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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
F. Hoffmann-La Roche AG v. Softech Ltd., DNS Administrator (barry2)
Case No. D2007-1706
1. The Parties
The Complainant is F. Hoffmann-La Roche AG, Basel of Switzerland, internally represented.
The Respondent is Softech Ltd., DNS Administrator (barry2), Cayman Islands Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <xsenikal.com> is registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2007. On November 22, 2007, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the domain name at issue. On November 26, 2007, Name.com LLC 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 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 November 29, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2007.
The Center appointed Linda Chang as the sole panelist in this matter on January 28, 2008. 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.
The date for rendering the decision was postponed until February 18, 2008, in accordance with paragraph 10 (c) of the Rules.
4. Factual Background
The Complainant is the trademark owner of XENICAL (the trademark) in over hundred countries on a world-wide basis. The trademark is a product brand for weight loss medication used to help obese people lose weight and keep this weight off. The trademark was first registered with a priority date as early as 1993. The Respondent registered <xsenikal.com> (the domain name) in 2007 and used the domain name by directing it to a search engine with sponsored links.
5. Parties’ Contentions
The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant contends that it is, together with its affiliated companies, 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. It also contends that its trademark XENICAL is protected as trademark in a multitude of countries worldwide. As an example the Complainant provided copies of registration certificates of the International Registration Nos. 612908 and 699154 for XENICAL, with a priority date of August 5, 1993.
The Complainant states that the trademark designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off.
The Complainant contends that the domain name is phonetically identical to the trademark with the only difference lying in the purposeful misspellings of XENICAL by adding the letter “s” and substituting the letter “c” with the letter “k”.
The Complainant quoted the decision in Wachovia Corporation v. Peter Carrington,
WIPO Case No. D2002-0775 - “This conduct, commonly referred to as ‘typo squatting’, creates a virtually identical and/or confusingly similar mark to the Complainant’s trademark under paragraph 4(a)(i) of the Policy” to support its view that the disputed domain name is identical or confusingly similar to the trademark of the Complainant.
The Respondent has no rights or legitimate interests in respect of the domain name
The Complainant contends that it has exclusive rights for XENICAL and no licence/permission/authorization respectively consent was granted to use XENICAL in the domain name.
The Complainant states that the disputed domain name automatically redirects Internet users to a website: http://www.cnomy.com/?dn=xsenikal.com&pid=1PO816841&prvtof=8b2VkUqfXDeDywRCuwgkbbMDich8Co%2BNObYEAg9ZOUl52RE2XELqQk1kwTteJmkMzq0pA7gbGazeHQ%3D%3D, which is a search engine with sponsored links.
The Complainant quoted the decision in Fox News Network, LLC v. Warren Reid,
WIPO Case No. D2002-1085, “using the Domain Name to mislead users by diverting them to a search engine (..) does not appear to be use in connection with a bona fide offering of goods or services and therefore legitimate”, to support its contention that the Respondent does not have any right or interest in such domain name.
The domain name was registered and has been used in bad faith
The Complainant contends that the domain name was registered in bad faith since at the time of the registration i.e. on September 6, 2007, the Respondent had, no doubt, knowledge of the Complainant’s product/mark XENICAL.
The Complainant also contends that the domain name is being used in bad faith. The Complainant states that 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 Respondent’s website or of the products or services posted on or linked to Respondent’s website.
The Complainant quoted the decision in Fox News Network, LLC v. Warren Reid,
WIPO Case No. D2002-1085, “the Respondent’s commercial use of the Domain Name to increase Internet traffic at a search engine (http://www.cnomy.com) is evidence of bad faith under Policy, para. 4(b)(iv) and the use of the Domain Name is likely to result in consumer confusion as to the Complainant’s supposed affiliation with the search engine and its operator/s”, to support its contention that the Respondent, by using the disputed Domain Name, is intentionally misleading the consumers and confusing them so as to attract them to other websites making them believe that the websites behind those links are associated or recommended by Complainant.
The Complainant further states that the Respondent may generate unjustified revenues for each click-through by on-line consumers of the sponsored links and is therefore illegitimately capitalizing on the XENICAL trademark fame.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for it to obtain the requested remedy:
(A) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(B) the Respondent has no rights or legitimate interests in respect of the domain name; and
(C) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner of the trademark XENICAL in a multitude of countries. Copies of the International Registration Certificates No. 699154 and No. 612908 for the trademark XENICAL (Trademark) was provided on record. Compared with the trademark, the domain name includes an only added a letter ‘s’ and substitutes the letter ‘c’ with the letter ‘k’. The changes however are not sufficient for the domain name to be distinctive from the trademark. It is obvious that the generic part ‘.com’ is unable to make the domain name distinctive either.
The Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made a prima facie showing that the Respondent is not known by the subject domain name nor is authorized to use the Trademark in any manner. Although the Respondent default does not necessarily mean it will automatically lose the case, the information provided to the Panel indeed does not lead to any of the situations as provided under paragraph 4(c) of the Policy that would indicate the Respondent’s possession of legitimate rights or interests in the domain name.
The Panel is satisfied that the Respondent does not have rights or legitimate interests in the domain name. The Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) provides that bad faith shall be found in registration and use of the domain name in the following circumstances: (iv) that the domain name holder, by using the domain name, 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 its website or location or of a product or service on its website or location.
The Complainant has provided the following link to indicate the Respondent’s domain name was used to redirect Internet users to another website: http://www.cnomy.com/?dn=xsenikal.com&pid=1PO816841&prvtof=8b2VkUqfXDeDywRCuwgkbbMDich8Co%2BNObYEAg9ZOUl52RE2XELqQk1kwTteJmkMzq0pA7gbGazeHQ%3D%3D, which is a search engine with sponsored links. Clicking on one of the links leads Internet users to a website with contents related to weight losses.
Use of the domain name in the above manner is likely to cause Internet users looking for the information of the Complainant’s XENICAL products to be directed to other websites through the sponsored links and further more to associate the contents of these websites with those of the Complainant in terms of the source, sponsorship, affiliation or endorsement. By such use, the Respondent may be able to directly or indirectly generate revenues for each click made by on-line consumers of the sponsored links and is therefore unfairly capitalizing on the reputation of the trademark XENICAL.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii) of the Policy.
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 <xsenikal.com> be transferred to the Complainant.
Dated: February 18, 2008