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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. NIG cc/ Thorsten Hьbner

Case No. D2007-1446

1. The Parties

The Complainant is F. Hoffmann-La Roche AG, Basel, Switzerland, represented by an internal authorized representative.

The Respondent is NIG cc/ Thorsten Hьbner, Windhoek, Namibia.

2. The Domain Names and Registrar

The disputed domain names

<fedex-xenical.biz>
<fedex-xenical.com>
<fedex-xenical.info>
<fedex-xenical.net>

are registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2007. On October 3, 2007, the Center transmitted by email to Wild West Domains, Inc., a request for registrar verification in connection with the domain names at issue. On October 3, 2007, Wild West Domains, 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 October 5, 2007. Upon request by the Complainant, on October 10, 2007, the Center suspended the administrative proceedings. However, no agreement was reached between the parties and the proceedings were re-instituted on October 19, 2007, and the Respondent due date was set on November 5, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2007.

The Center appointed Sandra J. Franklin as the sole panelist in this matter on November 13, 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

Complainant is a large pharmaceutical company with operations in more than 100 countries. Complainant holds many International Trademark Registrations for its mark XENICAL, with a priority date of August 15, 1993. Respondent registered the four disputed domain names on September 4, 2007.

5. Parties’ Contentions

A. Complainant makes the following assertions:

(1) Respondent’s <fedex-xenical.biz>, <fedex-xenical.com>, <fedex-xenical.info>, and <fedex-xenical.net> domain names are confusingly similar to Complainant’s XENICAL mark.

(2) Respondent does not have any rights or legitimate interests in the <fedex-xenical.biz>, <fedex-xenical.com>, <fedex-xenical.info>, and <fedex-xenical.net> domain names.

(3) Respondent registered and used the <fedex-xenical.biz>, <fedex-xenical.com>, <fedex-xenical.info>, and <fedex-xenical.net> domain names in bad faith.

B. Respondent failed to submit a Response in this proceeding.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “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”.

In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., NAF Case No. 95095 (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has established its rights in the XENICAL mark through formal registration, in this case with the World Intellectual Property Organization, pursuant to Policy paragraph 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., NAF Case No. 221171 (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant’s rights in the mark”).

Respondent’s <fedex-xenical.biz>, <fedex-xenical.com>, <fedex-xenical.info>, and <fedex-xenical.net> domain names contain Complainant’s XENICAL mark in its entirety and merely add the descriptive term “fedex”, which refers to a widely known brand and delivery method used by businesses. The disputed domain names also include various generic top-level domains (“gTLD’s”), such as “.com”. It is well-established that the inclusion of a gTLD is irrelevant to a Policy paragraph 4(a)(i) analysis and that the inclusion of terms that describe the business conducted under a complainant’s mark do not distinguish a disputed domain name. Consequently, the Panel finds that Respondent’s <fedex-xenical.biz>, <fedex-xenical.com>, <fedex-xenical.info>, and <fedex-xenical.net> domain names are confusingly similar to Complainant’s XENICAL mark pursuant to Policy paragraph 4(a)(i). See Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Space Imaging LLC v. Brownell, eResplution Case No. 0298 (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).

The Panel finds that Complainant has satisfied Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Under Policy paragraph 4(a)(ii), Complainant must establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. See VeriSign Inc. v. VeneSign C.A., WIPO Case No. D2000-0303 (“Respondent’s default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name”). Complainant states that the Respondent is using the disputed domain names for on-line pharmacies which offer Complainant’s XENICAL product and various other drugs. The Panel finds that Complainant has established a prima facie case and that the burden is thus shifted to Respondent to show that it does have rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).

Respondent has failed to submit a Response to the Complaint. Therefore, the Panel presumes that Respondent has no rights or legitimate interests in the disputed domain names, but will still examine the record in consideration of the factors listed under Policy paragraph 4(c). See G.D. Searle v. Martin Mktg., NAF Case No. 118277 (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy paragraph 4(a)(ii)”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., WIPO Case No. D2000-1221 (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Nowhere in Respondent’s WHOIS information or elsewhere in the record does it indicate that Respondent is or ever was commonly known by the disputed domain names. Respondent has not sought, nor has Complainant granted, permission for Respondent to use the XENICAL mark in any way. As a result, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy paragraph 4(c)(ii). See Tercent Inc. v. Lee Yi, NAF Case No. 139720 (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy paragraph 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020 (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

The disputed domain names each contain Complainant’s mark in its entirety and the websites that resolve therefrom contain references to the products sold under the XENICAL mark and links to third-party websites that offer both Complainant’s products and products in competition with those offered under Complainant’s mark. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii). See eBay Inc. v. Hong, WIPO Case No. D2000-1633 (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also TM Acquisition Corp. v. Sign Guards, NAF Case No.132439 (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, NAF Case No. 95407 (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”).

Specifically, it has been held that on-line pharmacies do not hold a legitimate interest in domain names which are similar to a pharmaceutical manufacturer’s mark. See Pfizer In.c v. jg a/k/a Josh Green, WIPO Case No. D2003-0793.

The Panel concludes that Complainant has satisfied Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The websites that resolve from the <fedex-xenical.biz>, <fedex-xenical.com>, <fedex-xenical.info>, and <fedex-xenical.net> domain names contain references to the products sold under the XENICAL mark and links to third-party websites that offer both Complainant’s products and products in competition with those offered under Complainant’s mark. The Panel finds this to be evidence of Respondent’s bad faith registration and use pursuant to Policy paragraph 4(b)(iii). See Puckett, Individually v. Miller, WIPO Case No. D2000-0297 (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy paragraph 4(b)(iii)); see also S. Exposure v. S. Exposure, Inc., NAF Case No. 94864 (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).

The Panel presumes that these links to competitors of Complainant financially benefit Respondent through the use of click-through fees. The Panel finds this to be additional evidence of bad faith pursuant to Policy paragraph 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, NAF Case No. 201976 (“Respondent’s prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy paragraph 4(b)(iv) because the domain name provided links to Complainant’s competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Kmart v. Khan, NAF Case No. 127708 (finding that if the respondent profits from its diversionary use of the complainant’s mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy paragraph 4(b)(iv)).

The Panel concludes that Complainant has satisfied Policy paragraph 4(a)(iii).

D. Remedy

The Panel notes that its decision in this case is without prejudice to any rights that may be asserted by third parties, in particular rights holder in the FEDEX trademark. See e.g. NVT Birmingham, LLC d/b/a CBS 42 WIAT-TV v. ZJ, WIPO Case No. D2007-1079.

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 <fedex-xenical.biz>, <fedex-xenical.com>, <fedex-xenical.info>, and <fedex-xenical.net> domain names be transferred to the Complainant.

Sandra J. Franklin
Sole Panelist

Dated: November 27, 2007