WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy
Case No. D2003-0793
1. The Parties
The Complainant is Hoffmann-La Roche Inc., (hereinafter "Roche"), New Jersey, United States of America, represented by Duane Morris LLP, United States of America.
The Respondent is #1 Viagra Propecia Xenical & More Online Pharmacy, Orlando, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <viagra-propecia-xenical.com> is registered with TierraNet d/b/a DomainDiscover.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 7, 2003.
On October 8, 2003, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the domain name at issue.
On October 14, 2003, TierraNet d/b/a DomainDiscover 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 administrative, billing, and technical contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 15, 2003.
In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2003.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on November 5, 2003.
The Center appointed Lawrence K. Nodine as the Sole Panelist in this matter on November 13, 2003.
The Panelist 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 Panel finds that it was properly constituted.
4. Factual Background
Complainant, Hoffman-La Roche, Inc., ("Roche") alleges that:
Roche or its affiliates hold registrations in the trademark XENICAL throughout the world and the United States.
Roche holds U.S. Trademark Registration No. 1,906,281 (the " 281 Registration") for the mark XENICAL in connection with "pharmaceutical preparation for weight reduction and long-term management of weight." Complainants exclusive ownership of the mark XENICAL and its right to use the mark XENICAL as identified in the 281 Registration is now incontestable. 15 U.S.C. 1065 and 1115.
Roche has sold over 400 million dollars worth of its XENICAL pharmaceutical preparation in the United States and throughout the world since 1998. By virtue of advertising and sales, the XENICAL mark has become well-recognized and represents valuable goodwill.
Roche owns and has registered the domain name <xenical.com>, where it maintains an active website to promote the sale of its weight loss pharmaceutical preparation.
Roche alleges that Respondent owns and has registered the domain name
<viagra-propecia-xenical.com> (the "Domain Name"), where it sells Complainants XENICAL pharmaceutical preparations, as well as other prescription pharmaceutical preparations of third parties such as Viagra, Propecia, Retin-A and Celebrex without requiring a medical exam by a physician.
5. Parties Contentions
The Complainant contends that:
XENICAL is a famous trademark for which Complainant or its affiliate company holds registrations in jurisdictions around the world and in the United States for use in connection with "pharmaceutical preparations for weight reduction and long-term management of weight."
Complainants affiliated company owns and has registered the domain name <xenical.com>. Its website serves as a significant method of promoting the sale of its weight loss pharmaceutical preparations.
The challenged Domain Name <viagra-propecia-xenical.com> consists of the entire XENICAL trademark, with the addition of the marks "Viagra" and "Propecia" at the beginning. In light of this extreme similarity between Respondents Domain Name, Roches trademark XENICAL and Roches domain name <xenical.com>, Respondents registration and use of the Domain Name is identical with and confusing similar to its XENICAL mark pursuant to the to the Policy paragraph 4(a)(i).
Respondent has no rights or legitimate interests in the Domain Name pursuant to the Policy paragraph 4(a)(ii). <viagra-propecia-xenical.com> is not a word and has no valid use other than in connection with Complainants trademark. Complainant has not authorized Respondent to use its trademark XENICAL, nor is Respondent a licensee of the Complainant.
Respondent is not using the Domain Name for a bona fide offering of goods or services and Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain. Respondent uses the Domain Name to misleadingly divert consumers or tarnish Roches trademark. Respondent uses the reputation and goodwill associated with the Complainants XENICAL trademark to divert Internet users seeking Complainants "www.xenical.com" website to an unrelated website which provides the prescription medication XENICAL to the purchasing public without requiring that the purchaser be examined by a physician. If this continues, it will damage Complainants reputation and tarnish Complainants famous XENICAL mark.
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii). Complainant presents the following facts in support of this contention:
1. "Xenical" is not a word.
2. XENICAL is a coined mark that has a worldwide reputation.
3. There is no relationship between Respondent and Complainant, and Complainant has not given Respondent permission to use its mark XENICAL.
4. Respondent ignored Complainants cease and desist letter and continues to use the Domain Name.
5. Respondents use of Complainants famous trademark indicates that Respondent knew or should have known of Roches registration and use of the mark XENICAL prior to registering the Domain Name.
6. Respondent has intentionally attempted to attract for financial gain Internet users to Respondents website by creating a likelihood of confusion with the Complainants mark as to the source, sponsorship, affiliation or endorsement of the Respondents website or service on the Respondents website.
Respondents website has no correlation with Complainant.
The Respondent did not respond to the Complainants contentions.
6. Discussion and Findings
To succeed in this proceeding, the Complainant must prove:
A. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B. The Respondent has no rights or legitimate interests in respect of the Domain Name; and
C. The Domain Name has been registered and is being used in bad faith.
Policy 4(a). Even though the Center gave Respondent sufficient notice under Rule 2(a), Respondent has not responded to the Complaint. Where Respondent does not respond to the complaint, the Panel shall decide the dispute based upon the complaint. Rules, 5(e), 14(a). The complaint is to be decided on the basis of the statements and documents submitted. Rules, 15(a). Under Rule 14(b), Respondents failure to answer entitles the Panel to "draw such inferences therefrom as it considers appropriate."
