national arbitration forum

 

DECISION

 

Hoffman-La Roche Inc. v. UrProxy Domains

Claim Number: FA0805001186034

 

PARTIES

Complainant is Hoffman-La Roche Inc. (“Complainant”), represented by Elizabeth Atkins, of Lathrop & Gage L.C., New York, USA.  Respondent is UrProxy Domains (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <order-xenical-online.org> and <cheapest-xenical.cc>, registered with eNom, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 5, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 5, 2008.

 

On May 6, 2008, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <order-xenical-online.org> and <cheapest-xenical.cc> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names.  eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

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 June 3, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

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.

 

FINDINGS

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 July 18, 1995 (Reg. No. 1,906,281).  Complainant has sold pharmaceutical products under the XENICAL mark in the United States since March 1999, with sales since then in the hundreds of millions of dollars. 

 

Respondent registered the <order-xenical-online.org> and <cheapest-xenical.cc> domain names on December 19, 2003.  The disputed domain names resolve to a website where Internet visitors can purchase Complainant’s XENICAL product, as well as Complainant’s competitors’ weight reduction products. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

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 Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).

 

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. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).

 

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.

 

Rights or Legitimate Interests

 

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 Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. 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 ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”).

 

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.

 

Registration and Use in Bad Faith

 

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).  See Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of 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.

 

DECISION

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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