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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F. Hoffmann-La Roche AG v. R&R, Tarik Sucu

Case No. D2009-0211

1. The Parties

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

The Respondent is R&R, Tarik Sucu of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <herbalxenicol.com> is registered with Name.com LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 18, 2009. On February 19, 2009, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain name. On February 19, 2009, 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" or "UDRP"), 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 February 25, 2009. In accordance with the Rules, Paragraph 5(a), the due date for Response was March 17, 2009. The Respondent did not submit a response. Accordingly, the Center notified the Respondent`s default on March 18, 2009.

The Center appointed Alexander Duisberg as the sole panelist in this matter on March 27, 2009. 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 challenges the registration of the disputed domain name <herbalxenicol.com> by the Respondent.

It results from the undisputed submissions brought forward and evidenced by the Complainant that the Complainant together with its affiliated companies is one of the world`s leading research-focused healthcare groups in the field of pharmaceuticals and diagnostics, having global operations in more than hundred countries. The trademark XENICAL is registered by the Complainant in a multitude of countries worldwide. As an example the Complainant submits, amongst others, a copy of the certificate of the International Registration No. 612908 (word mark with priority date as of August 5, 1993). This trademark covers goods in class 5, including "pharmaceutical products". The Complainant uses its trade mark XENICAL to designate an oral prescription weight loss medication used to help obese people lose weight and keep this weight off.

The disputed domain name <herbalxenicol.com> was registered on December 3, 2008. The Complainant files copies of the website accessible under the disputed domain name <herbalxenicol.com>. According to the Complainant`s undisputed allegations, this website is used to promote and sell competitive products, i.e. weight-loss medication.

5. Parties` Contentions

A. Complainant

(a) The Complainant contends that the disputed domain name <herbalxenicol.com> is confusingly similar to the trademark XENICAL in which it holds rights. The only difference between the disputed domain name <herbalxenicol.com> and the registered trademark XENICAL is, firstly, the purposeful misspelling of XENICAL by replacing the letter "a" with the letter "o" and, secondly, the addition of the descriptive term "herbal". This does not sufficiently distinguish the domain name from the trademark XENICAL.

(b) The Complainant further contends that the Respondent has no rights or legitimate interests in the domain name. The Respondent rather uses the domain name <herbalxenicol.com> to promote competitive goods, i.e. a weight-loss medication. Therefore, the Respondent`s only reason in registering and using the contested domain name is to benefit from the reputation of the trademark XENICAL and to illegitimately exploit the fame of Complainant`s trademark for commercial gain and profit.

(c) The Complainant, lastly, contends that the domain name <herbalxenicol.com> was registered and is being used in bad faith. According to the Complainant it is not possible for the Respondent not to have been aware of the trademark XENICAL and the registration therefore must have occurred in bad faith. The domain name <herbalxenicol.com> is used to promote and/or to offer products in the pharmaceutical field, the core business area of the Complainant. According to the Complainant, the Respondent is intentionally attempting (for commercial purposes) to attract Internet users to its own website, by creating a likelihood of confusion with the Complainant`s trademark. The Respondent, by using the disputed domain name <herbalxenicol.com>, is intentionally misleading the consumers and confusing them so as to attract them to another website making them believe that the website behind this link is associated or recommended by the Complainant.

The Complainant requests the panel to issue a decision that the disputed domain name <herbalxenicol.com> be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Pursuant to the requirements of paragraph 4(a) of the Policy, the transfer of the domain name to the Complainant may only be granted if the Complainant demonstrates that each of the following three elements has been satisfied:

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

(ii) The 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

Even though the Center gave the Respondent sufficient notice under paragraph 2(a) of the Rules, the Respondent has not responded to the Complaint. Where the Respondent does not respond to the Complaint, the Panel shall decide the dispute based upon the complaint, Rules, paragraphs 5(e), 14(a). The Complaint is to be decided on the basis of the statements and documents submitted, Rules, paragraph 15(a). Under Rule paragraph 14(b), the Respondent`s failure to answer entitles the Panel to "draw such inferences therefrom as it considers appropriate".

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <herbalxenicol.com> is confusingly similar with the Complainant`s trademark XENICAL.

The Complainant has provided sufficient evidence confirming that it is the owner amongst others of a registered trademark consisting of the term XENICAL, e.g. International trademark No. 612908 (word mark with a Priority date of August 5, 1993), registered in class 5. The disputed domain name <herbalxenicol.com> diverges in two aspects from the trademark XENICAL: First, the element "xenicol" diverges from the trademark XENICAL by replacing the "a" in the trademark with an "o" in the contested domain name; second, the element "xenicol" is combined with the term "herbal". Based on the overall impression of the disputed domain name <herbalxenicol.com>, the Panel holds that even taking into account these differences the domain name is confusingly similar to the trademark XENICAL:

First, the Panel finds that the mere difference between the element "xenicol" and the trademark XENICAL in only one letter (i.e. by replacing the letter "a" with the letter "o") is not capable to exclude confusing similarity between the disputed domain name taken as a whole and the trademark (see F. Hoffmann-La Roche AG v. R&R TARIK SUCU, WIPO Case No. D2008-1571). This slight difference between the opposed terms is in particular not even likely to be perceived by consumers because of the high degree of phonetic similarity between "xenical" and "xenicol". In this context it has also to be taken into consideration that the Complainant`s trademark XENICAL is well-known among Internet users (see F. Hoffmann-La Roche AG v. R&R TARIK SUCU, WIPO Case No. D2008-1571; F. Hoffmann-La Roche AG v. Mihey, WIPO Case No. D2007-1395; F. Hoffmann-La Roche AG v. Bob, WIPO Case No. D2006-0751; Hoffmann-La Roche Inc. v. UrProxy Domains, WIPO Case No. D2007-0456; F. Hoffmann-La Roche AG v. Internet Climate, WIPO Case No. D2006-1205), and this factor contributes to the likelihood of confusion (see also VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446).

Furthermore, the disputed domain name combines the term "xenicol" with the further element "herbal". The Complainant correctly points out that "herbal" will be understood as a descriptive indication in the sense that the product "xenicol" is based on plants or plant extracts. Therefore, this purely descriptive term "herbal" is also not capable to exclude confusing similarity between the domain name and the trademark XENICAL (see Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Endware Kft, WIPO Case No. D2008-1100).

In the light of the above, the Panel is satisfied that the disputed domain name <herbalxenicol.com> taken as a whole is confusingly similar with the trademark XENICAL and, therefore, that this first condition of paragraph 4(a)(i) of the Policy has been met.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a Respondent`s rights or legitimate interests in a disputed domain name:

(i) before any notice to it of the dispute, the Respondent`s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

WIPO UDRP Panelists agree that while the overall burden of proof rests with the Complainant, 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 a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the 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 Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.).

The Panel finds that Complainant`s allegations and evidence make out a prima facie case that the Respondent lacks rights or legitimate interests. Because the Respondent did not file a Response, there is no evidence showing the contrary. Therefore the Panel concludes that the Respondent has no legitimate rights in the domain name:

With respect to paragraph 4(c)(i) of the Policy, it results from the copies of the website accessible under the challenged domain name filed by the Complainant that the Respondent uses the domain name to offer competitive pharmaceutical products, i.e. a weight-loss preparation. In doing so, the Respondent relates to the reputation of the Complainant`s trademark XENICAL in connection with weight loss pills and illegitimately trade on this reputation for his own commercial gain and profit. The Panel holds that this is not bona fide or otherwise sufficient to create legitimate interests in the domain name. It is not "legitimate" within the meaning of paragraph 4(c)(i) of the Policy to bait with a well known trademark incorporated into a domain name and then offer to sell competitive goods (see Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy WIPO Case No. D2003-0793).

By not submitting a Response, the Respondent has failed to invoke any circumstances, which could demonstrate any right or legitimate interest in the domain name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name at issue.

C. Registered and Used in Bad Faith

To fulfil the third requirement, the Complainant must prove that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a number of circumstances that shall, in particular but without limitation, be evidence of a registration and use of a domain name in bad faith:

(i) Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant who is the owner of the trademark, or to a competitor of the Complainant, for a valuable consideration in excess of the Respondents documented out-of-pocket costs directly related to the domain name.

(ii) Circumstances indicating that the Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct.

(iii) Circumstances indicating that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.

(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 the said website location or of a product or service on that website location.

In this case because the disputed domain name resolves to a website on which competitive products are offered, the Complainant has established that the Respondent`s use of this domain name is in bad faith. The disputed domain name appears designed and is likely to attract Internet users who are looking for the XENICAL pharmaceuticals, appears to cause and is likely to create confusion with the Complainant`s marks and websites, appears and is likely to disrupt the Complainant`s business by diverting consumers away from the Complainant`s websites, and clearly does all of this for commercial gain by selling competitive products, i.e. a weight-loss medication (see F. Hoffmann-La Roche AG v. R&R TARIK SUCU, WIPO Case No. D2008-1571).

The trademark XENICAL is well known in the field of pharmaceutical products, as a weight loss medicine. (In this respect see F. Hoffmann-La Roche AG v. R&R TARIK SUCU, WIPO Case No. D2008-1571; F. Hoffmann-La Roche AG v. Mihey, WIPO Case No. D2007-1395; F. Hoffmann-La Roche AG v. Bob, WIPO Case No. D2006-0751; Hoffmann-La Roche Inc. v. UrProxy Domains, WIPO Case No. D2007-0456; F. Hoffmann-La Roche AG v. Internet Climate, WIPO Case No. D2006-1205). Therefore, the Respondent is most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain name. Also the Respondent registered the disputed domain name approximately fifteen years after the Complainant registered its trademarks.

For all the reasons, the Panel concludes that the Respondent must have been aware of the Complainant`s trademarks at the time it registered the disputed domain name. Accordingly, and because the Respondent has also used the disputed domain name in bad faith to attract Internet users to its website where he sells competitive products, i.e. a weight-loss medication, the Panel finds that the Complainant has satisfied its burden of proving that Respondent registered and used the disputed domain name 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 name <herbalxenicol.com> be transferred to the Complainant.

Alexander Duisberg
Sole Panelist

Dated: April 9, 2009