Hoffmann-La Roche Inc. v. Howard Lee
Claim Number: FA1009001345078
PARTIES
Complainant is Hoffmann-La Roche Inc. (“Complainant”), represented by Elizabeth Atkins, of Lathrop & Gage LLP, New York, USA. Respondent is Howard Lee (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <buycheapxenical.us>, <discountxenical.us>, <purchasexenical.us>, <xenicalcost.us>, <xenicalinformation.us>, and <xenicalsales.us>, registered with DYNADOT LLC.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 3, 2010; the Forum received a hard copy of the Complaint on September 7, 2010.
On September 7, 2010, DYNADOT LLC confirmed by e-mail to the Forum that the <buycheapxenical.us>, <discountxenical.us>, <purchasexenical.us>, <xenicalcost.us>, <xenicalinformation.us>, and <xenicalsales.us> domain names are registered with DYNADOT LLC and that Respondent is the current registrant of the names. DYNADOT LLC has verified that Respondent is bound by the DYNADOT LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 9, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 29, 2010 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 15, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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
(a) The Complainant, together with its affiliated companies is one of the leaders in research and development of pharmaceutical and diagnostic products in the world. The XENICAL® mark of Roche is protected as a trademark for a pharmaceutical preparation for weight reduction and long-term management of weight in a multitude of countries worldwide. For example, XENICAL is registered to Complainant in the United States Patent and Trademark Office ("U.S.P.T.O.") under Reg. No. 1,906,281, having a registration date of July 18, 1995, and a first use date of March 18, 1994. Complainant also owns the registration XENICAL ORLISTAT 120 MG CAPSULES and Design registered on January 19, 2010 under Reg. No. 3,739,382. Additionally, the parent of Roche, F. Hoffmann-La Roche AG, also owns International registration for XENICAL Logo, Reg. No. 699,154.
(b) The mark XENICAL designates a pharmaceutical preparation, namely, a pharmaceutical product indicated for weight reduction and long-term management of weight. Complainant's mark XENICAL was extensively promoted for many years, and Complainant has used its pharmaceutical preparation bearing the XENICAL mark since March, 1994 in the United States. Sales of the XENICAL pharmaceutical preparation are in the hundreds of millions of dollars in the United States alone, with the result that the mark has become well-known.
(c) As a result of such sales and advertising, and its fair dealings with customers, the XENICAL mark of Roche has become well-known in the United States and throughout the world.
(d) F. Hoffmann-La Roche AG, the Swiss parent of Complainant, owns and has registered the domain name "xenical.com," through which customers of Roche obtain information as to the XENICAL weight loss product manufactured and sold by Roche.
A. The Domain Names Are Confusingly Similar To A Trademark Or Service Mark In Which The Complainant Has Rights
The domain names at issue contain the entire XENICAL trademark of Roche. In light of the registered mark XENICAL and the domain name "xenical.com," Respondent's registration and use of the domain names at issue creates a strong likelihood of confusion as to source, sponsorship, association or endorsement of the Respondent's web sites associated with the disputed domain names by Complainant. After learning of Respondent's unauthorized registration of domain names incorporating the mark XENICAL, on June 25, 2010, Roche, through its counsel, Elizabeth Atkins of the law firm Lathrop & Gage LLP, sent a letter by Certified Mail Return Receipt Requested and by e-mail to the Respondent’s address indicated in the WHOIS record for the disputed domain name. In the June 25 communication, Roche’s counsel advised Respondent that the registration of the disputed domain names infringed Roche’s trademark rights and requested that Respondent transfer the disputed domain names to Roche. The letter sent by Certified Mail to Respondent, was returned to Complainant's attorneys as “Unclaimed”. However, the letter transmitted by e-mail was, by all indications, received by Respondent.
“Numerous [ICANN] Panel decisions have established that the addition of words, letters or numbers to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. …Generally, a user of a mark ‘may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998). Thus, the descriptive language added here, namely, “buy”, “cheap”, “discount”, “purchase”, “cost”, “information” and “sales” does not prevent the likelihood of confusion in this case. See America Online, Inc. v. Anson Chan, Case No. D2001-0004 citing Sporty's Farm L.LLP v. Sportsman's Market, Inc., 202 F. 3d 489, 497-98 (2d. Cir. 2000) (available on the Internet at http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0004.html).
Thus, Respondent's domain names are identical or confusingly similar to Complainant's XENICAL trademark within the meaning of the Policy, paragraph 4(a)(i).
