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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. Digi Real Estate Foundation

Case No. D2007-0946

 

1. The Parties

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

The Respondent is Digi Real Estate Foundation, Panama Panama.

2. The Domain Name and Registrar

The disputed domain name <buyxenical.com> is registered with Threadfactory.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on June 28, 2007. On June 29, 2007, the Center transmitted by email to Threadfactory.com, Inc. a request for registrar verification in connection with the domain name at issue. On July 16 and 18, 2007, Threadfactory.com, 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 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 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2007.

The Center appointed Angelica Lodigiani as the sole panelist in this matter on August 24, 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 Complainant, along 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’s mark XENICAL is registered in a multitude of countries worldwide. Among these are international registrations Nos. 612908 and 699154 (Annex 3), claiming a priority date of August 5, 1993.

XENICAL is used to designate an oral prescription weight loss medication helping obese people to lose weight and keep this weight off.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the domain name <buyxenical.com> is confusingly similar to the Complainant’s trademark XENICAL because:

- The disputed domain name is confusingly similar to the Complainant’s mark since it incorporates this mark entirely. Moreover, the descriptive word “buy” does not sufficiently distinguish the domain name from Complainant’s mark: it may suggest that Respondent’s website is a location where a consumer may buy XENICAL products;

- According to Lilly ICOS LLC v. John Hopking / Neo net Ltd, WIPO Case No. D2005-0694), “generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”; and

- The Complainant’s use and registration of the mark XENICAL predates the date of registration of the disputed domain name.

The Complainant further contends that the Respondent has no rights nor legitimate interest in the <buyxenical.com> domain name because:

- The Complainant has exclusive rights over the XENICAL trademark, as mentioned above and no licence/permission/authorization respectively was ever granted to use XENICAL in the disputed domain name. Therefore the domain name in question clearly alludes to the Complainant;

- The Respondent is using the domain name <buyxenical.com> to redirect Internet users to the website “http://www.siteboxparking.com/?dp=www.buyxenical.com&aid=40118”, which is a search engine composed of sponsored links (Annex 5). According to 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”;

- Respondent’s 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.

Due to the above, there is no reason why the Respondent should have any right or interest in the <buyxenical.com> domain name.

Finally, the Complainant contends that the domain name <buyxenical.com> was registered and is being used in bad faith because:

- At the time of the registration, i.e., on March 30, 2007, the Respondent had knowledge of the Complainant’s product/mark XENICAL;

- By using the disputed domain name as a forwarding address to redirect Internet users to a search engine including links to third parties’ websites, 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 the Respondent’s website. According to the above-mentioned WIPO Case No. D2002-1085, “the Respondent’s commercial use of the Domain Name to increase Internet traffic at a search engine (..) 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”. According to Axel Springer AG v. autobild.com, WIPO Case No. D2005-0554), “redirection to a commercial directory is a form of use which (..) occasionally allows the domain name owner to make some money”;

- By using the disputed domain name, the Respondent is intentionally misleading consumers and confusing them so as to attract them to other websites making them believe that the websites behind those links are associated with or recommended by the Complainant. As a result, the Respondent may generate unjustified revenues for each click-through by on-line consumers of the sponsored links. The Respondent is therefore illegitimately capitalizing on the XENICAL trademark fame.

B. Respondent

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

 

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, the Complainant must prove each of the following elements in order to succeed in a UDRP proceeding: (i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the domain name <buyxenical.com> is confusingly similar to the Complainant’s trademark XENICAL. Only the second level domain name “buyxenical” is to be taken into account in the comparison with the Complainant’s trademark. The top level domain name “.com” does not bear any relevance as it is a compulsory element of each domain name and does not have any source-indicating significance Hoffmann-La Roche Inc. v. UrProxy Domains, WIPO Case No. D2007-0456).

The disputed domain name reproduces the Complainant’s trademark entirely. The addition of the generic term “buy” before the trademark XENICAL does not eliminate, but rather increases, the likelihood of confusion between the trademark and the domain name. By seeing the domain name, internet users would believe that the relevant website is designed to sell XENICAL products to consumers (for a similar case see Google, Inc. v. Xtraplus Corp, WIPO Case No. D2001-0125.

Therefore the Panel concludes that the first condition under paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Proving a negative fact is always difficult. The Policy, under paragraph 4(c), indicates a series of circumstances, which, if proved, demonstrate that the Respondent has rights or legitimate interests in the challenged domain name. The Respondent did not file any Response in this case. Accordingly, the Panel will consider whether the Complainant’s arguments are sufficient to show the Respondent’s lack of rights and legitimate interests in the disputed domain name.

According to the Complainant, the Respondent is not a Complainant’s licensee, nor has the Complainant ever authorized the Respondent to use the trademark XENICAL in the disputed domain name.

As it appears from Annex 5 to the Complaint, the Respondent is using the domain name at issue to redirect users to a website consisting of a search engine composed of sponsored links. Within the powers granted to the Panel under the Policy, the Panel has ascertained that the disputed domain name still lead to the same website mentioned in the Complaint. Some of the links contained in the website advertise products in competition with XENICAL, or at least referring to the same field of application (weight loss). Other links make reference to many products, including XENICAL.

According to 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”.

In the light of the foregoing and absent any Respondent’s contrary argument, the Panel concludes that the Respondent’s use of the disputed domain name to access a search engine containing several sponsored links referring to weight loss products and services originating from different entities, is not legitimate nor fair. On the contrary, said use is clearly made with the intent to misleadingly divert consumers and/or to tarnish the trademark at issue.

For all the reasons mentioned above, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name <buyxenical.com>.

In consideration of the foregoing, the Panel is satisfied that the condition under paragraph 4(a) (ii) of the Policy is met.

C. Registered and Used in Bad Faith

The last condition that the Policy requires is provided under paragraph 4(a) (iii): i.e., that the domain name <buyxenical.com> has been registered and is being used in bad faith.

In the Panel’s view, the Complainant satisfactorily proved that the domain name <buyxenical.com> was registered and is being used in bad faith.

As far as registration in bad faith is concerned, absent any Respondent’s contrary statement, the Panel takes the view that the Respondent knew or must have known the trademark XENICAL and the Complainant’s activity. The Respondent’s use of the disputed domain name in connection with a weight loss website advertising competitive products through sponsored links and containing links making reference to the XENICAL product, is clear evidence of the Respondent’s knowledge of the Complainant’s field of activity in relation to the XENICAL trademark.

Therefore, the Panel takes the view that the Complainant registered the domain name <buyxenical.com> in bad faith.

As far as use in bad faith is concerned, the Respondent is using <buyxenical.com> to lead to a website containing sponsored links relating to the weight loss field, including websites sponsoring competing products. By doing so, and in the absence of any Respondent’s contrary statement, the Panel believes that the Respondent primarily registered the domain name for intentionally attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.

Due to the above considerations, the Panel concludes that the domain name <buyxenical.com> is being used in bad faith.

Therefore, the Panel believes that the Complainant satisfactorily proved also the third condition under paragraph 4(a) (iii) of the Policy.

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 <buyxenical.com> be transferred to the Complainant.

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Angelica Lodigiani
Sole Panelist

Dated: September 7, 2007