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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Holy & Blessed Corp. Holy & Blessed Corp.

Case No. D2006-1013

 

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 Holy & Blessed Corp. Holy & Blessed Corp. of Panama City, Panama.

 

2. The Domain Names and Registrar

The disputed domain names are <pharmaxenical.com> and <xenicalmedication.com>, both registered with Tucows Inc. (“Tucows”) of Toronto, Canada.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2006. On August 10, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain names at issue. Also on August 10, 2006, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of both domains and providing the contact details for the administrative, billing, and technical contacts for each. 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 August 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2006.

The Center appointed Seth M. Reiss as the sole panelist in this matter on September 22, 2006. 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 Panel is required to forward its decision to the Center, in accordance with paragraph 15 of the Rules, by October 6, 2006.

The Panel has examined the communications of the Center and the Complainant, and the Complaint. The Panel confirms that each complies with the formal requirements of the Policy, the Rules and the Center’s Supplemental Rules, and specifically, that the Center complied with paragraph 2(a) of the Rules in communicating the Complaint and applicable response deadline to the Respondent, and with paragraph 2(b) of the Rules in notifying the Respondent of its default and appointment of the Panel. The Panel further confirms that the Administrative Panel was properly constituted.

The language of the proceeding is English.

 

4. Factual Background

The Complainant is one of the world’s leading research-focused healthcare groups in the fields of pharmaceuticals and diagnostics having, together with its affiliates, operations in more than 100 countries around the world.

Complainant claims ownership of the mark XENICAL to designate an oral prescription weight loss medication used to help obese people lose weight and keep this weight off. Complainant’s XENICAL mark is registered in over a hundred countries worldwide. Among its registrations are International Registration No. 612908, for the word mark XENICAL, and International Registration No. 699154, for the composite mark XENICAL & device, both registered in class 5 for pharmaceutical, veterinary and hygienic products. International Registration No. 612908 claims priority from August 5, 1993.

Evidence appended to the Complaint illustrates the disputed domain names resolving into commercial websites incorporating the banner “Brought to You By the USA Med Group.” These websites offer a list of “popular medications,” XENICAL together with other drugs many of which are manufactured by Complainant’s competitors, and a list of “health categories” (e.g. “weight loss”, “anxiety”, “men’s health”…) posed to the Internet user as hyperlinks. Upon clicking on one of these links, Internet users are redirected to an on-line pharmacy located at: “www.usamedgroup.com”. The linked to USA Med Group website offers medications and advertises a commission based affiliates program.

Available Whois databases show that the records for both domains <xenicalmedication.com> and <phramxenical.com> were created on July 21, 2006. Both domain names are identically registered with identical administrative and technical contacts and owner address information.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that Respondent’s domain names are confusingly similar to the Complainant’s mark in that the domain names incorporate the XENICAL mark in its entirety and because the addition of the words “medication” and “pharma” do not sufficiently distinguish the domain names from Complainant’s XENICAL mark.

Complainant next contends that Respondent has no rights or legitimate interests in respect of the domain names because Complainant’s rights in the XENICAL mark are exclusive, Respondent is without license, permission or authorization from Complainant to use the XENICAL mark, and Respondent uses Complainant’s mark in its domain name to point to commercial websites offering Complainant’s and its competitor’s pharmaceutical products.

Complainant lastly contends that the disputed domain names were registered and are being used by Respondent in bad faith since Respondent must have known of Complainant’s XENICAL mark on July 21, 2006, when the disputed domain names were registered, and because Respondent is using the names to point to commercial on-line pharmacies.

By way of remedy, Complainant requests that the contested domain names be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions or otherwise submit any response to the Complaint.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

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

1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

2) that the respondent has no rights or legitimate interests in respect of the domain name; and

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

A. Identical or Confusingly Similar

The Panel finds that the domain names at issue are confusingly similar to a trademark in which the Complainant has rights. Trademark rights are established by national registrations, Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503. Complainant has more than amply demonstrated trademark rights through numerous national registrations in the context of its XENICAL mark. The addition of a generic or descriptive term to an established mark fails to distinguish the resulting domain name from the mark or dispel the resulting confusion. Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja, WIPO Case No. D2000-1409.

