Case No. D2005-1281

1. The Parties

1.1 The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by Jйrфme Rhein, Switzerland.

1.2 The Respondent is DrugFaq Canada, General Delivery Service, Alex Glassey, Winnipeg, Manitoba, Canada.

2. The Domain Name and Registrar

2.1 The disputed domain name <xeloda-faq.com> is registered with Go Daddy Software.

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2005. On December 12, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On December 12, 2005, Go Daddy Software 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”).

3.2 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 December 20, 2005. In accordance with the Rules, Paragraph 5(a), the due date for Response was January 9, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2006.

3.3 The Center appointed Jay Simon as the sole Panelist in this matter on January 24, 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.

3.4 A hard copy of the Complaint was forwarded to the Panelist on January 24, 2006.

4. Factual Background

4.1 Complainant is a rather large healthcare company, active in pharmaceutical research and diagnostics as well as a manufacturer of medicines for a variety of ills. Complainant’s research and development activities have led to many pharmaceutical preparations including those for the treatment of various cancers. One such pharmaceutical preparation is sold under the trademark XELODA. The mark identifying this product bears International Registration No. 664710, with a priority date of December 4, 1996 (registration issued January 2, 1997).

4.2 Complainant has also registered the domain name <xeloda.com>.

4.3 The disputed domain name was registered February 5, 2004, subsequent to Complainant’s registration of its trademark and subsequent to Complainant’s registration of its domain name.

4.4 Respondent did not file a response in these proceedings and was notified of its default by the Center.

5. The Parties Contentions

A. Complainant

5.1 Complainant contends that it has rights in the mark XELODA by virtue of the International Registration of the mark in Complainant’s name. Complainant further contends that the disputed domain name is confusingly similar to Complainant’s mark because the disputed domain name incorporates the mark in its entirety.

5.2 Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name, and Complainant has neither licensed, permitted, authorized, nor consented to the use of the disputed domain name by Respondent.

5.3 Implicit in Complainant’s contention – by citing Pfizer Inc. v. jg a/k/a/ Josh Green, WIPO Case No. D2004-0784 – is that Respondent’s use of the disputed domain is neither fair use, non-commercial use, nor bona fide use (in respect of using the disputed domain name to direct Internet users to an on-line pharmacy.

5.4 Complainant contends that the disputed domain name was registered and is being used in bad faith. The registration of the disputed domain name occurred well after Complainant’s registration of its mark and registration of its domain name. Complainant thus contends that Respondent must have been aware of the existence of the mark when Respondent registered the disputed domain name.

5.5 Complainant further contends that the disputed domain name is being used in bad faith because of the diversion of internet users to an on-line, for profit pharmacy thereby creating a likelihood of confusion with Complainant’s sponsorship, affiliation, or endorsement of the on-line pharmacy site and products sold thereon. Complainant further contends that such confusion is exacerbated by the site’s use of Complainant’s logo and potentially harmful to Internet users who may be under the impression – mistakenly - that they are dealing with Complainant.

5.6 Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

5.7 Respondent has failed to respond to the Complaint and has not otherwise actively participated in these proceedings.

6. Discussion and Findings

6.1 The Policy as affected by the Rules and the Supplemental Rules provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (Complainant) proves each of the following elements:

(a) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(b) the registrant (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.

6.2 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element of Paragraph 6.1.

6.3 Respondent, having failed to respond in these proceedings, is in default, and in accordance with Paragraphs 14(b) of the Rules, “the panel shall draw such inferences…as it considers appropriate”.

A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)

6.4 Complainant has established rights in the trademark XELODA by virtue of its international trademark registration. The disputed domain differs from Complainant’s mark by the addition of “-faq.com”. Thus, the disputed domain name incorporates Complainant’s mark in its entirety adding nothing of significance that might serve to distinguish Complainant’s mark from the disputed domain name. Internet users are quite familiar with “faq” which stands for “frequently asked questions” and appears in virtually every commercial website. Of course the gTLD address “.com” has no relevance on distinguishing domain names from trademarks.

6.5 The use of a common, generic term such as “faq” does not change the overall nature of the mark, see Credit Suisse Group v. Kingdomdatanet Network, Inc., WIPO Case No. D2004-0846. This Panel also accepts the reasoning in EAuto, L.L.C v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 regarding incorporation of the entirety of a registered mark in a disputed domain name. This Panel finds the disputed domain name to be confusingly similar to Complainant’s registered trademark.

B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)

6.6 Paragraph 4(c) of the Policy lists three, non-exclusive methods for determining whether a respondent has rights or legitimate interests in a disputed domain.

6.7 In respect of demonstrating a respondent’s lack of rights or legitimate interests in a disputed domain name, the burden of proof rests with Complainant. However, where the Complainant having made the necessary assertions and providing evidence, it is incumbent upon the Respondent to come forward with evidence of its rights or legitimate interests in the disputed domain name, the Respondent being uniquely possessed of this evidence, if such evidence exists. Respondent has failed to present any evidence of its rights or legitimate interests in the disputed domain name, and such failure is tantamount to admitting the truth of Complainant’s assertions; see Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

6.8 Of the factors listed in Paragraph 4(c) of the Policy, Respondent having failed to respond to the Complaint, there is no evidence that Respondent was commonly known by the disputed domain name. Indeed, Respondent’s registration of the disputed domain name is well after Complainant’s registration of it trademark.

6.9 Respondent’s use of the disputed domain name is for the purpose of redirecting Internet users to an on-line pharmacy. This is neither fair use nor non-commercial use. Further, it is not a bona fide use of the disputed domain name. A respondent cannot obtain legitimate rights to a disputed domain name when that name is confusingly similar to a mark in which a complainant has rights and the respondent uses the name to direct internet users away from the complainant.

6.10 Respondent can have no legitimate rights in the disputed domain name, and the reasoning is carefully spelled out in WIPO Case No. D2004-0784 mentioned above and cases cited therein

C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy)

6.11 Paragraph 4(b) of the Policy sets out four, non-exclusive indicia of bad faith registration and use of a disputed domain name.

6.12 It is inconceivable to this Panel that Respondent was unaware of Complainant’s registered trademark; indeed, this Panel believes that Respondent’s registration of the disputed domain name was with full knowledge of Complainant’s mark – and for the specific purpose of redirecting internet users to an on-line pharmacy.

6.13 Thus by using a domain name confusingly similar to Complainant’s mark, Respondent has intentionally attempted to attract, for commercial gain, internet users to a website and creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of that website and products offered on the website.

6.14 Further, Respondent’s registration of the disputed domain name constitutes taking unfair advantage of the goodwill established by Complainant in the mark. And while Internet users may not confuse the on-line pharmacy with Complainant’s mark or website, there is a degree of initial interest confusion sufficient to further establish bad faith usage of the disputed domain name by Respondent. See Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. party Night Inc., WIPO Case No. D2002-1128.

7. Decision

7.1 For all the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, this Panel orders that the domain name <xeloda-faq.com> be transferred to Complainant.

Jay Simon
Sole Panelist

Dated: February 7, 2006