The Complainant is F. Hoffmann-La Roche AG, of Basel, Switzerland, represented internally.
The Respondent is R&R TARIK SUCU of Istanbul, Turkey.
The disputed domain name <xenicol.biz> is registered with Name.com LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2008. On October 17, 2008, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain name. On October 17, 2008, 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 for the disputed domain name. 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 October 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 19, 2008.
The Center appointed Mihaela Maravela as the sole panelist in this matter on November 27, 2008. 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.
The following facts have been alleged by the Complainant and not refuted by the Respondent.
The Complainant is together with its affiliated companies 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 protected as trademark in a multitude of countries worldwide. As an example reference is made to the International Registration Nos. 612908 & 699154. Priority date for the mark XENICAL is August 5, 1993.
The mark XENICAL designates an oral prescription weight loss medication used to help obese people lose weight and keep this weight off. For the mark XENICAL the Complainant holds registrations in over hundred countries on a world-wide basis.
The Complainant contends that the domain name is identical or confusingly similar to the trademark XENICAL because the domain name <xenicol.biz> is purposefully misspelled by substituting the letter “o” with the letter “a”. The Complainant also contends that its use and registration of the mark XENICAL predate the Respondent's registration of the disputed domain name.
The Complainant also contends that it has exclusive rights for XENICAL and no license/permission/authorization respectively consent was granted to the Respondent to use XENICAL in the disputed domain name. Also, the Complainant contends that the Respondent's only reason in registering and using the disputed domain name is to benefit from the reputation of the trademark XENICAL and illegitimately trade on its fame for commercial gain and profit and there is no reason why the Respondent should have any right or interest on such domain name.
The Complainant contends that the disputed domain name was registered in bad faith since at the time of the registration, i.e., on September 19, 2008, the defendant had, no doubt, knowledge of the Complainant's product/mark XENICAL. Also, it contends that the disputed domain name is also used in bad faith and that this is obvious since when viewing the Internet-website from the Respondent one realizes that 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 or the products or services posted on or linked to Respondent's website. The use of the disputed domain name seems to be advertising links to websites promoting and/or offering products and services, especially in the pharmaceutical field being the business of the Complainant. 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's fame.
The Respondent did not reply to the Complainant's contentions.
It is essential to UDRP that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules, establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond
(see, e.g., paragraph 2(a), Rules).
A copy of the Complaint was sent by the Center to the email address and a hard copy of the Complaint and attachments by courier to the mail address contained in the WhoIs database of registrar Name.com LLC, which were also confirmed by the concerned registrar. The hard copies could not be delivered due to the listed incomplete address. The e-mail message sent to <email@example.com> was not delivered due to connection refusal by <xenicol.biz>. No reaction was received from the email message delivered at firstname.lastname@example.org. The Center also forwarded notification to the Respondent via email at its <@gmail.com> address. The Panel therefore finds it more than likely that the Respondent has received the Complaint by email, but has chosen not to respond. See also S.p.A. Egidio Galbani v. Ms. Jenny Saputo, WIPO Case No. D2003-0953; Littleford Day Inc. v. NRM Equipment Company, WIPO Case No. D2004-0201; Virgin Enterprises Limited v. Steve Peter H S Kok and James Tan, WIPO Case No. DCC2002-0001.
Based on the methods employed to provide the Respondent with notice of the Complaint, and in the light of the Respondent's obligation under the registration agreement to maintain accurate and current contact information, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the Complaint, and that the failure of the Respondent to furnish a Response is not due to any omission by the Center. See also Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814.
Because the Respondent has defaulted in not providing a Response to the allegations of the Complainant, the Panel is directed to decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of the Complainant's undisputed representations (id., paragraph 15(a)).
“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.”
Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) 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
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Under the Policy, the Panel must find that: (a) the Complainant has rights in a trade mark or service mark; and (b) that the disputed domain name is identical or confusingly similar to that trade mark or service mark.
Here, the Complainant has demonstrated ownership of the registered trademark XENICAL by submitting the registration certificate No. 612 908 dated December 14, 1993 and the registration certificate No. 699 154 dated July 28, 1998, both of them being valid in several countries.
The question of identity or confusing similarity for the purpose of the Policy requires a comparison of the disputed domain name to the trademark rights which have been proved.
Here, the disputed domain name has two differences from the trademark of the Complainant XENICAL: the addition of the “.biz” suffix and the substitution of “a” for the “o” in the trademark.
The addition of the generic top-level domain (gTLD) “.biz” is without legal significance from the standpoint of comparing the disputed domain name to the mark XENICAL since use of a gTLD is required of domain name registrants, ".biz" is one of only several such gTLDs, and “.biz” does not serve to identify a specific enterprise as a source of goods or services. See also Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252; Williams-Sonoma, Inc. d/b/a Pottery Barn v. John Zuccarini d/b/a Country Walk, WIPO Case No. D2002-0582 concerning the inclusion of a gTLD.
