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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Whois Defender, Inc.

Case No. D2006-0717

 

1. The Parties

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

The Respondent is Whois Defender, Inc., Dorking, Surrey, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <weightlosswithxenicalinfo.info> is registered with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2006. On June 8, 2006, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name at issue. On June 10, 2006, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.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 June 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2006.

The Center appointed Anders Janson as the sole panelist in this matter on July 26, 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 asserted, and provided evidence in support of, the following facts, which the Panel finds established:

The Complainant is, together with its affiliated companies, a worldwide operating healthcare group in the fields of pharmaceuticals and diagnostics. The groups global operations cover more than one hundred countries. The Complainant’s mark XENICAL is, according to the Complainant, a protected trademark in a multitude of countries. The mark XENICAL designates an oral prescription weight loss medication used to help obese people loose weight and keep this weight off.

The Complainant has put two registrations forward:

- International Registration with the WIPO No 612908 of the trademark XENICAL, registered on August 5, 1993 for the class 5.

- International Registration with the WIPO No 699154 of the figure mark XENICAL, registered on October 22, 1998 for the class 5.

The Panel notes that the registration date of the two above mentioned registrations predate the registration of the disputed domain name by the Respondent, which was on May 11, 2006. The Panel finds it established that XENICAL is a well-recognized trademark and that the trademark is both distinctive and famous.

The Respondent is Whois Defender Inc, with a stated address in Dorking, United Kingdom. The disputed domain name is not in use for the time being. The Panel however, on the basis of the proofs provided by the Complainant, finds it established that the disputed domain name’s website until recently was composed of sponsored links in relation to weight loss, offering products directly competing with the Complainant’s trademark. After the sending of a cease and desist letter from the Complainant to the Respondent, the website was deactivated.

The Respondent is in default and, accordingly, has not challenged the conclusions of the Complainant.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The disputed domain name is confusingly similar to a trademark or a service mark in which the Complainant has rights;

- The Respondent has no rights or legitimate interests in respect of the domain name;

- The domain name was registered and is being used in bad faith; and

- The domain name <weightlosswithxenicalinfo.info> should be transferred to the Complainant

B. Respondent

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

 

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed 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 disputed domain name; and

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

A. Identical or Confusingly Similar

The domain name at issue is <weightlosswithxenicalinfo.info>. The Complainant is the holder of the registered trademark XENICAL. The disputed domain name contains the Complainant’s trademark XENICAL in its entirety with the added suffix “weightlosswith” and “info” and the generic and functional top level domain name “.info”. When determining whether a domain name and a trademark are identical or confusingly similar, the gTLD shall be disregarded. The question is therefore if the addition of the suffixes “weightlosswith” and “info” renders the disputed domain name dissimilar from Complainants registered trademarks.

In previous decisions, Panelists have found that the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusingly similarity for the purpose of the Policy, despite the addition of other words to such marks (Oki Data Americas Inc v. the ASD Inc, WIPO Case No. D2001-0903 and CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273).

The Panel finds that the term XENICAL is the distinctive part of the disputed domain name, and the generic terms “weightlosswith” and “info” adds little to the overall impression of the disputed domain name. Internet users are likely to assume that the addition of the words “weightlosswith” and “info” to the trademark XENICAL signify a website associated with the Complainant, especially bearing in mind that the Complainant market weight loss medication under the trademark XENICAL. The Panel finds that the addition of the suffix “weightlosswith” and “info” does not diminish the similarity between the disputed domain name and the Complainant’s trademark.

The disputed domain name must therefore be considered confusingly similar to the trademark XENICAL. The Panel holds that the Complainant has established element (i) of the Policy’s Paragraph 4(a).

B. Rights or Legitimate Interests

The Complainant has asserted that the Complainant has exclusive rights for the trademark XENICAL and that no license, permission, authorization respectively consent to use XENICAL in the domain name has been granted to the Respondent. The Complainant has furthermore asserted that the Respondent previously used the disputed domain name for a commercial website with links to Competitors of the Complainant.

The Respondent has not filed a Response in accordance with the Rules, paragraph 5. In those circumstances, when the Respondent does not have an obvious connection with the disputed domain name, once the Complainant has made out an initial prima facie case that the Respondent has no rights or legitimate interests is enough to shift the burden of proof to the Respondent to demonstrate that such rights and legitimate interests exist.

The Respondent has not demonstrated or argued that he used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services or that any other right or legitimate interest exists. Registration of a domain name in itself does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.

In conclusion, the Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name and has no obvious connection to it. The Panel therefore holds that the Complainant has established element (ii) of the Policy’s paragraph 4(a).

C. Registered and Used in Bad Faith

Finally, the Panel has to consider the question of the disputed domain name has been registered and is being used in “bad faith.”

Paragraph 4(b) states four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name.

Paragraph 4(b)(iv) states that a circumstance indicating bad faith is using a domain to intentionally attempt to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location.

The Complainant has asserted that the Respondent’s registration and prior use of the disputed domain name is undoubtedly made in bad faith with regard to the Complainant’s well-established rights to the well-known trademark XENICAL.

The Panel has established that the trademark mark XENICAL is recognizable. Internet users searching for weight loss medication provided and marketed by the Complainant are likely to visit the Respondent’s website. It is, according to this Panel, very unlikely that the Respondent by sheer accident registered the disputed domain name, which is different from the Complainant’s trademark only by the addition of the suffixes “weightlosswith” and “info”. The mere fact that the suffix “weightlosswith”, chosen by the Respondent, describes the sought effect of the products marketed by the Complainant under the trademark XENICAL is, according to this Panel, an uncontestable proof of that the registration of the disputed domain name was made in bad faith.

The Panel finds, with reference to the above-mentioned and the proof provided by the Complainant, that the Respondent has been using the disputed domain name in bad faith, hence having intentionally attempted to attract, for commercial gain, Internet users to web-sites, by creating a likelihood of confusion with Complainant’s mark as to the source. The fact that the domain name has been deactivated does not cure the prior bad faith use of the disputed domain name.

In summary, the Respondent has not presented any reasons, evidence or arguments of a legitimate interest in using the disputed domain name. There are no obvious reasons for the Respondent to have a legitimately use of the domain name. As has been established above, the only use of the domain name seems to be to market and offer products in mere competition to the Complainant.

The Panel therefore concludes that the Complainant has proven that the Respondent was acting in bad faith pursuant to Paragraph 4(a)(iii) of the Policy.

 

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, <weightlosswithxenicalinfo.info> be transferred to the Complainant.

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Anders Janson
Sole Panelist

Dated: August 8, 2006