A. Is the Domain Name Identical or Confusingly Similar to a Trademark in Which Complainant has Rights?
Complainant has rights in the trademark XENICAL. Among other worldwide registrations, Complainant holds U.S. Trademark Registration No. 1,906,281 (the "281 Registration") for the mark XENICAL in connection with "pharmaceutical preparation for weight reduction and long-term management of weight."
The Panelist also finds that the Domain Name is identical or confusingly similar to Roches XENICAL mark. "The issue is not whether confusion is likely in the trademark sense (that is, confusion as to source based on the domain name and its use in connection with a website), but rather, whether the domain name, standing alone, is sufficiently similar to the trademark to justify moving on to the other elements of a claim for cybersquatting." Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774. The challenged Domain Name includes the term "Xenical," which is identical to Complainants mark.
Respondents inclusion of other third party trademarks in its domain name does not change this result. UDRP panels have consistently found a likelihood of confusion under these circumstances. G.D. Searle & Co. v. Entertainment Hosting Services, Inc. NAF Claim No. FA0204000110783. (Challenged domain name <viagra-propecia-xenical-celebrex-claritin-prescriptions.com> likely to be confused with complainants CELEBREX mark); Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142. (Respondents domain name <chevron-Texaco.com> was likely to be confused with Complainants mark "Chevron"). The Chase Manhattan Corporation and Robert Fleming Holdings Limited v. Paul Jones, WIPO Case No. D2000-0731 (Challenged domain name <chase-flemming.com> likely to confused with co-Complainants marks CHASE and FLEMMING). See also, Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793 (Challenged <pfizer-nascar.com> likely to be confused with Complainants "PFIZER" mark; the addition of the third party mark does not eliminate the visual impression that the disputed domain name is associated with Complainants trademark; Nascar consented to transfer).
Although the challenged Domain Name incorporates two other pharmaceutical trademarks- "PROPECIA" and "VIAGRA" the challenged Domain Name is nonetheless considered, by the Panelist, to be identical or confusingly similar to Complainants XENICAL mark.
B. Does the Respondent Have Rights or Legitimate Interests in the Domain Name?
A Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
"(iii) you [Respondent] are 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."
Because the Respondent did not file a Response, there is no evidence showing that Respondent has any legitimate rights in the Domain Name. The Panelist nonetheless reviews Complainants allegations and evidence for prima facie sufficiency.
With respect to 4(c)(i), a review of Complainants Exhibit copies of the challenged Domain Name website reveals that Respondent offers to sell XENICAL pharmaceutical products. The question is whether these sales are bona fide or otherwise sufficient to create legitimate interests in the domain name. For three reasons, the Panelist holds that they are not.
First, the majority of UDRP arbitration decisions have held that a reseller does not have the right to incorporate the trademark of the resold goods into the domain name of the reseller. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774. Respondent has not denied Complainants allegation that it is not a licensee or otherwise contractually authorized to use XENICAL as part of a domain name. In AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002-0290, another case involving the sale of prescription medication via an online pharmacy, the Panelist found: "While the selling of goods which originate from the Complainant might entitle the Respondent to use a mark associated with the goods in connection with their sale, this does not give it the right to register and use the mark as a domain name without the consent of the holders of the trademarks. Thus, it is prevented from having prior rights to or legitimate interests in the Domain Name as against the Complainant." (emphasis added).
Second, Respondent does not sell only XENICAL pharmaceuticals at its site. Indeed, Respondent offers a group of presumably competitive "Weight Loss" drugs (Xenical, Phentermine, Bontril, Merida and Didrex) all listed side-by-side on its website. In addition, the challenged Domain Name itself is a hyphenated fusion of three trademarks owned by three competing drug companies. This prevents Respondent from relying on the minority view that it may sometimes be legitimate for a reseller to incorporate into its domain name the trademark of the resold goods. Even the minority rule decisions require that competitive goods not be offered under the challenged Domain Name. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 citing Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use: "Even under the minority view, this use of a trademark owners mark to promote and sell competitive goods does not constitute a legitimate use"). It is not "legitimate" within the meaning of Policy 4(c)(1) to bait with a well known mark incorporated into a domain name and then offer to sell competitive goods on an equal footing.
Third, Respondent has not denied Complainants allegation that Respondent offers to provide "a prescription medication to the public without a physicians examination, through which a true measure of a patients weight and other factors qualifying the consumer to take the medication can really be known. On respondents website, consumers can give false information to qualify for the XENICAL medication." As a consequence, Complainant alleges, Respondent provides the prescription medication to some people who are not eligible to take the medication. The Panelist has reviewed the challenged site and confirmed that there does not appear to be a requirement of a physicians examination, although there is a lengthy medical information form that the purchaser is requested to complete.
