Westmore · UDRP DecisionXenicalmedhelp.com
The Panel ordered transfer of <xenicalmedhelp.com>. It found the domain confusingly similar to the Complainant’s XENICAL mark because the added terms “med” and “help” did not distinguish it. The Respondent failed to rebut the Complainant’s prima facie case on rights or legitimate interests, and the domain’s use in connection with an online pharmacy was not bona fide. The Panel also found registration and use in bad faith under Policy paragraph 4(b)(iv), based on intentional attraction of Internet users through confusion with the XENICAL mark.
The timeline behind xenicalmedhelp.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind xenicalmedhelp.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates how the incorporation of a pharmaceutical mark together with medically suggestive terms can reinforce, rather than dispel, confusing similarity. It also shows the importance of website use: the online-pharmacy activity connected the domain directly to the Complainant’s commercial field and supported findings both that the use was not bona fide and that it intentionally attracted users through confusion.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION F. Hoffmann-La Roche AG v. Mihail Urchenko, Private Person Case No. D2014-2197 1. The Parties The Complainant is F. Hoffmann-La Roche AG of Basel, Switzerland, internally represented. The Respondent is Mihail Urchenko of Moscow, Russian Federation. 2. The Domain Name and Registrar The disputed domain name <xenicalmedhelp.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2014. On December 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 18, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 January 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2015. The Center appointed Michelle Brownlee as the sole panelist in this matter on February 12, 2015. 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. 4. Factual Background The Complainant submitted copies of certificates of International Registration No. 612908 and 699154 for the marks XENICAL and XENICAL & design in connection with pharmaceutical products. The earlier of these registrations claims priority based on a Swiss registration dated August 5, 1993. The registrations extend to numerous countries, including Russian Federation. The Domain Name was registered on December 9, 2014. 5. Parties’ Contentions A. Complainant The Complainant is one of the world’s leading pharmaceutical companies and has global operations in more than 100 countries. The Complainant’s XENICAL mark is used in connection with an oral prescription weight loss medication used to help obese people lose weight and maintain weight loss. The Complainant states that it holds registrations for the XENICAL mark in more than 100 countries. The Complainant contends that the Domain Name is confusingly similar to the Complainant’s XENICAL mark, that the Respondent has no rights to or legitimate interests in respect of the Domain Name and that the Respondent has registered and is using the Domain Name in bad faith. The Complainant has presented evidence showing that the Respondent is using the Domain Name to redirect Internet users to an online pharmacy. The Complainant argues that this use of the Domain Name is a deliberate attempt to mislead consumers and make them believe that the web site links to sites that are associated with or endorsed by the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements: (1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (2) the 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. A. Identical or Confusingly Similar The Complainant has demonstrated that it owns rights in the XENICAL trademark. The addition of the words “med” and “help” in the Domain Name does not serve to distinguish the Domain Name from the Complainant’s trademark. When a famous mark is paired with less distinctive terms, the combination will typically be found to be confusingly similar to the famous mark. See , e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions , WIPO Case No. D2007-1140 . Under these circumstances, the Panel finds that the Domain Name is confusingly similar to the Complainant’s XENICAL mark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts: (i) before receiving any notice of the dispute, the respondent used or made preparations to use 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; 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 at issue. The Respondent has not presented evidence that the Respondent used or made preparations to use the Domain Name in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Name or that the Respondent is making a noncommercial or fair use of the Domain Name, or in any other way refuted the Complainant’s prima facie case. The Complainant has alleged that the Respondent is using the Domain Name in connection with a web site that is an online pharmacy that is offering goods and services that are related to the Complainant’s goods. The Respondent has not refuted those allegations. In the Panel’s view, this cannot be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Complainant has established this element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that the following circumstances are 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 registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or (ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location. The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Complainant has alleged that the Domain Name has been used in connection with a web site that attracts Internet users by creating a likelihood of confusion with the Complainant’s trademark as the web site is offering goods and services that are similar to those offered by the Complainant. Under the circumstances, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <xenicalmedhelp.com> be transferred to the Complainant. Michelle Brownlee Sole Panelist Date: February 26, 2015
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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