Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy

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." Complainant’s 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 Complainant’s 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

A. Complainant

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."

Complainant’s 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 Respondent’s Domain Name, Roche’s trademark XENICAL and Roche’s domain

name <xenical.com>, Respondent’s 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 Complainant’s

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 Roche’s trademark.

Respondent uses the reputation and goodwill associated with the Complainant’s

XENICAL trademark to divert Internet users seeking Complainant’s "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 Complainant’s reputation and

tarnish Complainant’s 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 Complainant’s cease and desist letter and continues to

use the Domain Name.

5. Respondent’s use of Complainant’s famous trademark indicates that Respondent

knew or should have known of Roche’s 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 Respondent’s website by creating a likelihood of confusion with the

Complainant’s mark as to the source, sponsorship, affiliation or endorsement

of the Respondent’s website or service on the Respondent’s website.

Respondent’s website has no correlation with Complainant.

B. Respondent

The Respondent did not respond to the Complainant’s 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), Respondent’s 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 Roche’s 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 Complainant’s mark.

Respondent’s 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 complainant’s CELEBREX mark); Chevron Corporation v.

Young Wook Kim, WIPO Case No. D2001-1142.

(Respondent’s domain name <chevron-Texaco.com> was likely to be confused

with Complainant’s 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

Complainant’s "PFIZER" mark; the addition of the third party mark

does not eliminate the visual impression that the disputed domain name is associated

with Complainant’s 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 Complainant’s 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."

Policy ¶4(c).

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 Complainant’s allegations and evidence for prima facie sufficiency.

With respect to 4(c)(i), a review of Complainant’s 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 Complainant’s 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 owner’s 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 Complainant’s allegation that Respondent offers

to provide "a prescription medication to the public without a physician’s

examination, through which a true measure of a patient’s weight and other factors

qualifying the consumer to take the medication can really be known. On respondent’s

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 physician’s 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 Complainant’s allegations as evidence that Respondent’s 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 physician’s

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 Complainant’s

ACCUTANE without a prescription, even though strongly contraindicated for pregnant

women); See also The Sportsman’s 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 Respondent’s 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 complainant’s 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 Complainant’s 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 Complainant’s 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. Respondent’s

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 Sportsman’s

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 Respondent’s 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 Respondent’s 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.

7. Decision

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 Visa’s 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

Sole Panelist

Dated: November 30, 2003

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