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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. United Pharmacy Limited

Case No. D2006-0063

 

1. The Parties

The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internal representative.

The Respondent is United Pharmacy Limited, Hong Kong, SAR of China.

 

2. The Domain Names and Registrar

The disputed domain names <discount-xenical.com> and <xenicalpharmacy.com> are registered with Register.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2006. On January 16, 2006, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain names in issue. On January 17, 2006, Register.com 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 January 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2006.

The Center appointed Adam Samuel as the sole panelist in this matter on February 17, 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 is a Swiss manufacturer of medicines that operates in more than 100 countries. It manufactures a weight-loss drug called Xenical. It holds trade mark registrations for XENICAL, in a number of countries. Notably, it first registered its international trademark rights in XENICAL with the World Intellectual Property Organization in 1993.

The domain name <discount-xenical.com> was registered in 2001 and <xenicalpharmacy.com> in 1999.

 

5. Parties’ Contentions

A. Complainant

The domain name incorporates the Complainant’s trade mark in its entirety. The words “discount” and “pharmacy” do not sufficiently differentiate the domain name from the Complainant’s mark. The word, “discount” does not dispel a connection, in the public’s mind, between the name of the drug and the owner of the trademark concerned. Equally, the addition of the word “pharmacy” as a generic term fails to distinguish the disputed domain name from the trademark. Consequently, the two domain names are confusingly similar to the Complainant’s trademark. That mark pre-dates the Respondent’s registration of the domain names.

The Complainant has not authorized or licensed the Respondent to use the trademark XENICAL. The Respondent’s domain names in issue redirect users to two different on-line pharmacies. The Respondent does not have any rights or interest in the disputed domain name.

When it registered the domain name in dispute, the Respondent undoubtedly knew of the existence of XENICAL. This mark has a good reputation among doctors. The Respondent is intentionally seeking to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website in question. By allowing Internet users to buy drugs without requiring proof of a medical examination through the disputed domain name, the Respondent is potentially harming the health of those users. They are purchasing Xenical under the mistaken impression that they are dealing with the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Under the Policy, the Complainant must prove that

(i) the domain name is identical or confusingly similar to a trademark or service mark in which it 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 Complainant owns a trademark registration for the name XENICAL. The domain names in dispute involve adding the words “discount” to the front and “pharmacy” to the back of it. On the use of the word “discount”, the panel in Sanofi-Aventis v. Internet MarketingInc./John Bragansa, WIPO Case No. D2005-0742 said:

“The Panel is of the view that the addition of the descriptive words “discount” and “online” to the mark does nothing to dispel a connection in the public’s mind between the pharmaceutical name and its owner, the Complainant.

Accordingly, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s mark and so decides that the Complainant has satisfied this first element of the Policy.”

The panel in Sanofi-Aventis v. Ascendim, WIPO Case No. D2004-0812 said similarly:

“In relation to a domain name which included a trademark and the term “discount,” the Panel considered that “the mere addition of the generic word “discount” in the disputed domain name does not avoid a finding of confusingly similarity under paragraph 4(a)(i) of the Policy (see Carfax, Inc d/b/a Carfax v. Auto Check USA, WIPO Case No. D2001-0929).

Therefore, and after analyzing these different UDRP cases, there is no doubt that the reproduction of the trademark ACOMPLIA, as the sole distinctive element of the domain names concerned, generates confusion. Indeed, persons accessing the domain names would be bound to think that the domain names have a connection with the Complainant.

Consequently, because of this similarity, there is a high risk of confusion, as a consumer may think that the domain names directly refer to the Complainant’s products.

In conclusion, the domain names <buy-acomplia.net> and <discount-acomplia.com> are confusingly similar to the Complainant’s trademark ACOMPLIA.”

As to the addition of the word, “pharmacy”, the panel in Lilly ICOS LLC v. Tommy Hillinger, WIPO Case No. D2005-0475 said:

“The disputed domain name contains the Complainant’s CIALIS mark as well as the words “my” and “pharmacy”. As stated in Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, “Generally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.’ 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998).” (See also The Price Company v. Price Club, WIPO Case No. D2000-0664 (finding <priceclub2000.com> to be confusingly similar to the PRICE CLUB mark).

Therefore, in accordance with previous panel decisions, the Panel concludes that the Respondent’s domain name is confusingly similar to the Complainant’s CIALIS mark in which the Complainant has rights.”

The domain names in dispute in this case are similar to the Complainant’s trademark because they use the precise trademark name which has no general meaning and two generic words in common usage. Internet users probably have every right to expect that, when they select the disputed domain names, they will find themselves looking at sites of the Complainant or someone licensed by the Complainant to use its XENICAL trade mark. This is not the case. For that reason, and in line with other WIPO UDRP cases, the Panel concludes that the domain names are confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent is not called ‘Xenical’ and does not appear to trade under that name. There is no evidence that the owner of the trademark in question, the Complainant, has authorized it to use the trademark. The Respondent has never asserted any rights or legitimate interests in the name. For these reasons, on the basis of the case file, and in view of the absence of a Response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain names.

C. Registered and Used in Bad Faith

The domain name <xenicalpharmacy.com> leads the internet user to a website selling Xenical online. The website says at the bottom of the home page “This site is not associated with the manufacturers of Xenical”.

It is hard to believe that the Respondent could have selected this domain name without knowing of the Complainant’s product ‘Xenical’ since the 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.

The Respondent is using the Complainant’s trademark to attract visitors to a website to purchase from it, rather than the Complainant. While the website does say that it has no connection with the drug’s manufacturers, this message will be too late for some internet users. The Respondent will have attracted them to the site by infringing the Complainant’s trademark name in the hope that once there, they will purchase from the Respondent rather than the Complainant. It is irrelevant to the question of bad faith as to whether this is likely to be successful..

It is not possible at present to view <discount-xenical.com>. The Complainant has described its appearance at the time of the filing of the Complaint in similar terms to <xenicalpharmacy.com>. In the absence of a response from the Respondent, one must assume this to be correct. The temporary unavailability of a site cannot make a use that in recent times has been in bad faith suddenly acceptable. Otherwise, every cyber-squatter would be able to defeat the purposes of the UDRP by temporarily bringing down their websites once domain name proceedings have been brought with respect to them until the Panel’s decision. After that, a respondent could just resume cyber-squatting.

In view of that conclusion, the observations made above about <xenicalpharmacy.com> must apply equally to <discount-xenical.com>.

For all these reasons, the Panel concludes that the domain names in dispute have both been registered and are being used 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 names, <discount-xenical.com> and <xenicalpharmacy.com> be transferred to the Complainant.

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Adam Samuel
Sole Panelist

Dated: March 3, 2006