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and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Direct Response Marketing Ltd
Case No. D2006-1370
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internal representative.
Respondent is Direct Response Marketing Ltd, St Helier, Jersey, United Kingdom
of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <xenical-sales.com> is registered with Tucows,
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2006 by e-mail and on October 26, 2006 in hardcopy. On October 24, 2006, the Center transmitted by email to Tucows, Inc. a request for registrar verification in connection with the domain name at issue. On October 31, 2006, Tucows, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, 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 Respondent of the Complaint, and the proceedings commenced on November 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 5, 2006.
The Center appointed Manoel J. Pereira dos Santos
as the Sole Panelist in this matter on December 15, 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 trademark upon which the Complaint is based is XENICAL. According to the documentary evidence and contentions submitted, Complainant owns a number of trademark applications and registrations for the XENICAL trademark around the world, including the International Registrations Nos. 612,908 and 699,154 in connection with pharmaceutical, veterinary and hygienic products (Class 5) issued on March 3, 1994 and October 22, 1998, respectively. The priority date for the XENICAL trademark is August 5, 1993. Reference is made to Annex 3 of the Complaint.
According to the contentions submitted, the XENICAL trademark designates an oral prescription weight loss medication used to help obese people lose weight and keep the weight off. An independent research conducted by the Panel has indicated that Complainant owns the domain name <xenical.com>, which resolves to a website that contains information on the XENICAL prescription medication. According to the Whois Search Results obtained by the Panel, the domain name was created on April 17, 1997.
According to the existing documentary evidence, the
domain name <xenical-sales.com>, registered with Tucows, Inc., was created
on September 30, 1998.
5. Parties’ Contentions
Complainant argues that the disputed domain name is confusingly similar to the Complainant’s trademark because it incorporates the XENICAL trademark in its entirety and the combination of Complainant’s trademark with the term “sales” is likely to be understood by consumers as being a variation of the registered trademark. Complainant also states that Complainant’s use and registration of the XENICAL trademark predate Respondent’s registration of the disputed domain name.
Complainant further contends that no license, permission or authorization was granted for Respondent to use “xenical” in the disputed domain name. In addition, Complainant argues that Respondent is using the domain name to redirect Internet users to the website “www.lifestyledrugs.com” which is a pharmacy-on-line offering XENICAL as well as other drugs which directly compete with the XENICAL trademark.
Finally, Complainant contends that the domain name was registered in bad faith since at the time of its registration Respondent had knowledge of the XENICAL product and trademark. Complainant also argues that the domain name is being used in bad faith because Respondent is intentionally attempting (for commercial purpose) to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of the products or services posted or linked to Respondent’s website.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Effect of the Default
The consensus view is that respondent’s default does not automatically
result in a decision in favor of Complainant and that complainant must establish
each of the three elements required by paragraph 4(a) of the Policy (WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, para.
2.2). However, paragraph 14(b) of the Rules provides that, in the absence
of exceptional circumstances, a Panel shall draw such inferences as it considers
appropriate from a failure of a party to comply with a provision or requirement
of the Rules.
This Panel finds that there are no exceptional circumstances
for the failure of Respondent to submit a Response. As a result, the Panel infers
that Respondent does not deny the facts asserted and contentions made by Complainant
from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO
Case No. D2000-0441; LCIA (London Court of International Arbitration)
v. Wellsbuck Corporation, WIPO Case No. D2005-0084;
Ross-Simons, Inc. v. Domain Contact, WIPO
Case No. D2003-0994. Therefore, asserted facts that are not unreasonable
will be taken as true and Respondent will be subject to the inferences that
flow naturally from the information provided by Complainant. Reuters Limited
v. Global Net 2000, Inc., WIPO Case No. D2000-0441;
RX America, LLC. v. Matthew Smith, WIPO
Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
B. Identical or Confusingly Similar
Complainant relies on Koninklijke Philips Electronics N.V. v. NicNax,
WIPO Case No. D2001-1245, to argue that
the combination of Complainant’s XENICAL trademark with the term “sales”
is likely to be understood by consumers as being a variation of its trademark
and, when used as a domain name, it is likely to be understood as providing
a link to a website belonging to a sales department of Complainant or to a website
of an authorized sales agent of Complainant.
