Hoffman-La Roche Inc. v. UrProxy Domains
Claim Number: FA0805001186034
Complainant is Hoffman-La Roche Inc. (“Complainant”), represented by Elizabeth
Atkins, of Lathrop & Gage L.C.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <order-xenical-online.org> and <cheapest-xenical.cc>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On May
9, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 29, 2008
by which Respondent could file a response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent's registration as technical, administrative and billing contacts,
and to postmaster@order-xenical-online.org and
postmaster@cheapest-xenical.cc by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <order-xenical-online.org> and <cheapest-xenical.cc> domain names are confusingly similar to Complainant’s XENICAL mark.
2. Respondent does not have any rights or legitimate interests in the <order-xenical-online.org> and <cheapest-xenical.cc> domain names.
3. Respondent registered and used the <order-xenical-online.org> and <cheapest-xenical.cc> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant manufactures pharmaceutical and diagnostic
products, including weight reduction products marketed under the XENICAL mark,
which Complainant registered with the United States Patent and Trademark Office
(“USPTO”) on
Respondent registered the <order-xenical-online.org>
and <cheapest-xenical.cc>
domain names on
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., FA 95095 (Nat. Arb. Forum July 31, 2000) (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, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has established rights in
the XENICAL mark for purposes of Policy ¶ 4(a)(i)
through its trademark registration with the USPTO. See
Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
Complainant contends that
Respondent’s <order-xenical-online.org> domain name is confusingly similar to its XENICAL
mark. The <order-xenical-online.org> domain name differs from Complainant’s mark in four ways:
(1) the generic term “order” has been added to the beginning of the mark; (2) the
generic term “online” has been added to the end of the mark; (3) a hyphen has
been added between the term “order” and the mark, as well as between the mark
and the term “online;” and (4) the generic top-level domain (“gTLD”) “.org” has
been added. Adding generic terms and
hyphens does not sufficiently distinguish a domain name from the mark it
incorporates for the purposes of Policy ¶ 4(a)(i). The
addition of a gTLD also does not reduce the likelihood of confusion between the
domain name and the mark, because every domain name must contain a gTLD. Therefore, the Panel finds that these changes
do not minimize or eliminate the resulting likelihood of confusion, and so the <order-xenical-online.org> domain name is not sufficiently distinguished from
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
Arthur Guinness Son & Co. (
Complainant contends that
Respondent’s <cheapest-xenical.cc> domain name is confusingly similar to its XENICAL
mark. The <cheapest-xenical.cc> domain name differs from Complainant’s mark in three ways:
(1) the term “cheapest” has been added to the beginning of the mark; (2) a
hyphen has been added between the term “cheapest” and the mark; and (3) the country
code top-level domain “.cc” has been added.
As noted above, adding generic terms and hyphens does not sufficiently
distinguish a domain name from the mark it incorporates for the purposes of
Policy ¶ 4(a)(i). The addition of a top-level domain also does
not reduce the likelihood of confusion between the domain name and the mark,
because every domain name must contain a top-level domain. Therefore, the Panel finds that these changes
do not minimize or eliminate the resulting likelihood of confusion, and so the <cheapest-xenical.cc> domain name is not sufficiently distinguished from
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19,
2000) (finding that because the domain name <quixtar-sign-up.com>
incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the
domain name is confusingly similar); see also CBS Broad., Inc. v.
LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that putting a
hyphen between words of the complainant’s mark is identical to and confusingly
similar to the complainant’s mark); see also World Wrestling Fed'n Entm't,
Inc. v. Rapuano,
DTV2001-0010 (WIPO May 23, 2001) (“The
addition of the country code top level domain (ccTLD) designation <.tv>
does not serve to distinguish [the disputed domain] names from the
complainant’s marks since ‘.tv’ is a common Internet address identifier that is
not specifically associated with Respondent.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and
legitimate interests in the <order-xenical-online.org>
and
<cheapest-xenical.cc> domain names.
Under Policy ¶ 4(a)(ii), after the complainant
makes a prima facie case against the
respondent, the respondent then has the burden of showing evidence that it does
have rights and legitimate interests in the disputed domain name. Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Complainant contends that Respondent is not commonly known
by the disputed
domain names
nor has it ever been the owner or licensee of the XENICAL
mark. The WHOIS record for the disputed
domain name lists Respondent as “UrProxy Domains.” This evidence, along with the fact that
Respondent has failed to show any evidence contrary to Complainant’s
contentions, compels the Panel to find that Respondent is not commonly known as
either
<order-xenical-online.org> or <cheapest-xenical.cc>
pursuant to Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb.
Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate
interests in domain names because it is not commonly known by the complainant’s
marks and the respondent has not used the domain names in connection with a bona
fide offering of goods and services or for a legitimate noncommercial or
fair use); see
also Charles Jourdan Holding
AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding no rights or legitimate interests where (1) the respondent is not a
licensee of the complainant; (2) the complainant’s prior rights in the domain
name precede the respondent’s registration; (3) the respondent is not commonly
known by the domain name in question).
Respondent maintains the
same website at both disputed domain names which
offers the weight
loss products of both Complainant and Complainant’s competitors.
The Panel finds that this use of the disputed domain names is neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iii). See Pitney
Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights
or legitimate interests in the <pitneybowe.com> domain name where the
respondent purports to resell original Pitney Bowes equipment on its website,
as well as goods of other competitors of the complainant); see also Chanel, Inc. v. Cologne Zone, D2000-1809
(WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s
perfume, as well as other brands of perfume, is not bona fide use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed
domain names to disrupt Complainant’s business by diverting Internet customers
from Complainant’s website to Respondent’s website that resolves from the
disputed domain names, through the confusion caused by the similarity between
the XENICAL mark and the disputed domain names. The
Panel finds that Respondent’s use of the disputed domain names disrupts
Complainant’s business, and is evidence of registration and use in bad faith
pursuant to Policy ¶ 4(b)(iii).
Complainant also contends that Respondent is gaining
commercially through this diversion, through the sales of goods that Respondent
is offering – both Complainant’s goods and those of Complainant’s competitors. The Panel finds that this is an intentional
use of the disputed domain name for commercial gain through a likelihood of
confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of registration and use in
bad faith. See Nokia Corp. v. Private,
D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant
to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered
similar products as those sold under the complainant’s famous mark); see also Nintendo of Am., Inc. v. Pokemonplanet.net,
D2001-1020 (WIPO Sept. 25, 2001) (“By using the [<pokemonplanet.net>]
Domain Names [sic] to sell Complainant’s [POKEMON]
products, Respondents have shown bad faith in use of the Domain Name.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <order-xenical-online.org> and <cheapest-xenical.cc> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: June 18, 2008
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