The panel in F. Hoffmann-La Roche AG v. interesting dont, WIPO Case No. D2006-0115, considering the disputed domain <xenicalmed.com>, quoted the holding from Novo Nordisk A/S v. Mr. Jonathan Valicenti, WIPO Case No. D2005-0563, that “the addition of the term ‘pharma’, which relates to the field of activity in which the Complainant operates, as well as to services the Complainant offers to its customers, is likely to enhance the confusion and to lead the consumers to believe that the disputed domain name is linked to, affiliated with, or at least endorsed by the Complainant.” Similarly in Sanofi-Aventis v. MC EU, WIPO Case No. D2006-0403, the panel opined that “the mere addition of common terms such as ‘medication’, to a mark, does not change the overall impression of the designations as being domain names connected to the mark.”

In the circumstance of these disputed domain names, the addition of the terms “pharma” and “medication” to Complainant’s widely recognized XENICAL mark either fails to dispel the resulting confusion or may function to enhance that confusion by directing the Internet users’ attention to the nature of the products for which the XENICAL mark is used and known.

B. Rights or Legitimate Interests

The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:

While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the 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, Section 2.1.

In the present case, Complainant submits that it has never licensed, granted permission, or authorized Respondent to use its XENICAL mark. This establishes a prima facie case and shifts the burden to Respondent to demonstrate some right or legitimate interest in the domain names.

As explained by the panel in Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784, “several cases have found 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.”

Absent Complainant’s authorization, it is difficult to conceive how Respondent might demonstrate some right or legitimate interest in the domain names, whether in a manner enumerated in paragraph 4(c) of the Policy or otherwise. Respondent’s use of the disputed domains to point to on-line pharmacies selling competitive products would seem to eliminate any hope Respondent might have had of demonstrating a right or legitimate interest in the domains. In any event Respondent, having submitted no response, has made no such showing. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain names at issue.

C. Registered and Used in Bad Faith

The Panel finds that paragraphs 4(b)(i), 4(b)(ii), and 4(b)(iii) examples of bad faith registration and use under the Policy are not implicated by the facts of the present case, but that the example set forth in paragraph 4(b)(iv) of the Policy is not only implicated, but well demonstrated, by the evidence appended to the Complaint.

The disputed domains were registered almost 13 years after Complainant first acquired rights in the XENICAL trademark and long after the XENICAL mark had become well known globally as an indicator of source and origin for Complainant’s weight loss medication.

In F. Hoffmann-La Roche AG v. United Pharmacy Limited, WIPO Case No. D2006-0063, the panel observed that it “is hard to believe that the Respondent could have selected this domain name without knowing of the Complainant’s product ‘Xenical’ since the word has no independent meaning in any language. At best, the Respondent must have suspected that the Complainant would have registered trademark rights in the name.”

Considering Respondent’s use of the disputed domain names, this Panel has no doubt that Respondent was well aware of the XENICAL mark and Complainant’s rights therein when Respondent registered the disputed domains on July 21, 2006.

This Panel is equally persuaded that the disputed domains are being intentionally used by Respondent “to attract, for commercial gain, Internet users . . . by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement. . . with a product . . . on [Respondent’s] website. . .” Policy, paragraph 4(b)(iv). Respondent is doubtless reaping the benefits of USA Med Group’s affiliate program by earning commissions for web traffic funneled through Respondent’s “www.pharmaxenical.com” and “www.xenicalmedication.com” websites to the “www.usamedgroup.com” website. Respondent attracts its web traffic by virtue of its unauthorized use of Complainant’s XENICAL brand. See Pfizer Inc. v. jg a/k/a Josh Green, supra, finding “bad faith [] exemplified by” the fact that “Respondent is using the domain names as a forwarding address to a for-profit on-line pharmacy.”

In addition, by directing Internet users to an on-line pharmacy which sells pharmaceuticals to consumers without physician oversight, Respondent’s use of the disputed domain names raise public health issues which underscore Complainant’s concerns regarding false and misleading endorsement, sponsorship and affiliation. Merrell Pharmaceuticals Inc. and Aventis Pharma SA. v. Lana Carter, WIPO Case No. D2004-1041.

This Panel is therefore persuaded, based upon the record in this case, that Respondent both registered and is using the disputed domain names 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 names <pharmaxenical.com> and <xenicalmedication.com> be transferred to the Complainant.

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Seth M. Reiss
Sole Panelist

Dated: October 3, 2006