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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. MedCenter Canada

Case No. D2005-1291

 

1. The Parties

The Complainant is F. Hoffmann-La Roche AG, of Basel, Switzerland.

The Respondent is MedCenter Canada, of Manitoba, Canada.

 

2. The Domain Name and Registrar

The disputed domain name <xeloda-side-effects.com> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2005. On December 14, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On the same date, Go Daddy Software 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 December 21, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2006.

The Center appointed Mr. Ian Blackshaw as the Sole Panelist in this matter on January 18, 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

The Complainant, together with its affiliated companies, is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics, and the leading supplier of medicines for cancer and transplantation, and also a market leader in virology.

The Complainant’s mark XELODA is protected as a trademark in many countries worldwide. As an example, reference is made to the International Registration No. 664710, a copy of the registration certificate of which has been provided to the Panel. The priority date for this registration is December 4, 1996.

The mark XELODA designates an anticancer medicine (chemotherapy) used for treating cancer of the colon after surgery (adjuvant). XELODA is also used to treat colorectal or breast cancer that has spread to other parts of the body (metastatic cancer).

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

A. The domain name is confusingly similar to a trademark or service mark in which the Complainant has rights

(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))

The domain name of the Respondent is confusingly similar to the Complainant’s mark as it incorporates that mark in its entirety.

The mere adding of the descriptive word “side-effects” is not sufficient to distinguish the disputed domain name from the Complainant’s trademark XELODA.

Furthermore, the Complainant’s use and registration of the mark XELODA predate the Respondent’s registration of the domain name.

Therefore, the domain name is confusingly similar to the trademark of the Complainant.

B. The Respondent has no rights or legitimate interests in respect of the domain name

(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))

The Complainant has exclusive rights to XELODA, as mentioned above and no license, permission, authorization or consent has been granted to the Respondent to use XELODA in the domain name.

Therefore, the domain name at issue clearly alludes to the Complainant.

The domain name not only contains information about XELODA, but consists also of diverting visitors to an on-line pharmacy.

According to the decision in Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784: “several 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”.

There is no reason why the Respondent should have any right or interest in the domain name.

C. The domain name was registered and is being used in bad faith

(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))

The domain name was registered in bad faith, since at the time of the registration, namely, November 14, 2003, the Respondent had, no doubt, knowledge of the Complainant’s product/mark XELODA.

The domain name is also being used in bad faith. This is obvious, since, when viewing the Internet-website of the Respondent, a copy of which has been provided to the Panel, one realizes that, by using the domain name mainly to direct Internet users to a for-profit on-line pharmacy, 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 on-line pharmacy linked to the Respondent’s website.

The domain name at issue misleadingly includes the Complainant’s mark in spite of no authorization having been granted to the Respondent. The domain name, especially by using the same logo as the Complainant, is potentially harmful to the health of Internet users, who purchase XELODA products under the mistaken impression that they are dealing with the Complainant, who owns and operates its own website under “www.xeloda.com”.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions or take any other part in these proceedings.

 

6. Discussion and Findings

To qualify for cancellation or transfer of the domain name at issue, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, “in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the complaint… [and] (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 as it considers appropriate”.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondent failed to file a response, the panels’ decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default (Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is well-established that where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The domain name at issue incorporates the trademark XELODA, which is owned and has been commercially used and promoted by the Complainant in and for the purposes of its business and the sale of its products as a trademark for many years. Furthermore, the Panel accepts and recognizes that the Complainant’s trademark XELODA is well- known to and has a good reputation amongst medical doctors.

The Panel agrees with the Complainant’s contention that the addition of the word “side–effects” is descriptive and adds no distinctiveness or source of origin elements whatsoever to the domain name at issue, which essentially incorporates the Complainant’s trademark.

In view of this, the Panel finds that the domain name registered by the Respondent is identical or confusingly similar to the trademark XELODA, in which the Complainant has clearly demonstrated, to the satisfaction of the Panel, that it has well-established and commercially valuable rights through registration and long exclusive commercial use.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of 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;

- Whether 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;

- Whether the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the domain name at issue.

In particular, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use, the domain name at issue in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the domain name at issue for a website that purports to be that of the Complainant.

Likewise, no evidence has been adduced that the Respondent has commonly been known by the domain name; nor is it making a legitimate non-commercial or fair use of the domain name; nor has the Respondent been authorized or licensed by the Complainant to use the Complainant’s well-known trademark XELODA as part of the domain name at issue.

Furthermore, the adoption by the Respondent of a domain name identical to the Complainant’s trademark inevitably leads to the diversion of the Complainant’s consumers to the Respondent’s website (see further on this point below) and the consequential tarnishing of the Complainant’s trademark. In other words, the Respondent is trading for commercial gain on the good name and worldwide fame and reputation of the Complainant’s business and trademark and unfairly attracting to its own business and activities the substantial goodwill that the Complainant has established over many years in its name and marks, evidence of which has been provided to the Panel, without any right or legal justification for doing so.

Therefore, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the domain name at issue.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(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.”

Based on the evidence provided in the case file, the Panel agrees with the Complainant’s contention that the Respondent by registering the domain name at issue is trading on the Complainant’s valuable goodwill established in its trademark XELODA over many years. Indeed, in the absence of any evidence to the contrary, of which none is forthcoming on the part of the Respondent, the Respondent’s registration of the domain name at issue would not appear to be accidental, but deliberate and calculated to exploit the Complainant’s renown in the pharmaceuticals field. This is reinforced by the link on the website of the Respondent to an on-line pharmacy.

Again, by registering and using the domain name at issue incorporating the Complainant’s trademark, XELODA, the Respondent is misleading Internet users and consumers into thinking that it is, in some way or another, connected, sponsored or affiliated with the Complainant and its business, or the Respondent’s activities are approved or endorsed by the Complainant, none of which, in fact, is the case.

The Respondent appears to be trading on the Complainant’s goodwill and reputation, which the Complainant has built up over many years. This, without any explanations by the Respondent to the contrary, of which none have been forthcoming, constitutes bad faith. See the case of eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633, where it was stated that:

“The Domain Name consists of the EBAY trademark plus the addition of the country name Korea. Because the Domain Name incorporates the identical EBAY trademark, a consumer or user of the Internet viewing a website located at the “www.ebaykorea.com” domain address would be likely to assume that the website or operator is somehow sponsored by or affiliated with eBay, when it is not.”

Furthermore, the failure of the Respondent to file any answer to the present Complaint or otherwise participate in the present proceedings, in the view of the Panel, also suggests bad faith on the part of the Respondent.

Finally, the Panel agrees with the Complainant’s contention that the use by the Respondent of the domain name at issue, and especially the use of the same logo as the Complainant, is misleading and potentially harmful to the health of Internet users and consumers, who purchase XELODA products under the mistaken impression that they are dealing with the Complainant, who also owns and operates its own website under “www.xeloda.com”, which is further evidence of bad faith on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the domain name at issue in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <xeloda-side-effects.com> be transferred to the Complainant.


Ian Blackshaw
Sole Panelist

Dated: January 19, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1291.html

 

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