B. Respondent Has No Rights Or Legitimate Interests In The Domain Names And Has Not Been Commonly Known By The Domain Names
Respondent has no rights or legitimate interests in the disputed domain names. XENICAL is not a word and has no valid use other than in connection with Complainant's trademark. Complainant has not authorized the Respondent to use its trademark XENICAL or to incorporate the trademark into any domain names. Furthermore, Complainant has never granted Respondent a license to use the XENICAL mark. In fact, Respondent's use of the disputed domain names indicates that the names are being used because of the goodwill created by Complainant in the XENICAL trademark. Based upon Respondent's web sites, it is clear that neither Respondent nor its web sites have been commonly known by the disputed domain names pursuant to the Policy, paragraph 4(c)(ii).
Respondent's uses of the disputed domain names are purely disreputable. First, such use by Respondent of “Xenical” in its domain names on Respondent’s web sites are without license or permission from Roche. Second, Respondent’s web sites purport to offer for sale the prescription XENICAL medication (while depicting what appears to be the back of a Roche XENICAL pill), but in fact sell a generic form of XENICAL, which sales in (to) the U.S.A. are illegal, as there is no FDA-approved generic form of prescription level XENICAL, as well as competitors’ weight loss products and other pharmaceutical products of third party competitors without any permission whatsoever from Roche, the trademark’s owner. Such activities are infringing, and likely to confuse purchasers, all to the damage of Complainant, the trademark owner.
By Respondent’s use and registration of the disputed domain names, it seeks to capitalize on the reputation associated with Complainant's XENICAL trademark, and to divert Internet users seeking Complainant's web site located at www.xenical.com to web sites wholly unrelated, as is Respondent to Roche. The operator of the unrelated web sites have no affiliation or connection whatsoever with Complainant and such uses of Complainant's mark XENICAL, for example using the well-known trademark XENICAL and apparently the XENICAL pill when, in fact, a generic third party medication is being provided, are clear indications of bad faith on the part of the Respondent. Further, instead of the recommended doctor visit to confirm the patient’s weight, the sites of Respondent provide an optional questionnaire. Thus either weight/height radio information which may be untrue or no weight/height information at all is being supplied, which creates a risk for customers who are not sufficiently overweight to take XENICAL, which would be determined at a doctor visit. Thus there is potential harm to the public in providing this product in the manner Respondent is doing so.
The Panel in Justerini & Brooks Limited v. Juan Colmenar Rueda as Registrant "Colmenar", aka "jokolm"/"JCRco.", Case No. D2000-1308 (available on the internet at http://arbiter.wipo.int/domains/decision/html/2000/d2000-1308.html) ("Justerini"), in evaluating Respondent's legitimate rights and interests in the domain name "justeriniandbrooks.com" stated that:
[on] the evidence…given the notoriety and distinctiveness of the JUSTERINI & BROOKS trademark, it is not one which another trader would legitimately choose unless the trader sought to:
- create an impression of association with the Complainant;
- create an impression of association with JUSTERINI & BROOKS products;
- attract business from the Complainant;
- misleadingly divert members of the public; and/or
- damage the reputation and business of the complainant.
In the present case, the same conclusion is inescapable. Respondent's appropriation and use of Complainant's well-known trademark XENICAL in domain names are a clear attempt to create and benefit from consumer confusion regarding the association between Respondent's unlicensed activities and Complainant's bona fide business. As such, it is clear that Respondent has no rights or legitimate interests in the domain names. See the Policy, paragraph 4 (a)(ii).
C. Respondent Has Not Used The Domain Names For A
Bona Fide Offering Of Goods Or Services
The Respondent is not using the domain names in dispute in connection with a bona fide offering of goods or services. Respondent is using the disputed domain names to divert Internet users seeking Complainant's web site associated with the domain name “xenical.com”, or the XENICAL weight loss product, to its web sites unrelated to Complainant which use the Complainant's well-known trademark XENICAL and what appears to be the back of a XENICAL pill without license or authorization of any kind to sell competitive weight loss products of third parties without license or permission of any kind.
Such use by Respondent and incorporation of Complainant's well-known trademark XENICAL in the disputed domain names is evidence of Respondent's intent to trade upon the reputation of Complainant's XENICAL trademark and, as Respondent’s use intentionally trades on the fame of Complainant’s trademark, it cannot constitute a bona fide offering of goods and services. Hoffmann-La Roche Inc. v. Alisia Uzun, WIPO Case No. D2008-1138 (available on the Internet at http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-1138.html), citing Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com," Case No. D2000-0847 (available on the internet at http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0847.html).