Because the allegations raise questions of public health and safety, the Panelist accepts Complainants allegations as evidence that Respondents offerings are not bona fide. It may be that in some future proceeding a respondent may offer evidence Internet sales of prescription drugs without a physicians examination are both safe and consistent with medical custom and practice. But this Respondent has offered no such debate or evidence.
Where a Complainant alleges facts tending to prove that the Respondent offers products in a fashion that puts the public health at risk, it is especially appropriate to draw adverse inferences against a respondent who fails to respond. Hoffmann-La Roche Inc. v. Eric Kaiser a/k/a eDrugNet, WIPO Case No. D2003-0721. (Unrebutted allegation that Respondent offered Complainants ACCUTANE without a prescription, even though strongly contraindicated for pregnant women); See also The Sportsmans Guide, Inc. v. Modern Limited, Cayman Islands, WIPO Case No. D2003-0305 (If complainant presents evidence of prima facie case, burden shifts to Respondent to rebut.). For these reasons, Respondent has no legitimate interests under 4(a)(ii) or 4(c)(1).
With respect to Policy 4(c)(ii), there is no evidence that Respondent is commonly known by the Domain Name. Here, the Respondent identifies itself as #1 Viagra Propecia Xenical & More Online Pharmacy and has registered the domain name <viagra-propecia-xenical.com>. This is not enough to prove rights under 4(c)(ii): "The simple use of the domain name as the name of the registering entity without explanation is not sufficient to establish that anyone has actually known the Respondent by these names." Edmunds.com, Inc. v. WWWEDMUNDS.com and dMUNDS.com, WIPO Case No. D2001-0937.
Finally, it is evident that Respondent is not making a legitimate noncommercial or fair use of the Domain Name under Policy 4(c)(iii). The Respondents use is manifestly commercial. It sells pharmaceuticals on the website associated with the challenged Domain Name.
For all these reasons, the Panelist finds that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Panelist finds that the Respondent has registered and is using the Domain Name in bad faith under Policy 4(b)(iv), which provides that it shall be evidence of registration in bad faith that:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainants mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
Respondent had constructive knowledge of Complainants rights in the XENICAL mark when it registered the Domain Name. The mark XENICAL was a registered trademark at the time that Respondent registered the Domain Name. Under United States law, Respondent had constructive notice of Complainants rights to the mark in connection with "pharmaceutical preparations for weight reduction and long-term management of weight." 15 U.S.C. 1057(c).
Furthermore, Respondent uses the Domain Name for commercial gain. Respondents website indicates that it charges $140, $280 and $420 for a one month, two month and three month prescription of XENICAL, respectively, clearly demonstrating commercial gain.
These facts have been held to satisfy Policy 4(b)(iv). The Sportsmans Guide, Inc. v. Modern Limited, Cayman Islands, WIPO Case No. D2003-0305. (Constructive knowledge plus commercial purpose as evidence of bad faith).
However, there is additional evidence that Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source of the pharmaceuticals offered on the website. The hyphenated multi-trademark structure of the challenged Domain Name is likely to cause confusion. This hyphenated structure suggests an affiliation between and among these marks and the drugs they identify, even though they are all owned by different unrelated companies. This is likely to lead to confusion about the source or origin of the products offered on Respondents site. It is likely that some consumers will mistakenly believe that the hyphens suggest a "family of marks" owned by a single or affiliated companies.
This sort of confusion satisfies Policy 4(b)(iv). Respondent intentionally adopted the hyphenated multi-trademark domain name in order to increase Internet search exposure. The foreseeable result was likely confusion about source, origin, sponsorship of the drugs offered on Respondents website. Respondent may not want or benefit from the confusion, but it does want the commercial benefit-increased search exposure- that the hyphenated multi-trademark structure affords. To get this benefit, it adopted a multi-trademark domain name that is likely to cause confusion about the relationship between the several marks that comprise the challenged domain name.
Put simply, in order to maximize Internet search exposure, and thereby increase its commercial gain, Respondent has fused together several trademarks that belong to different owners and represent different reservoirs of goodwill. These different trademark owners would never consent to such an amalgamation of their marks in the real world and there is no reason to allow it in the cyberworld. This reckless disregard for the confusion caused by the hyphenated fusion of unaffiliated trademarks for the purpose of maximizing Internet traffic constitutes bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panelist orders that the domain name <viagra-propecia-xenical.com> be transferred. The Panelist notes that this results in the transfer to Roche of a domain name that includes the VIAGRA mark owned by Pfizer and the PROPECIA mark owned by Merck, neither of whom are parties to this proceeding. In other cases, the Complainant has made of record the consent of other trademark owners with a potential interest in the transferred domain. See, e.g., Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793 and Yahoo, Inc. v. M&A Enterprise, WIPO Case No. D2000-0748. (domain name <visa-yahoo.com> transferred to sole Complainant Yahoo with notation of Visas consent). This would seem to be the better practice. However, neither the Policy nor the Rules expressly require such consent once a prima facie case for transfer has been made. Accordingly, the Panelist orders the transfer.
Lawrence K. Nodine
Dated: November 30, 2003