter of this proceeding, the Panel is satisfied that these proceedings have been carried out by complying with such fundamental due diligence requirements, and particularly concerning the notification of the filing of the Complaint and the initiation of these proceedings giving the Respondent a right to respond.
Paragraph 4(a) of the Policy directs that the Complainant must prove the presence of each of the following elements: (i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This Panel finds that Respondent’s Domain Name <xenicaldietpills.com > is confusingly similar to Complainant’s very well known XENICAL trademark. Complainant’s trademark was registered significantly earlier than the date of registration of Respondent’s Domain Name <xenicaldietpills.com>.
In addition, the Domain Name <xenicaldietpills.com> wholly comprises Complainant’s XENICAL trademark, with the addition of the words “diet pills”. That although the words “diet pills” are generic, their composition with Complainant’s trademark makes the Domain Name <xenicaldietpills.com> confusingly similar to the Complainant’s XENICAL trademark.
Furthermore, the addition of the other gTLD “.com” is not a distinctive element, it is just a necessary element required for the registration of a second level domain name.
B. Rights or Legitimate Interests
This Panel finds, in general, from the information and facts that were analyzed and from the lack of evidence to the contrary, that there is no indication that the Respondent has any rights or legitimate interests in connection with Complainant’s XENICAL trademark nor with the Domain Name under dispute; that the disputed Domain Name under dispute is being used to intentionally misdirect to the Respondent’s website visitors who attempt to visit Complainant’s website; that the Respondent has not used nor prepared to use the <xenicaldietpills.com> Domain Name in connection with any good faith offering of goods or services as contemplated under paragraph 4(c)(i) of the Policy; nor that the Respondent is commonly known by the Domain Name as contemplated under paragraph 4(c)(ii) of the Policy; nor that the Respondent is 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 as contemplated under paragraph 4(c)(iii) of the Policy. The Panel therefore finds, that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds, from the information and facts that were analyzed, and from the lack of evidence to the contrary, that the registration of the Domain Name <xenicaldietpills.com> by the Respondent is in bad faith, in particular but without limitation, pursuant to paragraph 4(b)(iv) of the Policy, in view of the fact that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark XENICAL, as to the source, sponsorship, affiliation or endorsement of the website “www.xenicaldietpills.com” and/or the website “www.123mx.net”, to which the Domain Name currently re-directs, and therefore has made a bad faith use of the Domain Name.
Therefore, and in consideration of the Complaint’s compliance with the formal requirements for this Domain Name dispute proceeding, to the factual evidence and legal contentions that were submitted, to the conclusive confirmation of the presence of each of the elements contemplated in paragraphs 4(a)(i), (ii) and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15(a) of the Rules, this Panel orders that the Domain Name <xenicaldietpills.com> be transferred to the Complainant.
Pedro W. Buchanan Smith
Dated: September 30, 2010