“There is no bona fide offering of goods or services by Respondent. Respondent’s commercial activities undertaken through use of the domain names is neither fair use nor bona fide under the policy. The unauthorized appropriation of another’s trademark in domain names and the commercial use of the corresponding websites cannot confer rights or legitimate interests upon Respondent. See, e.g. America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (“it would be unconscionable to find … a bona fide offering of services in a respondent’s operation of (its) web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”), cited in Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629”. Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814.
Therefore, Respondent's use of the domain names cannot be considered bona fide. See, e.g., Alta Vista Company v. James A. Maggs, Claim Number FA0008000095545 (October 24, 2000) (available on the Internet at http://www.arbforum.com/domains/decisions/95545.htm) (This Arbitrator cannot and does not find that Respondent's offering of goods and/or services … were ‘bona fide.’ The American Heritage Dictionary of the English Language (Third Edition, 1992) defines ‘bona fide’ as ‘made or carried out in good faith,’ ‘authentic’ or ‘genuine.’ This Arbitrator cannot find that the use by Respondent of marks identical and/or confusingly similar to valid, Federally-registered marks of another to constitute offering of services ‘in good faith’ and certainly not ‘authentic’ or ‘genuine,’ especially since Respondent has no authorization from Complainant. Thus, U.D.R.P. 4(c)(i) is of no avail to Respondent on this record. Respondent has no rights or legitimate interest in respect of the domain name.")
Respondent's unauthorized use of the disputed domain names through which to solicit sales of Complainant’s XENICAL product in web sites which advertise for sale the prescription drug XENICAL, but offer only weight loss products of competitors, including a “generic” XENICAL product, which is illegal, as there is no FDA-approved prescription level generic form of XENICAL legally for sale in(to) the USA, as well as other pharmaceutical products of third party competitors to an identical customer group, without license or permission, is not bona fide. Respondent has no legitimate interest in the disputed domain names containing Complainant's well-known mark XENICAL, is in no way connected with Complainant, and is trading on Complainant's well-known mark XENICAL for commercial gain, all to the confusion of the purchasing public. None of such activities represent a bona fide offering of goods and services under the Policy, paragraph 4(c)(i) or a legitimate noncommercial or fair use under the Policy, paragraph 4(c)(iii). See G.D. Searle & Co. v. Entertainment Hosting Services, Inc., Claim Number: FA110783 (June 3, 2002) (available on the Internet at http://arbiter.wipo.int/domains/decisions/110783.htm) (finding Respondent's use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from Complainant does not constitute bona fide offering of goods or services under the Policy, paragraph 4(c)(i)).
D. Respondent Is Not Making A Legitimate Noncommercial Or Fair Use Of The Domain Names Without Intent For Commercial Gain
There is no evidence that Respondent is making a legitimate non-commercial or fair use of the disputed domain names without intent for commercial gain. See the Policy, paragraph 4(c)(iii). Clearly, Respondent is trading on Complainant's goodwill and is using the disputed domain names to offer and sell an illegal generic form of the prescription XENICAL medication, as well as weight loss products of competitors, and other pharmaceutical products of third party competitors to the public via domain names containing Complainant’s famous XENICAL trademark without permission, a license or authorization from the trademark owner in a manner confusing to the purchasing public, leading the public to believe a sponsorship or relationship with Complainant may exist, as discussed above. Such activity does not represent a bona fide offering of goods or services under the Policy, paragraph 4(c)(i) or a legitimate noncommercial or fair use under the Policy, paragraph 4(c)(iii). See G.D. Searle & Co. v. Mahoney, Claim Number: FA112559 (June 12, 2002) (available on the Internet at http://arbforum.com/domains/decisions/112559.htm) (finding Respondent's use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from Complainant does not constitute a bona fide offering of goods or services under the Policy, paragraph 4(c)(i)). Respondent has no legitimate interest in the disputed domain names containing Complainant's well-known mark XENICAL, is in no way connected with Complainant, and is trading, on the basis of such name, on Complainant's well-known mark XENICAL for commercial gain while providing third party weight loss products, all to the detriment of the rightful trademark owner, the Complainant and confusion of the purchasing public.
