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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Vikram Bindal

Case No. D2007-1045

 

1. The Parties

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

The Respondent is Vikram Bindal, of New Delhi, India.

2. The Domain Name and Registrar

The disputed domain name <medxenical.org> is registered with EstDomains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2007. On July 20, 2007, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain name at issue. On July 23, 2007 and 25, 2007, EstDomains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint together with the amendment to 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 July 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 22, 2007.

The Center appointed Alessandra Ferreri as the sole panelist in this matter on August 29, 2007. 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 following uncontested facts are found by the Panel and established as true.

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 having global operations in more than 100 countries.

The Complainant owns the trademark “XENICAL” registered in several countries as proved by the International Registrations Nos. 612908 and 699154 with priority date of August 5, 1993.

The mark XENICAL designates an oral prescription weight loss medication used to help obese people loose weight and keep this weight off.

The Respondent has registered the contested domain name on December 30, 2006 and the website is active, and redirects the Internet users looking for and/or entering the trademark of the Complainant to a web site which acts as a search engine providing links to other websites promoting and offering products and services of third parties.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

- the contested domain name incorporates the Complainant’s trademark in its entirety and therefore it is confusingly similar to the Complainant’s mark

- the Complainant has exclusive right for XENICAL mark and has not granted to the Respondent any license, permission or authorization to use XENICAL in the domain name

- the Respondent has registered the domain name in bath faith, in particular because its website is a search engine redirecting to sponsored links and the only reason in registering and using the contested domain name is to benefit from the reputation of the trademark XENICAL and illegitimately trade on its fame for commercial gain and profit.

B. Respondent

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

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain name at issue incorporates in its entirety Complainant’s trademark XENICAL; the only differences are the mere adjunction of the term “med” and the suffix “.org”.

The addition of the generic term – that gives association to Complainant’s business activity and products is not enough to prevent a confusing similarity between the domain name and the incorporated trademark.

There are several WIPO UDRP decisions which state that in determining similarity between a trademark and a domain name the addition of a generic/descriptive term which merely indicates the business area does not eliminate the likelihood of confusion. The Panel finds that the adding of the term “med”, which relates to the field of activity of the Complainant, is likely to enhance the confusion and to lead the customers to believe that the disputed domain name is effectively linked to or affiliated with or connected to the Complainant (see America Online Inc. v. Yetech Communication Inc., WIPO Case No. D2001-0055, GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195, Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709, Novo Nordisk A/S v. Mr. Jonathan Valicenti, WIPO Case No. D2005-0563 and Volkswagen AG v. Emir Ulu, WIPO Case No. D2005-0987).

With regards to the suffix .org (which indicates that the domain name is registered in the .org gTLD), as it was established in many previous decisions (see A.P. Mшller v.Web Society, WIPO Case No. D2000-0135, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, Arab Bank for Investment And Foreign Trade v. Mr. Kenn Wagenheim / 07@usa.net, WIPO Case No. D2000-1400, Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447 and Crйdit Industrile et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457) does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; indeed the suffix is a necessary component of the domain name and does not give any distinctiveness.

There is no doubt that the domain name <medxenical.org> is confusingly similar to the trademark of the Complainant. Therefore, the Panel finds that Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

The Panel finds that as a result of the default Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by the Complainant.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the domain name, such as:

(i) use or preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute, or

(ii) being commonly known by the domain name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

(iii) making legitimate non-commercial 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.

There is no evidence in the record that the Respondent has any rights or legitimate interests in the domain name.

The Complainant states that there is (and there was) no relationship between the Complainant or any of its subsidiaries and the Respondent. The Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademark, or to apply for or to use the domain name incorporating said mark.

According to the evidence submitted by the Complainant, the Respondent is not making a legitimate non-commercial or fair use of the domain name in dispute. In fact, the domain name, incorporating the Complainant’s trademark in its entirety, is used to provide sponsored links which promote and/or offer products and services of third parties in pharmaceutical field like the Complainant (see Sigikid H. Scharrer GmbH & Co. KG, MyBearMarketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo, WIPO Case No. D2004-0990).

Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interest in the domain name and therefore the Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

Based on the evidence presented by the Complainant, the Panel finds that the domain name was registered and is being used in bad faith.

The Panel finds that the Respondent most likely knew about the Complainant’s rights at the time of the registration of the domain name <medxenical.org>. And indeed, the Respondent’s awareness of Complainant’s activity and rights is indicated by the fact that the Respondent registered a domain name confusingly similar to the Complainant’s trademark that resolve to websites that offer links to other sites where pharmaceutical products and services are promoted and offered by third parties which are Complainant’s competitors.

There is no information as to the business activity of the Respondent that would justify the registration and the use of the contested domain name; nor is there evidence of any rights or legitimate interest in said domain name by the Respondent.

As the Respondent has no rights or interests in the domain name, in line with other prior decisions (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Ltd., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395), the Panel believes that, in the absence of any right or legitimate interest and in the absence of any contrary evidence from the Respondent, the Respondent’s registration of a domain name confusingly similar to the Complainant’s known trademark was in bad faith.

Moreover, the domain name is used by the Respondent to redirect Internet users to websites which promote and/or offer products and services provided by third parties that are Complainant’s competitors and act in the same pharmaceutical field, making said users believe that the linked web sites are associated to or recommended by the Complainant and this use can not be considered as a bona fide use of the domain name in issue (see Ginafranco Ferrй Spa v. Unasi Inc., WIPO Case No. D2005-0622; L’Orйal, Biotherm, Lancome Parfumes et Beautй & Cie v. Unasi Inc., WIPO Case No. D2005-0623).

Indeed, in the Panel’s opinion the Respondent, by such use, intentionally attempted to attract Internet users, expecting to reach the website corresponding to the Complainant’s product and to obtain information about Complainant’s activity, to another variety of pharmaceutical goods and services by creating a likelihood of confusion with the Complainant’s trademark and business.

In light of all the above circumstances, the Panel is satisfied that the third element is met and that the domain name <medxenical.org> was registered and is 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 name <medxenical.org> be transferred to the Complainant.

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Alessandra Ferreri
Sole Panelist

Dated: September 10, 2007