The substitution of the “a” for the “o” is visually apparent only on close inspection. A visual comparison of the disputed domain name with the Complainant's trademark provides the strongest support for the assertion that it is confusingly similar to it. The trademark XENICAL is highly distinctive of the Complainant's business. A domain name which differs by one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive. See Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 (the only difference between the domain name and the trademark is the purposeful misspelling, created by the addition of an “h”); Encyclopedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 (closely misspelled domain name satisfies “confusingly similar” factor); United Feature Syndicate, Inc. v. Mr. John Zuccarini, WIPO Case No. D2000-1449 (the domain name differs from the mark merely by the addition of the letter “l” in the domain name, and such addition does not prevent the domain name from being considered virtually identical or confusingly similar to the Complainant's mark); Alta Vista Co. v. Saeid Yomtobian, WIPO Case No. D2000-0937 (domain names <altabista.com> and <altaista.com> are confusingly similar to trademark ALTA VISTA); Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362 (domain name <0xygen.com>, spelled with a zero rather than the letter “o”, is confusingly similar to trademark OXYGEN); The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492 (the disputed domain names comprise common misspellings of the term “Nasdaq”, the only difference being in each case the lack of only one letter; Quite clearly, the Respondent has sought to take advantage of Internet users typing an incorrect address when seeking to access the Complainant's website, a practice dubbed “typo squatting” and condemned in a number of WIPO UDRP panel decisions.
An Internet user or consumer viewing the disputed domain name is likely to confuse either of them with the term XENICAL. The Complainant's XENICAL trademark is well-known among internet users (See 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, 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).
In the absence of any argument to the contrary from the Respondent, this Panel concludes that, on balance, the domain name is confusingly similar to the Complainant's trademarks. See also Reuters Limited v Global Net 2000, Inc, WIPO Case No. D2000-0441.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
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.
The consensus view of WIPO panelists concerning the burden of establishing lack of rights or legitimate interests in respect of a 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 a 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.” (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.)
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. (See, e.g. Barbara Brennan Inc. v. Texas International Property Associates, WIPO Case No. D2008-0351; Sanford Winery Company v. Matt Geiser, WIPO Case No. D2008-0210). The Complainant alleges that the Respondent's only reason in registering and using the disputed domain name is to benefit from the reputation of the trademark XENICAL and illegitimately trade on its fame for commercial gain and profit.
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. The only evidence in this connection is that provided in the Complaint, and that which is self-evident from the website to which the disputed domain name refers.
“The registration of the domain name in connection with portal websites (otherwise referred to as ‘directory', ‘parking' or ‘pay-per-click (PPC) landing' sites) has been the subject of numerous decisions under the Policy. The incidence of these types of websites has greatly increased in recent years. Such websites typically offer a list of automatically generated links. Also typically, the search function on such websites provides results only for search terms for which particular advertisers have paid.” See State of Florida, Florida Department of Management Services v. Bent Pettersen, WIPO Case No. D2008-0039. “The reason these pages are structured in this way is that, each time an internet user clicks on a listed link, it creates an opportunity for the owner of the PPC landing page to receive a small amount (typically automated) payment from the advertiser in consideration for having delivered the Internet user to the advertiser's web page.” See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
“It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a respondent intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a complainant's rights and reputation in that term, then it may have a legitimate interest in the domain name (see paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the domain name in question was chosen because of the similarity to a name in which a complainant has an interest and in order to capitalize or otherwise take advantage of that similarity, then such registration and use does not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).” See Grundfos A/S v. Bridge Port Enterprises Limited, WIPO Case No. D2008-1263.
In this case, use of the Respondent's domain name is made in connection with a search engine displaying links to third parties' websites where it is possible to buy XENICAL goods, as well as competing goods (weight loss pills). That does not constitute a nominative fair use; rather, “it appears to constitute deceptive bait and switch advertising practices” as it was held by previous panels (See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). Also, according to previous panels, “Where the links on a portal website are based on the trademark value of the domain name, rather than any descriptive value, the trend in decisions under the Policy is to recognize that such practices generally do constitute abusive cyber squatting. (See, mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Ranbaxy Laboratories Ltd v. Jucco Holdings, WIPO Case No. D2007-1562, and the cases cited in those ones”. See also State of Florida, Florida Department of Management Services v. Bent Pettersen, WIPO Case No. D2008-0039.
The evidence in this case squarely supports a similar finding. The Respondent's registration and use of the disputed domain name appears to have been based on the trademark value of the Complainant's mark. A quick scan of the disputed domain name provides numerous links to third parties' websites where it is possible to buy XENICAL goods, as well as competing goods (weight loss pills). As such, the links relate to the trademark value of the Complainant's mark (i.e., its connection with weight loss pills). The related searches on the website include the XENICAL mark of the Complainant, therefore one can assume that the Respondent had knowledge of the mark of the Complainant at the time of registration.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name at issue.
To fulfill 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 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 landing page at which competitive services 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 to attract Internet users who are looking for the Complainant's XENICAL goods, appears to cause confusion with the Complainant's marks and websites, appear to disrupt the Complainant's business by diverting consumers away from the Complainant's websites, and does all of these things for commercial gain because the Respondent profits from the PPC revenue generated by these websites. See also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
The trademark XENICAL is quite well known in the field of pharmaceutical products, as weight loss medicine. (In this respect see 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, 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 more than a decade after the Complainant registered its trademarks.
The finding of the Panel is also evidenced by the fact that the use of the Respondent's domain name is made in connection with a search engine displaying links to third parties' websites where it is possible to buy XENICAL goods, as well as competing goods (weight loss pills). The Respondent could not avoid responsibility for the automatic generation of links at the subject website. (For examples of recent findings along these lines, in connection with a portal website, see Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; State of Florida, Florida Department of Management Services v. Bent Pettersen, WIPO Case No. D2008-0039; Owens Corning v. NA, WIPO Case No. D2007-1143).
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 pay-per-click landing page, the Panel finds that the Complainant has satisfied its burden of proving that Respondent registered and used the disputed domain name in bad faith.
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, <xenicol.biz> be transferred to the Complainant.
Dated: December 11, 1008