E. Respondent Registered And Is Using The Domain Names In Bad Faith
The Respondent's bad faith in registering and using the domain names is demonstrated by numerous facts. Specifically, Complainant submits the following evidence:
Respondent's true purpose in registering the disputed domain names which incorporate Complainant's mark XENICAL is to capitalize on the reputation of Complainant's XENICAL mark by diverting Internet users seeking Complainant's web site to Respondent's own web sites on which customers may purchase weight loss products of competitors, (advertised under the brand and mark XENICAL, in what appears to be a XENICAL pill) and other pharmaceutical products of third party competitors. The bad faith of the Registrant is clearly evident from the fact that:
(a) “xenical” is not a word.
(b) Complainant's mark XENICAL is an invented and coined mark of Complainant that has an extremely strong worldwide reputation.
(c) There exists no relationship between Respondent and Complainant, and Complainant has not given Respondent permission to use its well-known mark XENICAL in domain names, or to use it in any manner on Respondent’s web sites.
(d) Under these circumstances, the only reasonable conclusion is that Respondent was aware of the XENICAL trademark and used it in domain names, which leads the public to believe that Respondent has a relationship with Complainant, when in fact it has no license or permission from Complainant to make such use of XENICAL whatsoever.
(e) By using the disputed domain names through which to sell products competitive to the XENICAL product, advertising and offering same under the XENICAL name without permission or license of any kind, Respondent has intentionally attempted to attract for financial gain Internet users to Respondent's web sites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's web sites or the goods sold on or through Respondent's web sites. See State Fair of Texas v. Granbury.com, Claim Number: FA95288 (September 12, 2000) (available on the Internet at http://www.arbforum.com/domains/decisions/95288.htm) (finding bad faith where Respondent registered the domain name "bigtex.net" to infringe on Complainant's good will and attract Internet users to Respondent's website).
(f) Respondent's web sites have no connection with, and specifically no legitimate business connection with Complainant or its XENICAL pharmaceutical preparation. Further, Respondent’s sites offer “Generic Xenical” (a third party competitive orlistat medication) under the XENICAL mark, which misleads and confuses customers as to what product is actually being sold. Further, such sales are illegal in the U.S., as the FDA has not approved any prescription level orlistat generic. Such unauthorized use of Complainant's well-known mark by Respondent suggests opportunistic bad faith. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., Case No. D2000-0163 (available on the Internet at http://arbiter.wipo.int/domans/decisions/html/2000/d2000-0163.html).
(g) Use of the disputed domain names containing the XENICAL mark to advertise and offer XENICAL, but actually sell products competitive to Complainant’s XENICAL preparation advertised thereunder with there being no connection with the Complainant whatsoever, demonstrates bad faith use. Deutsche Telekom AG v. Mighty LLC/Domain Admin, Case No. D2005-0027 (April 6, 2005) (available on the Internet at http://wipo.int/amc/en/domains/decisions/html/2005/d2005-0027.html); Sociedad Espanola del Acumulador Tudor S.A. v. Asesoria Materiales Exportacion S.L., Case No. D2005-0621 (Sept. 19, 2005) (available on the Internet at http://wipo.int/amc/en/domains/decisions/html/2005/d2005-0621.html); Canadian Tire Corp., Ltd. v. Texas Int’l Property Associates NA, Case No. D2007-1407 (Nov. 21, 2007) (available on the Internet at http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1407.html).
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant Hoffmann-La Roche Inc. researches and develops pharmaceutical and diagnostic products. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the XENICAL mark (e.g., Reg. No. 1,906,281 issued July 18, 1995). Complainant uses the XENICAL mark in connection with a pharmaceutical product indicated for weight reduction and long-term management of weight.
Respondent Howard Lee registered the <buycheapxenical.us>, <discountxenical.us>, <purchasexenical.us>, <xenicalcost.us>, <xenicalinformation.us>, and <xenicalsales.us> domain names on June 15, 2010. The disputed domain names resolve to websites that purport to offer counterfeit versions of Complainant’s XENICAL pill.
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 the Complainant's undisputed representations pursuant to Paragraphs 5(f), 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant asserts rights in the XENICAL mark through its registration of the mark with the USPTO (e.g., Reg. No. 1,906,281 issued July 18, 1995). The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the XENICAL mark under Policy ¶4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of [UDRP] ¶4(a)(i).”).