The Panel finds that Complainant’s contention is warranted. The trademark
XENICAL is distinctive, the word “sales” is generic, and in this
type of combination the trademark XENICAL stands out and leads the public to
think that the disputed domain name is somehow connected to the owner of the
registered trademark. Utensilerie Associate S.p.A. v. C & M, WIPO
Case No. D2003-0159 (finding that the term “shop” is non-distinctive
and may create an association with the registered trademark to which it is added).
As decided in Bayer Aktiengesellschaft v. Henrik Monssen, WIPO
Case No. D2003-0275, “[w]hen a respondent merely adds descriptive
terms to an otherwise distinctive and well known trademark, the domain name
is considered confusingly similar to the trademark”. The addition
of the suffix “.com” is non-distinctive because it is required for
the registration of the domain name and does not affect a finding that the disputed
domain name is confusingly similar to Complainant’s registered trademark.
RX America, LLC v. Mattew Smith, WIPO
Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO
Case No. D2006-0582.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
C. Rights or Legitimate Interests
The consensus view in the WIPO Panel decisions has
been that a complainant is required to make out an initial prima facie
case, respondent carrying the burden of demonstrating rights or legitimate interests
in the domain name. If respondent fails to do so, a complainant is deemed to
have satisfied paragraph 4(a)(ii) of the UDRP. (WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, para.
The Panel finds that Complainant has done enough to establish a prima facie case. In fact, Respondent is not commonly known by the disputed domain name, the principal element of the disputed domain name is Complainant’s trademark, and there is no evidence of any license, consent or other right by which Respondent would be entitled to register or use a domain name incorporating Complainant’s trademark XENICAL.
Complainant relies on previous WIPO Panel decisions
finding 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” (Pfizer Inc. v. jg
a/k/a Josh Green, WIPO Case No. D2004-0784)
and “it is not ‘legitimate’ within the meaning of Policy §4(c)(1)
to bait with a well known mark incorporated into a domain name and then offer
to sell competitive goods on an equal footing” (Hoffmann-La Roche Inc.
v. #1 Viagra Popecia Xenical & More Online Pharmacy, WIPO
Case No. D2003-0793).
The Panel concurs with such line of reasoning and
concludes that Respondent is making a non legitimate commercial use of the disputed
domain name that misleadingly diverts consumers, redirecting Internet users
to an online pharmacy offering “xenical” as well as other drugs,
which directly compete with Complainant’s trademark. See Lilly ICOS
LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing, WIPO
Case No. D2005-0313.
In light of the foregoing, the Panel finds that the requirement of Paragraph 4(a)(ii) of the Policy is met.
D. Registered and Used in Bad Faith
The Panel accepts Complainant’s contention that at the time of registration of the disputed domain name Respondent was probably aware that XENICAL corresponds to a prescription medication and, therefore, to a trademark given the fact that (i) XENICAL trademark was used and registered since at least 1993 and (ii) Complainant had registered the domain name <xenical.com> since April 17, 1997.
The Panel also agrees that Respondent is trading on the value established by
Complainant in its trademark to attract users to a website which includes Complainant’s
trademark. As decided in Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt
Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick,
Inc., and Yahoo Search, Inc. WIPO Case
No. D2000-0587, “clearly, Respondent is deriving economic benefit
from this practice, either by attracting users to Respondent’s website,
where goods and services are offered, or by the receipt of compensation from
the owners of other websites for delivering users to those sites. This constitutes
bad faith registration and use as defined by paragraph 4(b)(iv) of the Policy”.
Confusion is particularly insidious in the present case because XENICAL is a prescription medication. Consumers relying on any materials or advice accessible via <xenical-sales.com> believing it was approved by Complainant could be endangering their health. The Panel concludes that Respondent registered and is using the disputed domain name in bad faith.
Therefore, the Panel finds that the requirement of
paragraph 4(a)(iii) of the Policy is met.
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 <xenical-sales.com> be transferred to Complainant.
Manoel J. Pereira dos Santos
Dated: December 29, 2006