Complainant claims Respondent’s <buycheapxenical.us>, <discountxenical.us>, <purchasexenical.us>, <xenicalcost.us>, <xenicalinformation.us>, and <xenicalsales.us> domain names are confusingly similar to its XENICAL mark. Respondent replicates Complainant’s mark in the disputed domain names and then merely adds the generic terms “buy,” “cheap,” “discount,” “purchase,” “cost,” “information,” and “sales.” Complainant also contends the addition of the country-code top-level domain (“ccTLD”) “.us” is irrelevant to the Policy ¶4(a)(i) analysis. The Panel finds the addition of a generic term or terms and the affixation of a ccTLD to a mark does not render a domain name distinct from that mark. 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 Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark). Therefore, the Panel finds <buycheapxenical.us>, <discountxenical.us>, <purchasexenical.us>, <xenicalcost.us>, <xenicalinformation.us>, and <xenicalsales.us> domain names are confusingly similar to Complainant’s XENICAL mark under Policy ¶4(a)(i).
The Panel finds Complainant has satisfied Policy ¶4(a)(i).
Rights or Legitimate Interests
Complainant must first establish Respondent lacks rights and legitimate interests in the disputed domain names. The burden then shifts to Respondent to prove it has rights or legitimate interests. The Panel may infer Respondent does not have rights or legitimate interests in the disputed domain names based on Respondent’s failure to submit a Response. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶4(c). See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”).
There is no evidence in the record to conclude Respondent owns any service marks or trademarks that reflect the <buycheapxenical.us>, <discountxenical.us>, <purchasexenical.us>, <xenicalcost.us>, <xenicalinformation.us>, and <xenicalsales.us> domain names. Therefore, the Panel finds Respondent does not have rights and legitimate interests pursuant to Policy ¶4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to UDRP ¶4(c)(i)).
Complainant asserts it has not authorized Respondent to use its mark in a domain name. Additionally, the WHOIS information lists “Howard Lee” as the registrant of the disputed domain names, which the Panel finds is not similar to any of the <buycheapxenical.us>, <discountxenical.us>, <purchasexenical.us>, <xenicalcost.us>, <xenicalinformation.us>, and <xenicalsales.us> domain names. Without evidence to the contrary, the Panel finds Complainant’s assertions combined with the WHOIS information suggests Respondent is not commonly known by the disputed domain names pursuant to Policy ¶4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant alleges Respondent’s disputed domain names resolve to websites that purport to offer Complainant’s XENICAL medication. Complainant submits screen shots of the resolving websites. These images show webpages that provide numerous medications for sale. The images also show Complainant’s XENICAL mark next to a pill that appears to be Complainant’s actual XENICAL pill. Complainant argues Respondent is selling a generic form of Complainant’s product and this behavior is illegal because there is no FDA-approved generic form of prescription level XENICAL. The Panel finds Respondent is attempting to sell a counterfeit version of Complainant’s XENICAL pill and Respondent is engaging in illegal conduct. Accordingly, the Panel finds Respondent does not use the disputed domain names to make a bona fide offering of goods or services under Policy ¶4(c)(ii) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(iv). See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under UDRP ¶4(c)(i)); see also Nycomed Danmark ApS v. Diaz, D2006-0779 (WIPO Aug. 15, 2006) (concluding that the respondent’s use of a disputed domain name to operate a website promoting an illegal food supplement was not a bona fide offering of goods or services under UDRP ¶4(c)(i) or a legitimate noncommercial or fair use under UDRP ¶4(c)(iii)).
The Panel finds Complainant has satisfied Policy ¶4(a)(ii).
Registration and Use in Bad Faith
The Panel finds Respondent uses the disputed domain names to redirect Internet users seeking Complainant’s XENICAL product to Respondent’s competing websites. Therefore, the Panel finds the disputed domain names disrupt Complainant’s business, which is evidence of registration and use in bad faith under Policy ¶4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to [UDRP] ¶4(b)(iii).”); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to UDRP ¶4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
Complainant argues Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's XENICAL mark as to the source, sponsorship, affiliation, or endorsement of products on Respondent’s site. As previously discussed, Respondent’s disputed domain names are confusingly similar to Complainant’s XENICAL mark. In addition, Respondent purports to offer Complainant’s XENICAL product on its resolving websites. Furthermore, the Panel presumes Respondent attempts to profit from its use of the disputed domain names through the sale of counterfeit versions of Complainant’s XENICAL pill. Therefore, the Panel agrees with Complainant’s argument and finds Respondent’s behavior constitutes registration and use in bad faith under Policy ¶4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to UDRP ¶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 Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
The Panel finds Complainant has satisfied Policy ¶4(a)(iii).
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buycheapxenical.us>, <discountxenical.us>, <purchasexenical.us>, <xenicalcost.us>, <xenicalinformation.us>, and <xenicalsales.us> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: October 24, 2010
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